The Complainant is LEGO Juris A/S, Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is F.H.U. Betternet Rafal Biegun, Sucha Beskidzka, Poland. 2. The Domain Name and Registrar
The disputed domain name is registered with Az.pl, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2011. On June 1, 2011, the Center transmitted by email to Az.pl, Inc. a request for registrar verification in connection with the disputed domain name. On June 3, 2011, Az.pl, 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 June 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2011.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on July 19, 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.
The Complainant states that the language of the registration agreement is Polish and requests the Panel to determine that English should be the language of the proceedings. However, according to the Registrar's verification, the language of the registration agreement is in fact English. According to the Policy, the language of the proceedings shall therefore be English. 4. Factual Background
The Complainant is the owner of the trademark LEGO, registered worldwide and e.g. as a Community Trade Mark No 39800 on 5 October 1998. The Complainant has subsidiaries and branches all over the world and in 2009, the revenue of the LEGO Group was more than US D 2.8 billion. The LEGO products are sold in more than 130 countries. The Complainant also owns more than 1000 domain names containing the mark LEGO.
In 2011, the Complainant released a product line under the name “Ninjago”, the suffix of the disputed domain name. NINJAGO is also an unregistered trademark of the Complainant.
The Complainant tried to contact the Respondent three times, but did not receive any response. The disputed domain name points to a website containing sponsored links. 5. Parties’ Contentions A. Complainant
The Complainant contends that the trademark LEGO is a well-known trademark. According to the Top 500 Superbrands 2009/10 by Superbrands UK, LEGO is number 8 on the list of most famous trademarks in the world.
The dominant part of the disputed domain name is the famous trademark LEGO, which is identical to the Complainant's registered trademark. The suffix of the disputed domain name is “Ninjago”, which is the name of the Complainant's product line released in 2011.
According to the Complainant, Internet users will mistakenly think that the disputed domain name relates to the Complainant, because of the reputation of the mark LEGO. The Complainant also argues that the connection to the website with sponsored links may tarnish the Complainant's trademark.
The Complainant also argues that the Respondent has no rights or legitimate interests to the disputed domain name. The Respondent has not registered trademarks or trade names corresponding to the disputed domain name and the Respondent is not using the LEGO mark in any other way that would create legitimate interests in the disputed domain name. The Respondent has not been authorized by the Complainant to use the trademark.
Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith. The considerable value and goodwill of the mark LEGO is most likely what made Respondent register the disputed domain name. The Respondent did not respond to the Complainant's cease-and-desist letters further the disputed domain name is connected to a website featuring sponsored links. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it owns multiple trademark registrations for the mark LEGO. It is also evident that the mark is a well-known trademark worldwide, as held by previous panels and shown e.g. by the survey filed by the Complainant.
The disputed domain name fully incorporates the famous trademark LEGO. The other element of the disputed domain name is “ninjago, which is also the name of a product line of the Complainant. The Panel finds that the disputed domain name is confusingly similar to the well-known trademark LEGO, because the mark is included in the disputed domain name in its entirety and the mark is in a dominating role in the disputed domain name due to its fame.
The addition of “ninjago”, a product line of the Complainant, adds to the likelihood of confusion because it gives the impression that the domain name is owned by or affiliated with the Complainant or its respective product line. B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no trademarks or trade names corresponding to the disputed domain name, that the Complainant has given no authorization or license to use the LEGO trademark, that the Respondent is not an authorized dealer of the Complainant's products and that it has never had a business relationship with the Complainant.
All these considered together, the Panel accepts that the Complainant has put forward a prima facie case of the Respondent's lack of rights or legitimate interests to the disputed domain name. The Respondent chose not to challenge these allegations and accordingly the Panel accepts these arguments.
Hence the Panel finds that the Respondent lacks rights or legitimate interests to the disputed domain name. C. Registered and Used in Bad Faith
Because the Complainant's trademark LEGO is a well-known and famous trademark and because it has been registered in several jurisdictions prior to the registration of the disputed domain name, the Panel finds it unlikely that the Respondent would not have been aware of the Complainant's trademark when registering the domain name. The fact that the disputed domain name includes the name of the Complainant's product line further indicates that the disputed domain name was registered specifically with the Complainant and its product line in mind.
The disputed domain name is directed to website featuring sponsored links (or "pay-per-click" links), which can create a false association with the Complainant among Internet users. Such sponsored links are also a way of obtaining commercial gain of the Complainant's trademark, either by directly receiving revenue when the links are clicked, or by obtaining other economical considerations, such as reduced registration or service fees from the Internet service provider.
Furthermore, the lack of response to a cease and desist letter is another indication of bad faith registration and use, as determined by panels in News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623 and Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598 and America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460, as referred to by the Complainant.
In the Panel's view the registration and use of the domain is precisely the sort of parasitic abuse of the domain name and trademark systems that the Policy was created to address. Hence the Panel finds that the disputed domain name was registered and is being used in bad faith. 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.
Tuukka Airaksinen
Sole Panelist
Dated: August 1, 2011
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