Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
Respondent is Charlie Carmichael of Spring Valley, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is which is registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2010. On September 8, 2010, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On September 9, 2010, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to Complainant on September 17, 2010 requesting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 17, 2010.
The Center verified that the Complaint, as amended, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 14, 2010. The Center received an email communication from Respondent on October 14, 2010.
Due to a technical problem with the electronic transmission of the Complaint, on October 19, 2010, the Center resent the Complaint in Word and .pdf format and Respondent was granted additional three days, in order to indicate to the Center by return email whether it intended to participate in these proceedings. The due date for the submission of any Response, or the indication that Respondent intended to submit any such Response, was reset at October 22, 2010. Respondent did not reply.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on November 9, 2010. This Panel finds that it was properly constituted. This Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is a company incorporated in Denmark.
Complainant has rights over the trademark LEGO, which is registered in numerous jurisdictions around the world, including: registration No. 39800 with The Trade Marks and Designs Registration Office of the European Union, registered in 1998, international classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, and 42; and registration No. 1018875 with the United States Patent and Trademark Office, registered in 1975, international class 28.
Complainant is also the owner of several domain names containing the term LEGO.
The disputed domain name was created on April 28, 2010. 5. Parties’ Contentions A. Complainant
Complainant’s assertions may be summarized as follows:
Complainant is the owner of LEGO and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products.
Complainant (through its predecessors) and its licensees (collectively the “LEGO Group”) commenced use of the LEGO trademark in the United States of America during 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown remarkably. Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States of America.
The LEGO Group have expanded their use of the LEGO trademark to computer hardware and software, books, videos and computer controlled robotic construction sets.
Complainant maintains an extensive website under the domain name and is also the owner of more than 1,000 domain names containing the term LEGO.
The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. The LEGO trademark and brand have been recognized as being famous; for instance, list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK, shows LEGO as number 8 of the most famous trademarks and brands in the world1.
The disputed domain name is confusingly similar to Complainant’s world famous trademark LEGO. The fame of the trademark has been confirmed in numerous previous UDRP panel decisions (LEGO Juris A/S v. Level 5 Corp.,WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715; LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680).
The dominant part of the disputed domain name comprises the word “lego”, which is identical to Complainant’s LEGO trademarks and domain names registered in numerous countries all over the world.
The addition of the suffix “dino” is not relevant and will not have any impact on the overall impression of the dominant part of the disputed domain name, LEGO, instantly recognizable as a world famous trademark.
The likelihood of confusion includes an obvious association with Complainant’s trademark. There is a considerable risk that the public will perceive the disputed domain name either as a domain name owned by Complainant or that there is some kind of commercial relation with Complainant.
By using Complainant’s trademark as a dominant part of the disputed domain name, Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for Complainant’s trademark.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent has no registered trademarks or trade names corresponding to the disputed domain name.
Complainant has not found anything that would suggest that Respondent has been using LEGO in any other way that would give Respondent any legitimate rights.
Complainant has not given to Respondent any license or authorization of any other kind to use the LEGO trademark. Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant.
It is highly unlikely that Respondent was unaware of Complainant’s legal rights at the time of the registration of the disputed domain name. It is rather obvious that it is the trademark’s fame that motivated Respondent to register the disputed domain name. This proves that Respondent’s interests could not have been legitimate.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. There is no disclaimer on the website associated with the disputed domain name explaining the non-existing relationship with Complainant. Instead Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to an online store that sells toys. No evidence has been found that Respondent uses the name as a company name or has any other legal right in the name LEGO. Respondent is trying to sponge off Complainant’s world famous trademark.
The disputed domain name was registered and is being used in bad faith.
The trademark LEGO in respect of toys belonging to Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world. The number of third party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed in the last years; the considerable value and goodwill of the mark LEGO is most likely, a large contribution to this and also what made Respondent register the disputed domain name. It is highly unlikely that Respondent was not aware of the rights Complainant has in the trademark and the value of said trademark, at the point of the registration.
Complainant first tried to contact Respondent on June 10, 2010 through a cease and desist letter sent by email, advising Respondent that the unauthorized use of the LEGO trademark within the disputed domain name violated Complainant’s rights in said trademark. No reply was received so a reminder was sent on June 23, 2010 and a final reminder was sent on July 20, 2010. Respondent did not answer to these letters.
The disputed domain name is currently connected to an online store selling toys. Consequently, Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites.
By using the disputed domain name, Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain.
Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions, although on October 14, 2010 Respondent filed with the Center an email communication stating that “I had the site taken down. I thought that was all I had to do”. 6. Discussion and Findings
Respondent’s email communication of October 14, 2010 can not be deemed as an official response since it does not comply with the requirements set forth in the Rules, paragraph 5(b). Thus this Panel has decided not to take into account such email communication from Respondent2. In any event, if this Panel had taken into consideration such email communication, that would not have changed the outcome of this proceeding.
The lack of a proper response from Respondent does not automatically result in a favorable decision for Complainant3. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has demonstrated it has rights over the LEGO trademark.
The disputed domain name entirely incorporates the LEGO trademark, adding the suffix “dino”. The addition of such word is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior UDRP panel decisions support this Panel’s view (Cfr. Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481; Nokia Corporation v. N a.k.a IBCC, WIPO Case No. D2000-0102).
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s LEGO trademark. B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is undisputed that Complainant’s LEGO trademark and that Complainant’s products identified with such trademark are well-known internationally.
Complainant asserts that it has no relationship with Respondent and that it has never licensed or authorized Respondent to use the LEGO trademark or to act as reseller of Complainant’s products. Likewise, Complainant asserts that Respondent has never been known by the LEGO trademark and that Respondent's website has no affiliation or connection whatsoever with Complainant.
Respondent is using the website associated with the disputed domain name to sell toys, that is, products competing with Complainant’s. Such website does not show any disclaimer as regards Complainant thus leading consumers to believe that the website reached from the disputed domain name is a site owned by, or at least somewhat associated with, Complainant. That is not a bona fide offering of products or services. It seems that Respondent has registered the disputed domain name with the purpose of diverting Internet users from Complainant’s official website in order to attract consumers.
Based on the aforesaid, this Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name4.
In the absence of any explanation from Respondent as to why he might consider he has a right or legitimate interest in using a domain name which entirely incorporates Complainant’s LEGO trademark,, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
Complainant has evidenced that the LEGO trademark was registered in several jurisdictions, including the United States of America, long before Respondent registered the disputed domain name. Taking into consideration the nature of Complainant’s products and the prolonged use and exposure of the LEGO trademark, it is clear for this Panel that Respondent should have been fully aware of the existence of Complainant’s trademark and the products marketed thereunder at the time he obtained the registration of the disputed domain name.
The use of the disputed domain name for a website that is used as an online store selling toys, which are the same products identified under Complainant’s LEGO trademark, constitutes an improper use of Complainant’s trademark and is evidence of Respondent’s bad faith5. Additionally, the website used in connection with the disputed domain name contains no disclaimer disassociating Complainant from such website.
Furthermore, Respondent’s failure to reply to Complainant’s cease-and-desist letters is also indicative of bad faith (see Ebay Inc. v. E and Tony Caranci,WIPO Case No. D2000-1632).
Thus this Panel finds that Respondent has registered and used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location.
In light of the above, this Panel concludes that the disputed domain name was registered and is being used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the domain name be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Dated: November 23, 2010
1 This Panel notes that Superbrands’ list refers to brands known in the United Kingdom of Great Britain and Northern Ireland.
2 Similar situation in World Wrestling Entertainment, Inc. v. Ki Sung,WIPO Case No. DMX2009-0005, where this Panel also declined to take into account as official response an email communication. See also EAuto, Inc. v. Available-Domain-N, d/b/a Intellectual-A, Inc.,WIPO Case No. D2000-0120; Crédit Industriel et Commercial S.A v. Yu Ming,WIPO Case No. D2005-0458.
3 See Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465: “[…]the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
4 See Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400: “There is no evidence that the Complainant authorized the Respondent to register the disputed domain name or to use the CASIO trademark, with or without immaterial additions or variants. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent”.
5 See Bartercard Ltd & Bartercard International Pty Ltd . v Ashton-Hall Computer Services,WIPO Case No. D2000-0177: “the Domain Name has been used to host a website offering competing products to those offered by the Complainant [...] this suggests that the Respondent registered the Domain Name with the primary intention of disrupting the business of a competitor [...] It also indicates that the Respondent has used the Domain Name to attract Internet users to its website for commercial gain by virtue of confusion with the Complainant’s mark [...] Under the Policy, both of these are sufficient to show registration and use of the Domain Name in bad faith”. See also Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946; and Medco Health Solutions, Inc. v. Digi Real Estate Foundation;WIPO Case No. D2005-0216.
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