The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Hafeez Chudhary of New Jersey, United States of America. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2011. On March 17, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 2011, the Registrar 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 March 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on April 20, 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 very well-known for its construction toys which have been sold throughout the world for several decades under and by reference to the trade mark LEGO. The Complainant is the registered proprietor of numerous trade mark registrations around the world of LEGO including, by way of example, Community Trade Mark registration number 39800 filed April 1, 1996 (registered October 5, 1998) LEGO (word) for various goods and services in classes 3, 9, 14, 16, 20, 22, 24, 25, 28, 38, 41 and 42.
The Domain Name was registered on October 13, 2010 and is connected to a website featuring GoogleAds links to a variety of sites, some featuring the Complainant’s products, some concerned with other toys and some concerned with unrelated matter.
On November 3, 2010 the Complainant’s representative wrote to the Respondent drawing his attention to the existence of the Complainant’s rights and seeking transfer of the Domain Name. The Complainant received no reply. Chasers were sent on November 10, 2011 and November 23, 2010, but again no reply was received. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its LEGO trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s LEGO trade mark, the word “wood” and the generic “.com” domain suffix. For the purposes of assessing identity and confusing similarity under this head of the Policy, it is now well-established that the domain suffix may be ignored.
The descriptive term “wood” detracts in no way from the distinctiveness of the Complainant’s trade mark, which is the only distinctive element of the Domain Name.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant contends that the Respondent registered the Domain Name with the Complainant’s registered trade mark in mind, but without having sought the permission of the Complainant to do so and with the intention of deriving a commercial gain from its use.
The Domain Name and the nature of the Respondent’s website is such that the Complainant’s allegations are, in the Panel’s view, likely to be well-founded. While the combination of “lego” and “wood” is not a combination with which the Panel is familiar, the combination appears to have no specific meaning, yet the element of the combination which stands out is “lego”. The website features commercial links, some of which make specific reference to the Complainant’s products.
If the Respondent had a justification for having selected the Domain Name, one would have expected him to have come forward with an explanation in a Response, but he has not filed a Response.
The Panel can think of no reason why the Domain Name was selected other than that the Respondent anticipated that the “lego” element of the Domain Name would attract in custom, it being the internationally well-known trade mark of the Complainant
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The evidence before the Panel is sufficient to satisfy the Panel that the Respondent’s purpose in registering the Domain Name was to use it for commercial gain and to attract custom on the back of the fame of the Complainant’s trade mark, visitors to the Complainant’s site being likely to believe from the nature of the Domain Name that they would be visiting a site of or associated with the Complainant.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. 7. Decision
For 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.
Tony Willoughby
Sole Panelist
Dated: May 3, 2011
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