The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Private Private of Pennsylvania, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2010. On December 16, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Name. On December 16, 2010, GoD, Inc. 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 December 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2010.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on January 18, 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
LEGO Juris A/S, based in Denmark, is the owner of the LEGO trademark and many other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products.
The Complainant and its licensees (collectively “the LEGO Group of Companies” or the “LEGO Group”), through their predecessors, commenced use of the LEGO mark in the United States in 1953, to identify construction toys made and sold by them. The Complainant has subsidiaries and branches throughout the world and LEGO products are sold in more than 130 countries. The Complainant is also the owner of more than 1000 domain names containing the LEGO mark (Annex 8 to the Complaint).
The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising that prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.
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 also maintains an extensive web site under the domain name .
The Respondent registered the Domain Name on October 1, 2010.
The Respondent did not provide a Response. 5. Parties’ Contentions A. Complainant
The Complainant states that the dominant part of the domain name comprises the word “lego” that is identical to the registered trademark LEGO, which has been registered by the Complainant as a trademark and domain name in numerous countries all over the world. The addition of the suffix “cash” is not relevant and will not have any impact on the overall impression of the dominant part of the name as LEGO is instantly recognizable as a world famous trademark.
The Complaint claims that anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant. This is confusingly similar as it creates an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark LEGO there is a considerable risk that Internet users will perceive the Respondent’s Domain Name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant.
The Complainant states that it has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Complainant has also not found anything that would suggest that the Respondent has been using the Domain Name in any other way that would give them any rights or legitimate interests in the Domain Name. Consequently the Respondent may not claim any rights established by common usage.
The Complainant asserts that no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
Consequently the Complainant claims that Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant claims that on November 4, 2010 it sent a cease and desist letter, by e-mail, in which the Respondent was informed that the unauthorized use of the LEGO trademark within the Domain Name violated the Complainant’s rights in said trademark. No reply was received so a reminder was sent on November 22, 2010.
The Complainant states that the Domain Name is currently connected to a web site where the visitors can sell their LEGO products to the Respondent (Annex 11 to the Complaint). On the Online Submission form one can also see that it is possible to sell products other than those of the LEGO brand. Consequently, the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
The Complainant finally states that LEGO is a famous trademark worldwide. There is no doubt that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the Domain Name the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers. Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the Domain Name registered by the Respondent 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 Domain Name in question; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or similar to a trademark in which the Complainant has rights.
1. The Panel finds that the Complainant has established that it is the owner of the registered trademark LEGO based on the evidence provided by the Complainant (Annex 6 to the Complaint).
2. The Domain Name consists of two different words, one consisting of the Complainant’s registered trademark and other of a generic term “cash”. The Panel considers that the addition of the generic denomination, especially when added to a well-known trademark is not sufficient to avoid confusion.
The Panel therefore finds that the disputed domain name is practically identical and confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests
The second element requires the Complainant to prove that Respondent has no rights or legitimate interests in respect of the Domain Name in question.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain name in responding to the Complaint. In cases where the Respondent does not make use of these or any other available means to demonstrate its rights or legitimate interests, and provided that the Complainant has established a prima facie case under paragraph 4(a)(ii) of the Policy, the Complainant will be deemed to have met its burden of proof in this regard.
The Complainant has stated that the website located at the Domain Name features the Complainant’s trademark. The Complainant further adds that the Domain Name is currently connected to a website where the visitors can sell their LEGO products to the Respondent (Annex 11 to the Complaint). The Complainant asserts that the Respondent has never been commonly known by the Domain Name. The Complainant finally claims that the Respondent has no legitimate interest in the Domain Name.
Furthermore, the Complainant asserts that no license or authorization of any kind has been given to the Respondent to use the trademark LEGO. The Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with the Complainant.
The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity, and has not provided the Panel with any justifications that could demonstrate any rights or legitimate interests in the disputed Domain Name. The Panel has therefore to decide this case based upon the Complaint only, in accordance with paragraph 5(e) of the Rules.
In the Panel’s view, there is no evidence in the case record demonstrating that the Respondent’s unauthorized use of the disputed Domain Name and associated website is in connection with a bona fide offering of goods or service, or a legitimate noncommercial or fair use. There is no connection between the Respondent and the Complainant and that the Respondent’s use of the Complainant’s logo on the website corresponding to the Domain Name creates a false impression of association. This impression of association is furthered by the fact that the website does not contain any disclaimer disclosing the Respondent’s relationship with the Complainant.
In the absence of a Response and in light of the above, the Panel is satisfied that the Complainant has satisfied the second element of paragraph 4(a) of the Policy and has established that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrate that (1) the Domain Name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The Domain Name is composed of two words, “lego” and “cash”. The first is a registered trademark owned by the Complainant; the second is a generic term.
The Complainant has stated that the website, at the Domain Name, features the Complainant’s trademark and that the Domain Name is currently connected to a website where the visitors can sell their LEGO products to the Respondent. On the Online Submission form one can also see that it is possible to sell products that are not LEGO branded.
The Panel has viewed the evidence provided by Complainant (Annex 11 to the Complaint) and has also viewed the webpage itself and can confirm that the website does offer the visitors the possibility to sell their LEGO products to the Respondent. On the webpage one can view the following, explanation “we pay cash for lego” and then proceeds to explain how it works. Furthermore, as indicated above, the website not only reproduces the trademark but also reproduces the LEGO logo.
Since the website clearly offers to buy LEGO products one can reasonably conclude that the Respondent must have had perfect knowledge of the existence of the LEGO trademark when creating this website as it was incorporating, into its Domain Name, without authorization, a third party’s well-known trademark, which in the Panel’s view is evidence of bad faith registration.
Furthermore, the Complainant attempted to contact the Respondent, seeking the transfer of the Domain Name; no response to such request was answered and the website continued functioning. Here, the Panel’s finding of bad faith is further supported by the fact that the Respondent has provided false contact information. See Aulbach Lizenz AG v. Victorio Naturano WIPO Case No. D2010-1394.
In the absence of a response, the Panel also finds that the Complainant's mark is likely being used for a commercial purpose on the website associated with the Domain Name.
Consequently, the Panel considers that this Domain Name has the ability to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s well-known trademark.
The above can only lead the Panel to conclude that the Respondent’s attempting to attract, clearly for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services provided on the website. 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.
Rodrigo Velasco Santelices
Sole Panelist
Dated: January 27, 2011
Full & Egal Universal Law Academy