The Complainant is LEGO Juris A/S, Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Nino Gogashvili, Tbilisi, Georgia. 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 June 9, 2011. On June 9, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On June 10, 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 June 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2011.
The Center appointed Moonchul Chang as the sole panelist in this matter on July 15, 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, LEGO Juris A/S, is the owner of LEGO trademarks (Annex 6 of Complaint) which are used for construction toys and other LEGO branded products. The Complainant, commenced use of the LEGO mark in the United States in 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown remarkably. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. 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 Complainant also maintains a web site under the domain name (Annex 10 of the Complaint). The Complainant is also the owner of more than 1000 domain names containing the term “lego” (Annex 8 of the Complaint).
The disputed domain name was registered on May 3, 2011 according to the WhoIs information of the concerned registrar. 5. Parties’ Contentions A. Complainant
The Complainant contends that
(1) The disputed domain name is confusingly similar to the Complainants registered trademark LEGO. The suffix “com” does not detract from the overall impression and the addition of the top-level domain “.info” does not have any impact on the overall impression of the dominant portion of the disputed domain Name.
(2) The Respondent has no registered trademarks or trade names corresponding to the disputed domain name. The Complainant has given the Respondent neither license nor permission to use the trademark LEGO. In addition there is no evidence that the Respondent has been using LEGO for a bona fide offering of goods or services. Instead the Respondent has intentionally registered and used the disputed domain name to generate traffic for his own commercial gains.
(3) The Respondent registered and is using the disputed domain name in bad faith 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. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant’s trademark LEGO with the addition of the suffix “com” and “.info” which can be ignored for the purpose of assessing identity or confusing similarity because it is merely a generic domain suffix (SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131). The test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion (paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0).
Accordingly, the Panel finds the first element under paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
The Panel considers that under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of rebuttal is transferred to the Respondent (paragraph 2.1 of WIPO Overview 2.0; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455)
The Complainant alleges that the Respondent has no registered trademarks or trade names corresponding to the disputed domain name and the Complainant had never given the Respondent any license or permission to use the trademark LEGO. The Complainant further contends that the Respondent has been using LEGO mark to mislead Internet users to commercial websites for his own commercial gains.
Firstly, in the present case, the Panel considers that in the absence of any license or permission from the Complainant to use the Complainant’s trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed by the Respondent. Such is the case here; in as much as the Complainant is widely known in LEGO branded toy products and did not give any license or other permission to the Respondent to use the mark LEGO.
Secondly, there is no evidence presented to the Panel that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services at present. Indeed the evidence provided by the Complainant indicates that the Respondent appears to offer Complainant’s and other competing products for sale without authorization. In addition there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name LEGO has no apparent association with the Respondent.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case. C. Registered and Used in Bad Faith
The Policy itself sets out four sets of circumstances, evidence of which may establish bad faith (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering a domain name primarily to sell it for more than the registrant’s documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering a domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering a domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using a domain name to intentionally attempt to attract, for commercial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or a product or service on the registrant’s website or location (see Policy, paragraph 4(b)(iv)).
The Panel noticed the followings in finding out if the Respondent had acted in bad faith or not in the registration and use of the domain name.
Firstly, it is considered that the Respondent was aware of the value and goodwill of the LEGO mark of the Complainant at the registration of the dispute domain name because it is the widely known trade mark and it also displays LEGO products on its website. Although the Respondent has no rights or legitimate interests in the disputed domain name, it registered the domain name which is confusingly similar to the well-known trade mark, leading to an inference that it was registered in bad faith by the Respondent.
Secondly, the Respondent operated a web site which uses the LEGO trade mark and logotype of the Complainant as a main portion of the website, possibly misleading Internet users to have wrong impression that the domain name and its website is in sponsorship or affiliation with the Complainant. In fact the web site is designed in the Complainant’s color scheme, with bricks similar to the LEGO bricks and with the LEGO logotype displayed at the top of the website. In addition under the “About Us” tab of the website it displays “If any questions feel free to contact Legocom support service employee anytime,” which may give impression that the website is associated with LEGO especially because there is no disclaimer on it.
Thirdly, before the Complaint was filed, the Complainant contacted the Respondent to request a voluntary transfer of the disputed domain name with the reimbursement of registration and transfer fees. However, the Respondent asked for USD 1,073 which is in excess of the Respondent’s out-of-pocket costs.
Had it responded to the Complaint, the Respondent might have been able to present evidence or make an argument that its registration of the disputed domain name was not in bad faith. However, in the absence of any Response, the Panel draws an adverse inference on this point, and finds, under these circumstances, that the Complainant has established that the Respondent has registered and is using the disputed domain name in bad faith.
Based on the foregoing, the Panel is satisfied that the Respondent’s bad faith registration and use have been sufficiently established with respect to the disputed domain name in accordance with paragraph 4(b) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Moonchul Chang
Sole Panelist
Date: July 22, 2011
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