Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondents are (1) Raheel Ra of Islamabad, Pakistan and (2) Protected Domain Services of Denver, Colorado United States of America (“Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2011. On May 13, 2011, the Center transmitted by email to N LLC (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On May 14, 2011, N LLC filed an informative filing and transmitted by email to the Center its verification response indicating that the disputed domain name was registered using a privacy service (Respondent Protected Domain Services (“PDS”)) and that Respondent PDS was not the current registrant of the disputed domain name, but continuing to name PDS as the domain name registrant listed in its WhoIs directory. On May 26, 20111, N LLC transmitted by email an acknowledgement of its failure to properly name the privacy-protected registrant in its May 14, 2011 communication, indicating that it had in the intervening time replaced the prior WhoIs entry with an entry reflecting the identity of the underlying registrant, Respondent Raheel Ra.
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 Respondent PDS and the postmaster email address at “postmaster@” of the Complaint, and the proceedings commenced on May 23, 2011. On May 31, 2011, N LLC requested that the Complaint be amended to include the underlying registrant, Rapheel Ra, as Respondent. On June 1, 2011, Complainant amended the Complaint to reflect the underlying registrant as a Respondent. On that same day, the Center acknowledged receipt of the amendment in an email transmission to Complainant, N LLC and Respondent Rapheel Ra.
According to the Rules, paragraph 2(a), a provider (here, the Center) satisfies its duty of communicating a complaint to a respondent when it employs “reasonably available means calculated to achieve actual notice to Respondent.” Here, on May 23, 2011, the Center transmitted the Complaint to each contact provided in the original WhoIs record for the disputed domain name, including the email address “@” at which Complainant had previously successfully reached the underlying registrant, as well as the domain name’s postmaster email address. This satisfied the notice requirement under the Rules, paragraph 2(a)2. Therefore, in accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2011. Respondents did not submit any response. Accordingly, the Center notified Respondents of default on June 15, 2011. No post-default communication from Respondents has been received.
The Center appointed Michael A. Albert as the sole panelist in this matter on June 24, 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
Complainant in these proceedings is LEGO Juris A/S, a leading company in the field of children’s toys and games (“LEGO”).
According to the non-contested allegations provided by Complainant, Complainant is the owner of the trademark LEGO and all other trademarks in the LEGO family of marks in a number of jurisdictions around the world (collectively, the “LEGO Marks”). The LEGO trademark was registered in the United States on September 17, 1974 and then followed with various International Registrations. Complainant has successfully asserted the LEGO mark in a number of UDRP proceedings, including a proceeding regarding the domain name . See Lego Juris A/S v. Synergy Management, Fred Shear,WIPO Case No. D2007-1028.
Over the years, LEGO has devoted substantial resources and efforts to building goodwill in LEGO Marks, which are used in connection with the sale of LEGO’s products throughout the world. The LEGO brand is distinctive and famous. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s LEGO Marks. Further, Complainant contends that the disputed domain name creates confusion by combining LEGO, Complainant’s famous mark and its corporate name, with a descriptive word, “table.”
Complainant contends that Respondent is neither using nor preparing to use the disputed domain name in connection with a bona fide offering of goods. Complainant contends that the disputed domain name provides sponsored links to third-party products that are not manufactured or sold by Complainant.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Complainant suggests, as evidence of Respondent’s bad faith, that it is inconceivable that Respondent did not know of Complainant or the LEGO Marks when registering the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Respondent provided no Response, and the deadline for so doing expired on June 12, 2011. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
Complainant has provided sufficient evidence that it is the owner of valid and subsisting international registrations and unregistered rights for the LEGO Marks. Complainant’s worldwide registrations for the LEGO Marks, as demonstrated in a Trademark Survey (offered into evidence in Annex 6 accompanying the Complaint), taken together with its longstanding, extensive worldwide use of the LEGO Marks, make such ownership undisputable.
The disputed domain name, however, is not identical to any of the LEGO Marks. Therefore, the first issue is whether the disputed domain name and the LEGO Marks are confusingly similar.
The disputed domain name combines three elements; (1) Complainant’s LEGO mark; (2) the term “table”, and (3) the suffix “.org.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “legotable”), as it is well established that the top-level domain name (i.e., “.org”) may be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758 (finding confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding confusingly similar to QUIXTAR).
Moreover, the addition of the term “table” as a suffix to the LEGO mark in the disputed domain name does not mitigate the confusing similarity between the disputed domain name and the LEGO Marks because the term “table” is descriptive. The addition of a descriptive term does not negate the confusing similarity between the LEGO Marks and the disputed domain name . See Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363 (finding confusingly similar to DELL); Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046 (finding confusingly similar to TELSTRA). Furthermore, the proper approach is to look at the overall impression or idea created by the mark and compare the result with the disputed domain name. See Yell Limited v. Ultimate Search,WIPO Case No. D2005-0091. Applying the test described in Yell, supra, the overall impression of the trademark in the present case is that it is a reference to Complainant or to Complainant’s LEGO Marks. As the disputed domain name uses the mark LEGO, it is confusingly similar to Complainant’s LEGO Marks.
The same conclusion has previously been reached with respect to the addition of “table” to the LEGO mark. See Lego Juris A/S v. Synergy Management, Fred Shear,WIPO Case No. D2007-1028 (“As a general rule, the combination of a trademark with a generic term does not exclude confusing similarity. Particularly in the case of a well-known mark, this mark will in many instances be instantly recognized. This rule clearly also applies in the present case where the term “legotable” may easily be understood or misunderstood as being the name of a product (table) sold by the Lego Group for use in connection with the LEGO construction toys. In this connection it is important that the LEGO Group offers under its trademark LEGO not only construction toys but also other products, such as computer hardware and software, books, videos and computer controlled robotic construction sets.”)
For all of the foregoing reasons, this Panel finds that the disputed domain name, , is confusingly similar to Complainant’s LEGO Marks in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), rights or legitimate interests in a disputed domain name may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably 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;
(ii) Respondent has been commonly known by the disputed domain name, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
It is uncontested that Complainant has neither licensed nor otherwise authorized Respondent to use the LEGO name or any of Complainant’s LEGO Marks, or variations thereof, in connection with Respondent’s business or as part of the disputed domain name. Complainant has thus made a prima facie showing that Respondent lacks rights to the disputed domain name. Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261.
Complainant has provided uncontroverted evidence that Respondent is using the disputed domain name in a misleading manner to attract consumers looking for genuine “LEGO” products. Prior UDRP panels have found that such offerings are not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i). See Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (finding no bona fide use where redirected to online pharmacy); see also Clad Holdings Corporation v. Kentech, Inc, a.k.a. Spiral Matrix a.k.a. Titan Net,WIPO Case No. D2006-0837 (“Nor does the Respondent appear to be using the domain names in relation with a bona fide offering of goods or services. [. . .] The Respondent only appears to provide links leading to websites unrelated to the Respondent where ALL-CLAD products or competing products may be purchased.”)
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the disputed domain name. Therefore, the Panel finds that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark(s) as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service offered on Respondent’s website.
It is well established that using a domain name that incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc.,WIPO Case No. D2004-0433. Here, Respondent has used the disputed domain name to attract Internet users to click on sponsored links to websites that offer third-party products that are not manufactured or sold by Complainant.
Further, the Panel finds compelling circumstantial evidence that Respondent likely knew of Complainant and Complainant’s LEGO Marks when it registered the disputed domain name. Complainant has been using its LEGO Marks for decades and has trademark registrations throughout the world for LEGO. Further, Complainant has asserted, and Respondent has not refuted, that Complainant has well-established rights in the LEGO Marks and that these marks are famous. Taken together, these facts make it likely that Respondent knew of Complainant’s marks and unlikely that Respondent innocently registered the disputed domain name without such knowledge.
Respondent’s knowledge of Complainant and Complainant’s LEGO Marks is strong evidence of bad faith. Based on the foregoing, the Panel finds that Respondent registered the disputed domain name in bad faith. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its [. . .] trademarks.”); Société Air France v. R Blue,WIPO Case No. D2005-0290 (“Respondent must have been aware of the Complainant’s trademarks while registering the domain name in dispute. This finding leads to the conclusion that the domain name in dispute has been registered in bad faith.”)
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the disputed domain name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element 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 disputed domain name be transferred to Complainant.
Michael A. Albert
Sole Panelist
Dated: July 7, 2011
1 3 days after the proceedings had been formally commenced on May 23, 2011.
2 In the circumstances, the Panel sees no compelling reason for it to order re-notification of the Complaint to the belatedly-provided contact information of Rapheel Ra. The Complaint was correctly notified to the relevant contact information of record as confirmed by N LLC at the relevant time, which N LLC confirmed pertains to a privacy or proxy registration service which ought to have conveyed any relevant Complaint notice to any affected underlying registrant. In any event, such underlying registrant, being apparently in this case Rapheel Ra, was copied by the Center to the subsequent case communications, including the Complainant’s requested amendment to the Complaint and, at no material time during these proceedings, has submitted any reply or sought to take any active part therein.
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