The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Stockholm, Sweden.
The Respondent is Paul Cotton of Arlington, Texas, United States America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2011. On June 21, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Domain Name. On June 24, 2011, Wild West Domains, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 24, 2011, providing the registrant and contact information disclosed by Wild West Domains, Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 27, 2011.
The Center verified that the Complaint together with the amendment to 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 28, 2011. In accordance with the Rules, Paragraph 5(a), the due date for Response was July 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2011.
The Center appointed Olga Zalomiy as the sole panelist in this matter on July 29, 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 well known for its construction toys, which it has sold throughout the world under the mark LEGO since 1953. The Complainant owns numerous trademark registrations for LEGO, including Community Trademark registration No. 000039800 for LEGO registered on October 5, 1998, and United States Trademark Registration No. 1018875 registered on August 26, 1975.
The Complainant is also the registered owner of over 1000 domain names which incorporate the LEGO mark, including domain name: , which is connected to the Complainant’s official website.
The Domain Name was registered on December 10, 2010. The Domain Name consists of: 1) the word “lego”; 2) the words “video” and “games”; and 3) the qTLD suffix “.net.” The Domain Name is connected to a website featuring a number of Complainants’ video games. The website also displays a button with the text “Buy from ” and screenshots of “www.” website containing customer reviews of Complainant’s videogames.
On January 31, 2011, the Complainant’s representative sent the Respondent a cease and desist letter, advising the Respondent about his unauthorized use of the LEGO trademark and seeking transfer of the Domain Name to the Complainant. The Complainant further followed up on its letter on April 13 and May 13, 2011, but received no response from the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it is the owner of the well-known LEGO trademark. In the Complainant’s view, the Domain Name is identical and confusingly similar to its LEGO trademark, and the addition of the suffix “videogames” does not mitigate the confusion. The Complainant claims that the addition of the top-level domain “.net” has no impact and is irrelevant for the purpose of determining confusing similarity.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant claims that it has not found that the Respondent has registered any trademarks or trade names corresponding to the Domain Name. The Complainant alleges that it has given no license or authorization of any kind to the Respondent to use the trademarks.
Further, the Complainant alleges that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. According to the Complainant, the Respondent’s website displays links to “www.”, where Complainant’s goods are offered for sale. In the Complainant’s view, the Respondent cannot enjoy a status of a genuine reseller of the Complainant’s products, because the Respondent is not actually trading in the Complainant’s goods. The Complainant claims that the Respondent derives income from redirecting Internet users to the third-party website where the Complainant’s products can be purchased. In support of its argument that the Respondent is not a bona fide seller of the games, the Complainant argues that the Respondent’s website, located at the Domain Name, fails to disclose the Respondent’s relationship with the Complainant and, instead, features the text “Copyright© 2011 Lego Video Game. All Rights reserved.” In Complainant’s view, this text amounts to Respondent’s claim of rights in the trademark LEGO and, as a result, the Respondent is tarnishing the Complainant’s trademark.
Finally, the Complainant claims that the Domain Name was registered and is being used in bad faith. The Complainant claims that its LEGO trademark has status as a well-known mark. In the Complainant’s view, the increasing number of infringing domain name registrations indicates that the LEGO trademark has widespread reputation throughout the Community1 and around the world. Further, the Complainant states that the Respondent’s failure to respond to Complainant’s January 31, 2011, cease and desist letter and two subsequent reminders supports finding of bad faith.
The Complainant alleges that the Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent’s website, by creating likelihood of confusion with the Complainant’s mark, as to the source, sponsorship or affiliation. In Complainant’s view, the fact that the website connected to the Domain Name contains sponsored links to “www.” indicates bad faith.
The Complainant requests that the Domain Name be transferred to the Complainant. In the Complainant’s view, it’s unlikely that the Respondent would come up unintentionally with a famous word like “lego” and register the Domain Name containing the word. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to Paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In case of respondent’s default, “the respondent’s default does not automatically result in a decision in favor of the complainant.”2 The complainant must establish “each of the three elements required by paragraph 4(a) of the UDRP.”3 Thus, to succeed on its claim, the Complainant must prove that: 1) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) the Respondent has no "rights or legitimate interests in respect of the Domain Name"; and 3) the Domain Name "has been registered and is being used in bad faith." Paragraph 4(a) of the UDRP.
“Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”4 A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. Under paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. Here, the Complainant has provided evidence of ownership of multiple trademark registrations for LEGO, including the Community Trademark No. 000039800 for LEGO, registered on October 5, 1998, and U.S. Trademark Registration No. 1018875 registered on August 26, 1975. The Panel, therefore, finds that the Complainant established its rights in the LEGO mark.
The test for confusing similarity should be a comparison between the mark and the domain name, which involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.5 Based on the comparison of the LEGO trademark and the Domain Name, the Panel finds them confusingly similar because the Domain Name incorporates the Complainant’s trademark in its entirety.6 It is a consensus among UDRP panelists that addition of merely generic or descriptive wording to complainant’s trademark, where the mark constitutes the dominant part of the domain name, is insufficient to avoid finding of confusing similarity.7 The Complainant’s mark in this case clearly constitutes the dominant part of the Domain Name and the descriptive words “video” and “games” merely describe the goods sold under the Complainant’s mark on the Respondent’s website. Finally, it is well established that the addition of the top-level domain suffix “.net” or equivalent should be disregarded under the confusing similarity test, as it is a technical requirement of registration.8
Therefore, the Panel finds that the Complainant has proven that the Domain Name is identical to the trademark LEGO in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.9 “Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.”10 Therefore, to satisfy this requirement, the Complainant may make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.11 If such prima facie case is not rebutted by the Respondent, the Complaint will be deemed to have satisfied paragraph 4(a) (ii) of the Policy.
Paragraph 4(c) of the Policy provides an open list of circumstances that demonstrate rights or legitimate interests of a respondent in a domain name. The Complainant alleges that none of such circumstances exist here. The Panel finds that the Complainant presented a prima facie showing that the Respondent lacks rights or legitimate interest in the Domain Names for three reasons. First, the Respondent did not use the Domain Name in connection with a bona fide offering of goods. Second, the Respondent uses the Domain Name for commercial gain and to misleadingly divert consumers to its website. Third, the Respondent has not been commonly known by the Domain Name.
Based on the evidence presented by the Complainant, the only products offered for sale on the Respondent’s website connected to the Domain Name are Complainant’s video games. The images of the video games featured on the website display the Complainant’s logo and its trademark. The Respondent, however, is not a licensee of the Complainant, nor has it obtained any authorization to use the Complainant’s trademarks or sell Complainant’s goods.
The Complainant claims that the Respondent is not acting as a bona fide reseller of goods. The totality of evidence submitted by the Complainant, weighs in support of this allegation. A printout of the Respondent’s
website shows images of the Complainant’s products, a button with the text “Buy from ” and images of “www.” pages containing customer reviews of Complainant’s videogames. The button directs users to the “www.” website. As a result, it is likely that the Respondent does not act as a reseller and indeed derives income from redirecting Internet users to the “www.” website where the Complainant’s products can be purchased. While the only goods sold on the Respondent’s website are the Complainant’s goods, the website fails to disclose an actual relationship between the parties or lack thereof. These actions do not amount to bona fide offering of goods.12
As to the Complainant’s assertion of “tarnishment” of its mark, the Panel notes that this phrase has a specific meaning that does not apply to the case at hand. “Tarnishment in this context normally refers to such conduct as linking pornographic images or wholly inappropriate information to an unrelated trademark.”13 This is not the case in the case at hand.
The Panel finds that the Complainant established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires “a positive finding that both the registration and use were in bad faith.”14 Paragraph 4(b) of the Policy provides an open list of the circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” The Panel finds that circumstances present in this case correspond to those described in paragraph 4(b)(iv) of the Policy. In particular, the Panel finds that “by using the domain name, you [a respondent] intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”15
(i) Registration in bad faith
The Panel finds it is likely that the Respondent knew about the Complainant’s widely known LEGO mark and registered the domain name in bad faith.
The Complainant presented sufficient evidence that allows the Panel to conclude that LEGO mark is as well-known mark. A copy of the “2009/10 Official TOP 500 Superbrands” rating provided by the Center for Brand Analysis, showing that LEGO was rated No. 8 among the top 500 brands in the world. Several UDRP panels have found the LEGO mark to be well known.16 In the Panel’s view, the existence of multiple attempts by third parties to trade on the Complainant’s goodwill is an indication of its fame.17 Since the Domain Name incorporating a well known mark is registered by someone with no legitimate connection to the product, it is likely that the Respondent registered the Domain Name in bad faith.18 The fact that the Domain Name contains the Complainant’s well known mark and words describing the Complainant’s goods featured for sale on the website connected to the Domain Name, supports conclusion that the Respondent registered the Domain Name in bad faith.
The Panel finds the fact that the Complainant’s trademark was registered long before the Respondent registered the Domain Name to be additional evidence of registration in bad faith. The evidence shows that the Respondent registered the Domain Name thirty five years after the Respondent registered and started using its mark in the Respondent’s country of residence. This is yet another indication of Respondent’s registration of the Domain Name in bad faith.
Therefore, the Panel finds that the Respondent registered the Domain Name in bad faith.
(ii) Use in bad faith
The Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement for the reasons described below.
The Panel finds that by setting up the website devoted to the Complainant’s products and by including the Complainant’s mark in the Domain Name, the Respondent realized that users will be attracted to the website thinking it is affiliated with, or endorsed by, the Complainant. This created a commercial opportunity for the Respondent that he presumably realizes as an intermediary who redirects consumers interested in purchase of the Complainant’s video games to the “www.” website. The Panels finds these facts sufficient to find that the Respondent used the Domain Name in bad faith.
Additionally, the fact the Respondent failed to respond to the Complainant’s cease and desist letters supports finding of the use in bad faith.
Therefore, 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. As a result, the Panel finds that the Complainant established the third element of Paragraph 4(a) 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.
Olga Zalomiy
Sole Panelist
Dated: July 29, 2011
1 In the Panel’s view, the word “Community” refers to the European Community.
2 See, Paragraph 4.6. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”).
3 Id.
4 Paragraph 4.6. of the WIPO Overview, 2.0.
5 Paragraph 1.2 of the WIPO Overview, 2.0.
6 See, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105.
7 See, Paragraph 1.9 of the WIPO Overview, 2.0.
8 See, Paragraph 1.2 of the WIPO Overview, 2.0.
9 Paragraph 4(a)(ii) of the Policy.
10 Paragraph 2.1 of the WIPO Overview, 2.0.
11 See, Paragraph 2.1 of the WIPO Overview, 2.0.
12 See, Paragraph 2.3 of the WIPO Overview, 2.0.
13 Paragraph 3.11. of the WIPO Overview, 2.0.
14 Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
15 Paragraph 4(b)(iv) of the Policy.
16 Id.
17 See, e.g. LEGO Juris A/S v. An Bui,WIPO Case No. D2010-1169; LEGO Juris A/S v. XMGlobal Inc,WIPO Case No. D2010-1168; LEGO Juris A/S v. J.h.Ryu ,WIPO Case No. D.2010-1156; LEGO Juris A/S v. Satisfaction Ink,WIPO Case No. D2010-1016; LEGO Juris A/S v. Chris Parent,WIPO Case No. D2010-1015; LEGO Juris A/S v. Domains by Proxy, Inc./ Phoenix Productions,WIPO Case No. D2010-0798; LEGO Juris A/S v. Granite Real Estate/Domains by Proxy, Inc.,WIPO Case No. D2010-0819; LEGO Juris A/S v. H, Heihachi Ltd WHOIS-PROTECTION,WIPO Case No. D2010-0821, LEGO Juris A/S v. Maho Jakotyc;WIPO Case No. D2010-0835; LEGO Juris A/S v. Online Toy Superstore,WIPO Case No. D2010-0839; LEGO Juris A/S v. Rampe Purda/Privacy--P,WIPO Case No. D2010-0840; LEGO Juris A/S v. Dealwave,WIPO Case No. D2010-0881; LEGO Juris A/S v. Isidore Ventures, LLC / WhoisGuard Protected,WIPO Case No. D2010-0660.
18 Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. See also, General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; and Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568.
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