Complainant is LEGO Juris A/S of Billund, Denmark represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Suka LLC of Royal Palm Beach, Florida, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2011. On June 22, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On June 22, 2011, eNom transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 14, 2011.
The Center appointed Francisco Castillo-Chacón as the sole panelist in this matter on August 1, 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 is one the world’s largest toy companies, Complainant commercializes its products throughout the world, including in the United States of America, where Respondent is based. Complainant owns several trademarks amongst which we find LEGO, Complainant also owns over 1,700 domain names, most of which use the trademark LEGO in some way or another. The trademark LEGO is owned by Complainant and used in relationship with its toys. Due to multiple licensing agreements the trademark LEGO is used in conjunction with brands owned by others, including at one time SPIDERMAN.
Complainant had an agreement with Columbia Pictures to use the term Spiderman in connection with the trademark LEGO, however the agreement was terminated in 2000 and no products using the term Spiderman in connection with the trademark LEGO have been manufactured since. The products displayed in the site “www.” are not manufactured by LEGO, the products are rather video games licensed by third parties. 5. Parties’ Contentions A. Complainant
Complainant is one of the world’s leading toy companies. Complainant has a global presence, which is demonstrated by owning trademark registrations of its LEGO brand in more than 130 countries, including in the United States of America, the country in which it began using the trademark in 1953.
The trademark LEGO is used to identify construction toys, through extensive marketing and a long history in the industry LEGO is considered a well-known and famous mark. Complainant also owns and operates over 1,000 domain names which include the trademark LEGO in some way. Complainant has also begun using its trademark in connection with other goods and services such as computer hardware and software, books, videos and computer controlled robotic construction sets.
Respondent did not file a response. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Effect on Default
There is a consensus that a respondent’s default does not automatically result in a decision in favor of the complainant, the complainant must still establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) paragraph 2.2). Notwithstanding this, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel has not found any exceptional circumstances to justify Respondents’ failure to submit a Response. In short, Respondent does not expressly deny any of the facts stated by Complainant and the Panel therefore infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.
Thus this Panel will take Complainant’s assertions as facts, including the fact that Respondent is not an authorized reseller of LEGO toys, nor does Respondent directly sells LEGO toys.
With that being said, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that derive from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; RX America, LLC. v. Matthew Smith,WIPO Case No. D2005-0540. B. Identical or Confusingly Similar
Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Complainant’s trademark rights are measured as at the date when the Complaint was filed. WIPO Overview 2.0, paragraph 1.4.
Respondent registered the disputed domain names well after Complainant established rights in its LEGO trademark, (see, e.g., Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent,WIPO Case No. D2009-1033). Complainant has clearly demonstrated that it had registered national and international trademarks incorporating LEGO well before January 2011 when the disputed domain names were registered. Complainant further evidenced its rights over the domain name and over 1000 domain names incorporating the trademark LEGO.
Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark, this is sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l.,WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282. This Panel believes that likelihood is increased in the case of by the word added to the registered trademark, as any person would believe that the site relates to toy sets made by Complainant with relation to the well-known character. This Panel notes also that “halo” is a very well-known science fiction video game.
This Panel has found no facts or arguments that could justify a dissent from the consensus view, therefore in consent with previous panels, this Panel finds that the mere addition of a generic terms such as “spiderman” or “halo” to a trademark so well known as LEGO, does not eliminate the confusing similarity between them, in this case the Panel believes the choice of words actually increases the likelihood of confusion.
Therefore the Panel finds that the disputed domain names are confusingly similar to Complainant’s LEGO trademark.1 C. Rights or Legitimate Interests
Complainant has made its prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain names. Respondent failed to respond or to offer any evidence to demonstrate that Complainant has ever authorized Respondent to use the LEGO trademark.
The Panel finds that no bona fide offering of goods and services can be found, when a site is using, without a license or authorization, a registered trademark as part of its name to indirectly solicit orders for products sold by others, even if the products finally sold are made by Complainant.
It is the view of this Panel, Complainant has satisfied its burden and has provided to the Panel with sufficient evidence to meet the prima facie requirement showing that Respondent has no rights to or legitimate interests in the disputed domain names. By defaulting the proceedings Respondent has not provided any evidence to demonstrate rights or legitimate interests in the disputed domain names as set forth in paragraph 4(c) of the Policy. Therefore the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain names. (See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465). This holding is consistent with WIPO Overview 2.0, paragraph 2.1., pursuant to which “once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
For all of these reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied by Complainant D. Registered and Used in Bad Faith
It is evident from the content of the disputed domain names that Respondent knew about LEGO toys, not only by the pictures depicted in the web sites, but also by the discussions that appear to take place within the web site. It is even more evident after following the link which shows a box of what appears to be legitimate LEGO toys, the visitor reads an offer to buy LEGO sets at 50% discount, after clicking the visitor is directed to an page which clearly depicts products made by Complainant, though the Panel believes the picture to correspond to an actual product made by Complainant, this is not enough to demonstrate a good faith use of the trademark.
Complainant contends that Respondent registered and is using the disputed domain names in bad faith in violation of the Policy paragraph 4(b)(iv).
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, paragraph 4(b)):
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have 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.
It is clear to this Panel that Respondent is using the disputed domain names to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source of a product.
Absent some exceptional justification from Respondent, it is reasonable to infer that Respondent registered the disputed domain names with the primary intention of either confusing visitors as to the source of the disputed domain names or simply benefiting from Complainant’s well established trademark. This Panel believes this constitutes bad faith within the meaning of paragraph 4(b)(ii) of the Policy.
The Panel therefore concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name may be a further evidence of bad faith. See PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435.
As previous panels have concluded the four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
In this case Respondent is using the entire trademark owned by Complainant without a plausible good faith explanation. The fact that Respondent was contacted by Complainant before filing the complaint, and that Respondent did not answer to any previous correspondence, and then Respondent defaulted this procedure, hence has failed to offer a plausible explanation as to its choice of LEGO for both disputed domain names, leaves no choice to this Panel but to infer a bad faith use in both disputed domain names.
This Panel can also infer a bad faith registration out of the evidence submitted by Complainant which leaves no doubt to this Panel that Respondent knew about Complainant’s trademark and it was out of the knowledge and the fame of Complainant’s trademark that it decided to register the disputed domain names. 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 names and be transferred to the Complainant.
Francisco Castillo-Chacón
Sole Panelist
Dated: August 14, 2011
1 In any event, the disputed domain names and are confusingly similar to Complainant’s well-known LEGO trademark and the present decision is without prejudice to trademark rights of a third party, whether the licensor or otherwise, of SPIDERMAN or HALO.
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