The Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondents are betlego (for ) of Hongkong, SAR of the People’s Republic of China; and luck lin (for ) of Guatemala (collectively referred hereinafter as “the Respondent”). 2. The Domain Names and Registrars
The disputed domain names are , registered with eNom, and , registered with Tucows Inc. 3. Procedural History
The Complaint involving five domain names was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2010. On October 22, 2010, the Center transmitted by email to GoD, Inc., N LLC, eNom and Tucows Inc. a request for registrar verification in connection with the five domain names. On October 22, 2010, Tucows Inc. transmitted by email to the Center its verification response confirming that betlego is listed as the registrant for the domain name and providing the contact details. On October 22, 2010, eNom transmitted by email to the Center its verification response confirming that luck lin is listed as the registrant for the domain name and providing the contact details. On October 22, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that Eagle Sky Co. Ltd. is listed as the registrant for the domain names and and providing the contact details. On October 22, 2010, N LLC transmitted by email to the Center its verification response confirming that chenchienhsiang is listed as the registrant for the domain name and providing the contact details. In response to a notification by the Center regarding the multiple respondents, the Complainant filed an amendment to the Complaint on October 28, 2010.
On November 1, 2010, the Center transmitted an email communication to the parties, indicating that there appeared to be at least prima facie grounds sufficient to warrant putting the Complainant’s request for consolidation before a panel. Accordingly, the Center proceeded to commencement and formal notification on that basis. A copy of the Complaint, and the amendment to the Complaint was duly forwarded to the contact information of all identified registrants. A response (or responses) would be accepted by the Center from any registrant who wished to submit a reply to the Complaint, and would be placed before the panel for consideration in due course.
The Center verified that the Complaint together with the amendment to 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 various registrants referred to above of the Complaint, and the proceedings commenced on November 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2010. Said registrants did not submit any response. Accordingly, the Center notified those registrants of their default on November 22, 2010.
On November 22, 2010, the Complainant requested a suspension of the current proceedings as the parties were attempting to solve the dispute amicably. On the same day, the Center notified the parties of the suspension. Upon the Complainant’s request, the suspension was extended by the Center four times, until expiration on March 7, 2011.
On March 8, 2011, the Complainant sent an email to the Center notifying the Center that the domain names, , and , were transferred to the Complainant and requesting that they be withdrawn from the proceedings. The Complainant further requested that the Center re-institute the proceedings for the remaining two domain names and . On the same day, the Center duly noted the transfer and granted both of the Complainant’s requests.
The Center appointed Dennis A. Foster as the sole panelist in this matter on March 10, 2011. 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. 4. Factual Background
The Complainant is a Danish company that has produced and sold construction toys, as well as other products, throughout the world for many decades. Its trademark, LEGO, is internationally famous and registered with many national trademark authorities, including the United States Patent and Trademark Office (“USPTO”) (e.g., Registration No. 1018875; issued August 26, 1975).
The disputed domain names, and , are registered by the Respondent. The respective dates of registration are November 19, 2009 and June 22, 2010. The disputed domain names resolved to an online gaming website, which may have been replaced subsequently with a website offering links to third party websites. 5. Parties’ Contentions A. Complainant
The Complainant is a Danish company that produces and sells construction toys and other products under its LEGO trademark. The Complainant has been in business for many decades and its trademark enjoys worldwide fame. For instance, the Complainant began marketing its toys in the United States of America under said mark in 1953, and does extensive business there and in Canada, Japan and China, as well as elsewhere around the world.
The Complainant now uses its trademark on products that range beyond those related to construction toys, to include, among other things, computer hardware and software, books, videos and computer controlled robotic construction sets. The revenue for the Lego Group in 2009 was more than USD 2.8 Billion.
The Complainant has registered its trademark with many national trademark authorities, including the USPTO. Moreover, the Complainant has registered more than 1,000 domain names that incorporate its famous mark, which is one of the best known trademarks in the world.
The dominant portion of each disputed domain name is the Complainant’s LEGO mark. The names are therefore confusingly similar to that mark. The addition of the terms “bet” and “island” have no impact on the overall impression created by the disputed domain names. Furthermore, the addition of the top-level domains, “.com” and “.net”, are not relevant in avoiding confusing similarity with Complainant’s trademark.
Internet users will erroneously assume some ownership or commercial relationship between the disputed domain names and the Complainant. The Complainant’s mark may be tarnished by use of the names. The Respondent is intent upon exploiting the considerable goodwill associated with the mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has no registered trademark that corresponds to the names. The Complainant has granted no license or authorization for the Respondent to use the LEGO trademark.
The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Both names initially resolved to an online gaming website. After the Complainant contacted the Respondent, it altered that resolution to websites that offered sponsored third-party links.
The Respondent registered and is using the disputed domain names in bad faith. Due to the international fame of the LEGO mark, the Respondent must have been aware of the Complainant’s rights and thus registration was in bad faith. Moreover, the Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of those websites.
The Complainant contacted the Respondent on July 15, 2010 with a demand that the Respondent cease and desist from further use of the disputed domain names and an offer to pay out-of-pocket expenses for a transfer of the same. The Respondent refused and suggested that the Complainant make a higher purchase offer instead. After further contact, no acceptable resolution was achieved. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to Policy paragraphs 4(a)(i) – (iii), the Complainant may prevail in these proceedings and obtain a transfer of the disputed domain names, and , if the Complainant can demonstrate that:
The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
The disputed domain names have been registered and are being used in bad faith.
For the purposes of this proceeding, the Panel finds, on the balance of probabilities, that the disputed domain names are in common control within the meaning of paragraph 3(c) of the Rules. A. Identical or Confusingly Similar
The Complainant has furnished the Panel with compelling evidence (Annex 6 to the Complaint) of its USPTO trademark registration for the LEGO mark, and several previous Policy panels have concluded that the Complainant has the requisite rights in that mark. See, for example, LEGO Juris A/S v. Domain Administrator,WIPO Case No. D2010-1260; and LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840 (“LEGO is clearly a well-known mark”). The Panel concurs with those previous rulings and finds that the Complainant does possess rights in the LEGO trademark sufficient to meet the requirements of Policy paragraph 4(a)(i).
To sustain its case under paragraph 4(a)(i), the Complainant need not show that the disputed domain names are identical to its trademark, only that there is confusing similarity. Each of the disputed domain names, and , incorporate fully the LEGO mark. The Panel believes that this incorporation creates inevitable confusion in the minds of typical Internet users as to whether those names are affiliated or associated with the Complainant or its mark. The mere addition of the common term prefix, “bet”, or suffix, “island”, respectively, does little in the view of the Panel to dispel the confusion. Moreover, the additional gTLDs, “.com” and “.net”, respectively, are of even less import in distinguishing the names from the mark. Therefore, in the Panel’s judgement both disputed domain names are confusingly similar to the Complainant’s LEGO trademark. See, American Express Company v. MustN, NAF Claim No. FA257901 (finding the respondent’s domain name confusingly similar to the complainant’s AMEX mark); Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488 (“Long-established precedent has generally recognised confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes.”); and Elenie Reese v. Eddie Morgan, NAF Claim No. FA 917029 (“Of course, the mere addition of the generic top-level domain “.com” is insufficient to differentiate the disputed domain name from the mark.”).
In accordance with the above, the Panel determines that the Complainant has succeeded in proving that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent has failed to file a Response in these proceeding, and thus the Panel will assume that the Complainant’s reasonable assertions are true. See, Park Place Entertainment Corporation v. Bowno,WIPO Case No. D2001-1410 (“In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules[…] the Panel is directed to decide this administrative proceeding on the basis of the Complainant's undisputed representations.”); and Charles Schwab & Co., Inc. v. Polanski,WIPO Case No. D2001-0959 (“In view of the Respondent’s failure to submit a response, the Panel is entitled to decide this administrative proceeding on the basis of the Complainant’s undisputed representations. That is the effect of paragraphs 5(e), 14(a) and 15(a) of the Rules.”).
Therefore, the Panel accepts the Complainant’s assertion that it never granted the Respondent permission or authorization to use the LEGO mark. As the Panel determined above that the disputed domain names are confusingly similar to that mark, the Panel concludes that the Complainant has put forth a prima facie case – placing the onus of rebuttal upon the Respondent – that the Respondent has no rights or legitimate interests in the disputed domain names. See, G.D. Searle & Co. v. Fred Pelham, NAF Claim No. FA117911 (“Complainant has presented a prima facie case against Respondent and as a result shifts the burden to Respondent to establish that it does have rights and legitimate interests in the disputed domain name.”); and Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 (“[…] once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).
As the Panel sees it, the record in this case is bereft of any successful rebuttal to the Complainant’s prima facie case. In the absence of a Response, the Panel has consulted paragraph 4(c) of the Policy for acceptable defenses that the Respondent might employ, but finds no applicability.
The purported company name that the Respondent has used in these proceedings is “betlego”, which, given its similarity to the disputed domain names, and , might give rise to an inference that the Respondent’s company is commonly known by one, if not both, of those names. However, the Respondent has submitted no evidence that it conducted business under the “betlego” name or that it was actually commonly known by that name prior to registration of either disputed domain name. Hence, the Panel cannot conclude that the Respondent has met the “commonly known by” requirements of subparagraph 4(c)(ii). See, Michael Smith Custom Clothiers, Inc. d/b/a The Custom Shop d/b/a M v. Custom Shirt Shop c/o Jim Nice, NAF Claim No. FA1109402 (“[…] ICANN panels have held, and this Panel agrees, that in order to have rights or legitimate interests under the ‘commonly known’ provision of the Policy a respondent must be commonly known by the domain name prior to registration of the domain name in issue.”); Paule Ka v. Paula Korenek,WIPO Case No. D2003-0453; Banco Espírito Santo S.A. v. Bancovic,WIPO Case No. D2004-0890 (“The Respondent must produce evidence in order to show that he or she has been ‘commonly known’ by the domain name.”); and Red Bull GmbH v. Harold Gutch,WIPO Case No. D2000-0766.
Moreover, the Panel finds that the use of the disputed domain names, which contain fully the Complainant’s famous LEGO trademark, to resolve either to a gaming website or a website containing sponsored links to third party websites – as is contended by the Complainant – constitutes neither “bona fide offerings of goods or services” per subparagraph 4(c)(i) nor “a legitimate noncommercial or fair use” of the names per subparagraph 4(c)(iii). See, Western Union Holdings, Inc. v. Manuel Rodriguez,WIPO Case No. D2006-0850 (“In relation to paragraph 4(c)(i) of the Policy, the Respondent’s use of the disputed domain name is not bona fide. The Respondent has used the disputed domain to redirect users to websites connected with gambling.”); National Collegiate Athletic Association v. Grand Slam Co., NAF Claim No. FA1222410 (“The Panel finds that Respondent’s commercial use of the disputed domain name to resolve to an Internet gambling website fails as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy [paragraphs] 4(c)(i) and (iii).”); LEGO Juris A/S v. J.h.Ryu, WIPO Case No. D2010-1156 (“[…] Respondent’s use of the Disputed Domain Name to sponsor links to paid advertising is not use of the Disputed Domain Name in connection with a bona fide offering of goods or services.”); and Cancer Treatment Centers of America, Inc. (CTCA) v. Henry Chan,WIPO Case No. D2003-0611 (“[…] that the Respondent uses the domain names to misdirect Internet traffic to search engines and a series of pop-up advertisements in order to collect advertising and click-through fees and to generate sales revenues is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the domain names.”)
As a result, the Panel rules that the Complainant has demonstrated that the Respondent has no rights or interests in the disputed domain names. C. Registered and Used in Bad Faith
In paragraph 4(b) the Policy lists four circumstances, any one of which, if found by the Panel to apply, is sufficient to sustain a finding of bad faith registration and use of the disputed domain names. However, that list is not meant to be exhaustive of the reasons upon which the Panel might base such bad faith. In this case, the Complainant’s LEGO trademark is so well-known worldwide that inclusion of it in the disputed domain names by the Respondent, who has no connection with and had received no license from the Complainant, is sufficient reason alone for the Panel to conclude that those names were registered and are being used in bad faith by the Respondent. See, for example, The Caravan Club v. Mrgsale, NAF Claim No. FA95314 (“Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith.”); and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (“’VEUVECLICQUOT.ORG’ is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”).
Therefore, the Panel finds that the Complainant has shown that the disputed domain names were registered and are 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, the Panel orders that the disputed domain names, and , be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Dated: March 24, 2011
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