The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Elam Capital Funding, LLC of California, United States of America, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2011. On April 15, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 15, 2011, 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 April 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2011. The Response was filed with the Center on May 14, 2011.
The Center appointed Michael J. Spence as the sole panelist in this matter on May 31, 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 the owner of several trade marks including the term “lego” and used in relation to a variety of products, but particularly toys. These products are sold in more than 130 countries and the Complainant has annual revenue that in 2009 was more than US D2.8 billion. The Respondent is not an authorized seller of Lego products, but operates a web site with links to sites selling Lego products, taking commissions from the vendors of those products. The Respondent’s website does not contain any statement as to whether the Respondent is an unauthorized reseller of the Complainant’s products. 5. Parties’ Contentions A. Complainant
The Complainant contends: that the disputed domain name is identical or confusingly similar to its mark and that the addition of the suffix “city-airport” merely strengthens the likelihood of confusion; that the Respondent does not have any rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent contends that it operates a legitimate resale site under the disputed domain name and that, having gone to considerable effort and expense in establishing that resale site, it has a legitimate interest in the use of the disputed domain name. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant's trade mark in its entirety, together with a suffix that describes one of the Complainant’s popular products. Far from resolving any confusion caused by the use of the term ”lego”, the addition of the term “city-airport” actually exacerbates it. In this Panel’s view there can be no doubt that the domain name is identical or confusingly similar to the Complainant's marks.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie, that the Respondent has no rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
In this case, despite the very well established reputation of the Complainant's mark and therefore the strong likelihood of confusion, the Respondent claims a legitimate interest as a reseller of the Complainant’s goods. However, paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes it clear that in order to constitute a legitimate, albeit unauthorized, resale site, the site must 'accurately and prominently [disclose] the registrant's relationship with the trademark holder". In this case the absence of such a relationship is not made clear on the web site operating under the disputed domain name. Moreover, there are UDRP panel decisions that establish that the use of a disputed domain name to advertise sponsored links is not a bona fide use of the domain name such as to give rise to rights or legitimate interests (LEGO Juris A/S v. J.h.Ryu, WIPO Case No. D2010-1156). It is clear that in this case the Respondent’s web site, consisting as it does of such sponsored links, and failing to acknowledge that the Respondent is not an authorized reseller, does not constitute a legitimate interest.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy in relation to the disputed domain name. C. Registered and Used in Bad Faith
Given the long-standing and international reputation of the Complainant's marks, it is inconceivable that the Respondent might have registered the disputed domain name unaware of the potential for consumer confusion. Moreover, it was the clear intention of the Respondent to profit from the sponsored links on the web site operating under the disputed domain name, and thereby to profit from any potential consumer confusion.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy in relation to the disputed domain name. 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.
Michael J. Spence
Sole Panelist
Dated: June 5, 2011
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