The Complainant is LEGO Juris A/S of Billund, the Kingdom of Denmark, represented by Melbourne IT Digital Brand Services, the Kingdom of Sweden.
The Respondent is Personal, Suriya Meeploud of Burlington, Massachusetts, the United States of America; or alternatively of Mung Phuket, Thailand. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2010. On October 4, 2010, the Center transmitted by email to eNom. a request for registrar verification in connection with the Disputed Domain Name. On October 4, 2010, eNom. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint 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 the Respondent of the Complaint, and the proceedings commenced on October 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2010.
The Center appointed Dawn Osborne as the sole panelist in this matter on November 1, 2010. The Panel finds that it was properly constituted. The 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.
The Panel issued a procedural order on November 3, 2010 relating to the origin of goods linked to on the Respondent’s site. The Complainant responded on November 8, 2010. The Respondent did not respond. 4. Factual Background
The Complainant or its predecessors has used the mark LEGO since 1953 for construction toys and the Lego group owns trade mark registrations for this mark all over the world. The Complainant owns trade mark registrations for LEGO in the United States and Thailand. The Respondent registered the Disputed Domain Name in April 2010 and has used it to point to products and link to toy products both manufactured and not manufactured by the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant is the owner of registered trade marks for LEGO all over the world including the US and Thailand. The mark has been used since 1953 for construction toys. The revenue for the LEGO group in 2009 was more than 2.8 billion. LEGO products are sold in more than 130 countries. The Complainant has a LEGO ambassador program with members situated in Thailand. The Complainant owns more than 1000 domain names containing LEGO and has a strict policy that it should own all such domain names. LEGO is listed as No. 8 of the top 500 superbrands provided by Superbrand UK. The LEGO group now produces in addition computer hardware and software, books, videos and robotic construction sets.
Since 2009, the LEGO group has had a licence with Disney concerning the use of the Toy Story and trademarked character Buzz Lightyear. The Toy Story theme was introduced in 2009 and the Complainant has products associated with this character. It is authorized to use the BUZZ LIGHTYEAR trade mark for these purposes.
The dominant part of the Disputed Domain Name is LEGO. The addition of the suffix “buzzlightyear” will not have any impact on the overall impression of the Disputed Domain Name which is confusingly similar to the Complainant’s LEGO trade mark. The fact that the Complainant has products under licence from Disney connected to the figure Buzz Lightyear strengthens the impression that the Disputed Domain name belongs to the Complainant or has a commercial connection and there is a risk of tarnishment and dilution.
The Respondent does not appear to have any registered trade marks or trade names related to the Disputed Domain Name and does not appear to have been using LEGO in any other way bona fide or otherwise. The Respondent has no licence from the Complainant and is not an authorized dealer and has no business relationship with the Complainant. The Respondent has chosen the name simply to drive traffic to a web site with online sales of products including official LEGO products. This takes unfair advantage. The Respondent has no rights or legitimate interests with respect to the Disputed Domain Name.
The Respondent did not reply to the Complainant’s cease and desist letter. The Respondent is using the Disputed Domain Name to intentionally attempt to attract for commercial gain Internet users to the web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The Respondent has registered and used the Disputed Domain Name in bad faith.
On November 8, the Complainant clarified that the Disputed Domain Name had also been linked to products which the Complainant does not manufacture. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
- The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Domain Name; and
- The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Disputed Domain Name includes the Complainant’s registered mark LEGO and the trade mark BUZZ LIGHTYEAR which the Complainant is authorised to use by Disney. The addition of the word “buzzlightyear” when the Complainant offers Buzz Lightyear products, does not serve to distinguish the Disputed Domain Name from the LEGO trade mark. As such the Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interests
The Respondent has not filed a Response, does not appear to have any trade marks associated with LEGO, is not commonly known by this name and does not have any consent from the Complainant to use this name. It does not appear to have used the Disputed Domain Name for any bona fide offering of goods of its own, but only to point to goods both of and not of the Complainant’s manufacture. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. It does appear that the Respondent has attempted to attract and cause confusion amongst Internet users between the Complainant’s mark and goods and the third party goods not of the Complainant’s manufacture offered on the links on the website attached to the Disputed Domain Name for commercial gain.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and 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, the Panel orders that the domain name be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Dated: November 20, 2010
Full & Egal Universal Law Academy