The Complainant is LEGO Juris A/S of Billund, Denmark represented by Melbourne IT Digital Brand Services AB of Sweden.
The Respondent is Larry Cooper of Beaumont, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2010. On November 17, 2010, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On November 19, 2010, 1&1 Internet AG 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 November 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2010.
The Center appointed Marilena Comanescu as the sole panelist in this matter on December 21, 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 language of the proceeding is English. 4. Factual Background
The Complainant is LEGO Juris A/S a worldwide known toymaker. LEGO branded products are sold in more than 130 countries, including in the United States of America. In 2009, the revenue for the Complainant and its licensees was more than USD 2.8 billion.
The Complainant owns many trademark registrations, including the following:
- United States of America trademark no. 1018875 with a filing date of September 17, 1974 for the word mark LEGO in class 28; and
- Community trademark no. 39800 with a filing date of April 1, 1996 for the word mark LEGO in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, 42.
The Complainant also owns more than 1,000 domain names incorporating the mark LEGO, the main one being .
The disputed domain name was registered on August 2, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:
(i) The domain name is confusingly similar to its trademark LEGO:
The dominant part of the domain name is identical to Complainant’s world famous mark LEGO; the addition of the generic suffix “star” and the top-level domain “.net” being irrelevant and having no impact on the overall impression of the dominant part of the disputed domain name.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
From the Complainant’s searches, the Respondent does not appear to hold any registered marks or trade names corresponding to the disputed domain name. Further, there is no evidence of use of the disputed domain name by the Respondent that would give him any rights or legitimate interests in this name.
The Complainant never granted the Respondent the right (authorization or license) to use the trademark LEGO.
Given the fame of the trademark, it is highly unlikely that the Respondent was not aware of the Complainant’s rights in this mark, being rather obvious that the fame of the mark has motivated the Respondent to register the disputed domain name .
The Respondent is using the disputed domain name to generate traffic and income through sponsored links.
(iii) The domain name was registered and is being used in bad faith:
The Complainant’s trademark LEGO is considered well-known through the world in relation to toy products. Therefore, the considerable value and goodwill of the mark LEGO is most likely what made the Respondent register the disputed domain name.
No response was received to the Complainant’s cease and desist letter and reminders sent to the Respondent prior to commencing the present procedures.
At the time of filing the Complaint, the disputed domain name was connected to a website containing sponsored links; therefore, the Respondent was using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the policy, these rules and any rules and principles of law that it deems applicable.”
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not hold rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.
Consequently, the Panel shall further analyze the eventual concurrence of the above-mentioned circumstances in the present case. A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this element, namely: that it has rights in a trade or service mark, and that the disputed domain name is identical or confusingly similar to its mark.
The Complainant has rights in the LEGO trademark, holding registrations worldwide, including in the United States of America where the Respondent is apparently located.
In addition to the Complainant’s trademark LEGO, the disputed domain name contains the generic suffix “star”. From the records in this case and in line with the previous URDP panels, it is well established that LEGO has the statue of a well-known trademark. A wide variety of UDRP panels have ordered the transfer of domain names incorporating trademarks and generic or descriptive words as the mere addition of a generic term to a famous mark is generally not sufficient to avoid confusion. See J.P. Morgan Chase & Co. v. CPIC Net,WIPO Case No. D2001-0385; Compagnie Générale des Etablissements Michelin-Michelin & Cie. v. Tgifactory,WIPO Case No. D2000-1414 and cases cited therein.
The “.net” generic Top Level Domain is irrelevant in the present analysis.
For all the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark.
Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its trademark. Therefore, the burden of proof on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name, either by demonstrating one of the three circumstances under paragraph 4(c) of the Policy or by providing other relevant acceptable grounds.
The Respondent failed to submit any response to the Complaint and did not respond to the Complainant’s cease and desist letter, which was sent prior to commencing the present procedures. The silence of the Respondent may support a finding, based on other relevant circumstances, that it has no rights or legitimate interests in respect of the disputed domain name. See also Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007 Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011.
Further, there is no evidence to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this domain name, or is making any legitimate noncommercial or fair use of the domain name. To the contrary, the disputed domain name is connected to a website offering sponsored links.
The Panel finds that using a third party’s well-known trademark, without its consent, for commercial gain is not indicative of a right or legitimate interest. Such use of the disputed domain name cannot be considered bona fide.
For these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that there is little doubt in this case that the disputed domain name was initially registered with the Complainant’s trademark in mind as the domain name incorporates as dominant part and prefix Complainant’s well-known trademark LEGO. Also, the LEGO mark has been used in the United States since 1953 and was registered in 1974, whereas the disputed domain name was registered in August 2010.
Paragraph 4(b)(iv) of the Policy 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 disputed 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.
Based on the record in this case, the Respondent used the Complainant’s well-known trademark in the toy industry for a web portal providing sponsored links for various products, including toys.
Therefore, it may reasonably be inferred that the Respondent has not set up this redirection system without the expectation of some financial gain, and is operating the well-known pay-per-click or click-through device, whereby the operators of other websites pay a commission to the Respondent for traffic redirected to them.
Therefore, the Panel finds that this is a classic case of cybersquatting: the circumstances of this case lead the Panel to believe that the Respondent was aware of the Complainant’s LEGO trademark and the corresponding products and thus registered the disputed domain name and uses the same in bad faith, to attract Internet users by creating a likelihood of confusion with the Complainant's mark for the Respondent’s commercial gain.
Further, the Respondent has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark and therefore reinforces this approach (see also Kabushiki Kaisha Toshiba v. Shan Computers,WIPO Case No. D2000-0325).
For all these reasons, the Panel finds that the third element of the Policy is established, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 name be transferred to the Complainant.
Marilena Comanescu
Sole Panelist
Dated: January 4, 2011
Full & Egal Universal Law Academy