The Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT Group, Sweden.
The Respondent is Agosto Global Inc. of Las Vegas, Nevada United States of America/ Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2010. On November 2, 2010, the Center transmitted by email. a request for registrar verification in connection with the disputed domain name. On November 2, 2010, Wild West Domains, Inc.. transmitted by email to the Center disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 4, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 4, 2010.
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 Respondent of the Complaint, and the proceedings commenced on November 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2010.
The Center appointed Enrique Ochoa de González Argüelles as the sole panelist in this matter on December 8, 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. 4. Factual Background
The Complainant is the owner of the trademark LEGO and all other trademarks used in connection with the LEGO brand of construction toys and other LEGO branded products.
The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the United States of America and elsewhere.
The Complainant and its licensees, through their predecessors commenced use of the LEGO mark in the United States (“U.S.”) 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. For instance, the revenue for the LEGO Group in 2009 was more than USD 2.8 billion.
The Complainant has subsidiaries and branches throughout the world.
LEGO products are sold in more than 130 countries, including in the United States of America.
The Complainant is also the owner of more than 1000 domain names containing the term “Lego”.
The trademark LEGO is among the best-known trademarks in the world, and the LEGO trademark and brand have been recognized as being famous.
The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group maintains an extensive web site under the domain name . 5. Parties’ Contentions A. Complainant
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. Indeed, the LEGO trademark and brand have been recognized as being famous. For instance, the LEGO mark has been named the 8th most famous trademark and brand in the world, according to a list of the official top 500 Superbrands for 2009/10.
The disputed domain name is confusing similar to the Complainant’s world famous trademark LEGO. The Respondent has no rights or legitimate interests to the disputed domain name and has registered and is using the disputed domain name in bad faith.
The fame of the trademark LEGO has been confirmed in numerous previous UDRP decisions. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name transferred to it, the Complainant must show the following per the Policy, paragraph 4(a):
(i) he disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
The Complainant bears the burden of proof for each of these elements. A. Identical or Confusingly Similar
The Complainant has evidenced registrations for the trademark LEGO in several countries including the United States of America, apparently the country of domicile of the Respondent. The Complainant’s trademarks are registered mainly in international class 28 for construction toys.
The Panel finds that the addition of the suffix “castle” is not relevant and will not have any impact on the overall impression of the dominant part of the domain name, LEGO, instantly recognizable as a world famous trademark.
On the other hand, the addition of the top-level domain (TLD) “.com” does not have any impact on the overall impression of the domain name and is therefore irrelevant in determining the confusing similarity between the trademark LEGO and the domain name .
As stated in other UDRP cases, confusing similarity is usually recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks. Therefore, the requirements in paragraph 4(a)(i) of the Policy are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
In the Panel’s view, the Complainant has provided evidence that the Respondent has knowingly acted so as to harm the Complainant’s business, for its own commercial gain, by use of the disputed domain name to mislead Internet users.
The Respondent has adopted the Complainant’s trademarks for its own use and incorporated them into its domain name without any authorization or license.
In the absence of a Response, the Panel accepts the arguments and evidence advanced by the Complainant and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Considering the undisputed wide use of the Complainant’s trademarks and in the absence of contrary evidence, the Panel finds that the Respondent had actual knowledge of the Complainant’s trademarks when the disputed domain name was registered.
As concerns bad faith the Panel notes the disputed domain name wholly incorporates the Complainant’s LEGO trademark and it appears from the correspondence of the Respondent that the Respondent was fully aware of the Complainant’s rights at the time of the registration of the domain name .
Indeed the Respondent stated in the emails addressed to the Complainant before the filing of the present procedure:
“… I put a lot on this site have incurred in expenses and I seeked professional advise on this site to be on the top pages on several top search engines …”
Consequently, the Panel, in accordance with previous decisions issued under the Policy, is of the opinion that knowledge of the Complainant’s trademark at the time of the registration of the domain name is to be considered in drawing an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226) and (Inmobiliaria Carso S.A. de C.V. v. RusliC and Trisakti University, Mr. Ahmad Rusli,WIPO Case No. D2008-1767).
Moreover, there is no connection between the Respondent and the Complainant and by using the disputed domain name the 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, as confirmed by the Panel.
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s web site or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).
In view of the above, the Panel finds that the 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, the Panel orders that the domain name be transferred to the Complainant.
Enrique Ochoa de González Argüelles
Sole Panelist
Dated: January 11, 2011
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