Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Project Xenos, Ty Weir of Oklahoma City, Oklahoma, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2011. On July 27, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same day 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 July 29, 2011. On July 30, 2011, the Center received an email communication from “K. Weir”, asking if Respondent needs to pay any fees in the administrative proceedings. On August 1, 2011, the Center informed Mr. Weir regarding the applicable fees for the administrative proceedings. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 19, 2011.
The Center appointed Frank R. Schoneveld as the sole panelist in this matter on August 23, 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
On the date of submission of the Complaint, July 26, 2011, Complainant alleges that it held, in a very large number of countries, registered trademarks in the mark LEGO. Because Complainant only gives a list prepared by Complainant of registration numbers and renewal dates of apparently registered trademarks, it is not clear whether any of these registered trademarks were actually registered on or before the registration date of the disputed domain name. Without any clear statement or evidence that relevant trademarks were so registered, the Panel cannot be expected to assume that the registered trademarks existed on the date the disputed domain name was registered (January 5, 2011). In the absence of any evidence whatsoever or even a clear statement of such registration of a trademark, the Panel cannot find there were any relevant trademarks registered on or before the registration date of the disputed domain name.
Nevertheless, it is apparent from the Complaint and not challenged by the Respondent, that the LEGO mark has been used extensively, exclusively and continuously by Complainant since 1953 in the United States of America (“United States”), the country where the registrant of the disputed domain name, the Respondent, has his contact address. Complainant has supplied reports of worldwide and United States brand awareness showing that the LEGO mark is famous in the United States and worldwide. The Panel finds that in the United States the mark LEGO has been a well-known common law trademark since at least the year 2008.
In correspondence between Complainant and Respondent in which Complainant brought to Respondent’s attention the allegation that the disputed domain name infringed Complainant’s trademark, Respondent refused to transfer the disputed domain name for an amount limited to out-of-pocket expenses and demanded over USD 1800 to have it transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to its trademark LEGO because:
- It is the dominant part of the disputed domain name;
- It is world famous;
- Other UDRP decisions accept that LEGO is a world famous trademark;
- The addition of the Top-Level Domain “.com” has no impact on the overall impression of the use of “lego”, the dominant part of the disputed domain name;
- The trade and other public will perceive the disputed domain name as one owned by or having some kind of commercial relation or other connection with Complainant;
-The trademark LEGO is at risk of being tarnished through connection with the website to which the disputed domain name resolves.
Complainant asserts Respondent has no rights or legitimate interests in the disputed domain name because there is:
- No registered trademark, trade name or company name corresponding to the disputed domain name;
- No suggestion that Respondent has used the mark LEGO in any other way that would give him any
legitimate rights in the disputed domain name or the mark LEGO;
- No authorization has been given by Complainant to use the LEGO trademark, and Respondent
has never had a business relationship with Complainant.
Complainant also argues that mere registration of the disputed domain name cannot give rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent must have known of Complainant’s right in the name “Lego” at time of registration but continues to use the disputed domain name knowing it infringes Complainant’s rights.
Complainant argues that Respondent is not using the disputed domain name for any bona fide offering of goods or services, and the sponsored links for offering of goods is not a bona fide offering of such goods, resulting in Respondent trying to sponge off Complainant’s LEGO mark.
Complainant states the disputed domain name was registered and is being used in bad faith because:
- Respondent failed to stop using the disputed domain name after being notified that it violated
Complainant’s trademark; and
-Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain,
Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website;
-Respondent would not have come up with the disputed domain name if it did not include the famous LEGO mark.
Complainant submits that it is irrelevant who may obtain some commercial gain through bad faith use of the website to which the disputed domain name resolves - there need only be an intention to attract Internet users for some commercial gain whether or not any gain is derived by Respondent. Complainant summarizes by saying the Respondent is using the disputed domain name to misleadingly divert consumers to his website, and the sponsored linked websites, and that there is no doubt that Respondent was aware of the rights Complainant has in the LEGO trademark at the point of registration of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant, in essence, asserts that the dominant part of the disputed domain name is Complainant’s trademark LEGO, and the addition of “pixel” in the disputed domain name does not prevent the conclusion that the disputed domain name is confusingly similar to Complainant’s trademark LEGO.
It must be remembered that the Policy requires that the disputed domain name be identical or “confusingly similar” to a trademark in which Complainant has rights. Complainant has provided evidence it is the holder of the common law trademark LEGO in the United States where Respondent has its contact address for the disputed domain name’s registration. Complainant also provides evidence its trademark is famous not only in the United States but also worldwide. The panel finds that Complainant at least since 2008, has in the United States had a famous common law trademark in the mark LEGO, which is also famous worldwide.
Since the disputed domain name starts with “lego”, it can be said to be similar to Complainant’s LEGO trademark. However, a critical issue is whether the disputed domain name is “confusingly” similar to the LEGO trademark. This can only be determined by comparing Complainant’s mark with the disputed domain name, and considering whether an Internet user would by that similarity be confused as to trade origin, proprietorship or operation of the website, or would be confused (by the similarity with the trademark) as to the origin of the goods or services that were to be found on the website to which the disputed domain name resolves.
Given the prominent use of “lego” in the disputed domain name, and evidence provided of a famous mark and worldwide brand awareness of the trademark LEGO at least since 2008 (well before the disputed domain name was registered), and placing this mark beside the domain name , an Internet user would, in the Panel’s view, be led into confusion that the disputed domain name was somehow associated with or approved by the holder of the trademark LEGO when it clearly is not.
In the absence of any submission from Respondent, the Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests
Respondent makes no comment on, and does not refute Complainant’s assertion that Respondent has no rights or legitimate interests in respect of the disputed domain name . The copy of the website supplied by Complainant to which the disputed domain name resolves, indicates the website is used to offer goods through links that are, according to Complainant, sponsored links. Complainant argues this is not a bona fide offering of goods or services because it is done only “to generate traffic to a website displaying sponsored links”. Further, Complainant has never given Respondent permission to use its trademark, either on the website of the disputed domain name, or for any other purpose. Complainant also submits that Respondent has no trademark, trade name, company name or anything else that suggests Respondent could have rights or legitimate interests in the disputed domain name.
In the absence of any response to the assertions of Complainant, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
From the copy of the website to which the disputed domain name resolves, as supplied by Complainant, It is clear that Respondent is using the disputed domain name for commercial gain using Complainant’s trademark. This is clear from the links that offer for sale LEGO products including “Buy lego bricks”, “Buying lego” and “Cheap lego sets” amongst other links. Clearly, through such links on the website of the disputed domain name, there is a likelihood Internet users will be confused by said use of Complainant’s trademark. This is because a prominent part of the disputed domain name as well as the use of the LEGO mark on the website, will cause Internet users to believe the disputed domain name and corresponding website is sourced, sponsored, affiliated or endorsed by Complainant.
Complainant states that Respondent is intentionally attempting to attract Internet users to its website for “commercial gain” through such use of the disputed domain name. The “commercial gain” is clearly being made by the sponsored links to which Internet users will click through. It is unclear however, whether or not it is Respondent who is obtaining such commercial gain.
Paragraph 4(b) of the Policy sets out certain findings that are evidence of registration and use of the disputed domain name in bad faith. One of these is that use of the disputed domain name to intentionally attempt to attract, for “commercial gain”, Internet users to the website by creating a likelihood of confusion with Complainant’s mark can, in certain circumstances, amount to bad faith use. It is noted however, that the commercial gain need not accrue to Respondent – only that Respondent had the intention, for commercial gain (whether or not accruing to some specified person) to attract Internet users to the website to which the disputed domain name resolves. Attracting the attention of Internet users to Respondent’s website at the disputed domain name is demonstrably for commercial gain, even if it is not clear to whom the commercial gain will accrue. Hence, the requirements of paragraph 4(b)(iv) of the Policy are satisfied and there is indeed evidence of registration and use of the disputed domain name in bad faith.
In the absence of any contrary evidence or submission from Respondent, the Panel finds that the disputed domain name has been 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 disputed domain name be transferred to Complainant.
Frank R. Schoneveld
Sole Panelist
Dated: September 6, 2011
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