Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Colin Heggie of Wiltshire, United Kingdom of Great Britain and Northern Ireland, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2011. On July 29, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On August 1, 2011, 1&1 Internet AG 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 August 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2011. The Response was filed with the Center on August 8, 2011.
The Center appointed Ross Carson as the sole panelist in this matter on August 30, 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 and its licensees, through their predecessors, commenced use of the LEGO mark in the United States of America during 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. By way of example, the revenue from the sale of LEGO branded toys in 2009 was more than USD 2.8 billion. Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States and in United Kingdom.
Complaint based in Denmark is the owner of hundreds of trademark registrations throughout the world for or including LEGO registered in relation to construction toys and other LEGO branded products and services used by Complainant and its licensees throughout the world. Complainant is the owner of the trademark LEGOLAND registered in relation to the services of operating entertainment parks. Complainant has licensed Merlin Entertainment to operate entertainment parks in association with its trademark LEGOLAND. One such entertainment park is operated in Florida by Merlin Enterprises in association with Complainant’s trademark LEGOLAND.
Among Complainant’s numerous United States trademark registrations for or including LEGO are Registration No. 1018875 for the trademark LEGO registered August 26, 1975 in relation to the goods: “toy building blocks and connecting links for the same, sold separately and as kits for construction of toy houses, buildings, household furnishings, robots, doll figures and vehicular toys”. The mark was first used in commerce in the United States on June 4, 1953. One of Complainant’s other United States registrations is United States Registration No. 2334535 for the trademark LEGOLAND registered in relation to goods and services including: “theme park and amusement park services; […]”. The mark was first used in commerce in the United States on January 03, 1990.
Previous UDRP panels have found that Complainant’s LEGO and LEGOLAND trademarks are well known trademarks distinctive of Complainant’s goods and services, See, LEGO Juris A/S v. Level 5 Corp.,WIPO Case No. D2008-1692, “The Panel finds that the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive”; LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840, “LEGO is clearly a well-known mark”; LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260, “In the present case, the disputed domain names incorporate the Complainant’s well-known registered trademark LEGO”; and LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680, “LEGO is a mark enjoying high reputation as construction toys popular with children.”
Complainant is also the owner of more than 1000 domain names containing the term “lego” or ”legoland”. Complainant maintains an extensive website under the domain name .
Respondent registered the disputed domain name on March 30, 2011. 5. Parties’ Contentions A. Complainant A.1. Identical or Confusingly Similar
Complainant states that its registered trademarks for LEGO and LEGOLAND are world famous and distinctive of Complainant based on extensive use and advertising of the trademarks throughout the world for a long period of time. Particulars of some of Complainant’s trademark registrations are summarized in section 4 immediately above.
Complainant submits that the disputed domain name is clearly confusingly similar to Complainant’s registered trademarks LEGO and LEGOLAND. The prefix of the disputed domain name is Complainant’s trademark LEGOLAND. The suffix “-villa-florida” does not detract from the overall impression and the disputed domain name is confusingly similar to Complainant’s world famous registered trademarks. The suffix of the disputed domain name “-villa-florida” is rather fitted to strengthen the impression that the disputed domain name belongs to, or is affiliated with Complainant whose licensee operates a LEGOLAND theme park in the state of Florida and the disputed domain name must therefore be considered to be confusingly similar with Complainant’s trademarks LEGO and LEGOLAND.
Complainant states that its trademarks LEGO and LEGOLAND are world famous trademarks. In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488, the panel found that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes.
Complainant further submits that part of the suffix of the disputed domain name, “florida” gives reference to the State of Florida in United States. In PepsiCo, Inc. v. QWO, WIPO Case No. D2004-0865, the panel discussed the insertion of the country name “Afghanistan” to the trademark PEPSICO: “in the Panel’s view, forming a domain name, such as the disputed domain name here, by appending a country name (here Afghanistan) to a complainant’s mark (here being “PEPSICO”) is completely insufficient to dispel user confusion from inevitably occurring. In fact, doing so very likely exacerbates rather than ameliorates the confusion. The simple reason is that, given well-known and widely followed naming conventions in forming domain names, Internet users in a given country or who have an interest in that country and desire to reach a website of a corporation or other entity operating in that country would likely think to construct a domain name by simply appending the name of the country to the name or mark associated with that corporation or entity followed by the general commercial gTLD “.com”.” The same reasoning could be applied in this case.
Complainant further submits that the addition of the top-level domain (Tld) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the trademark and the disputed domain name. A.2. No Rights or Legitimate Interests in respect of the Disputed Domain Name
Complainant submits that no relationship exists between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain name. In Guerlain S.A. v. Peikang,WIPO Case No. D2000- 0055, the panel stated that, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant. This was stated by the panel as a factor in the finding of non legitimate interests with the respondent in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312.
Complainant states that it has not found that Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Complainant has also not found anything that would suggest that Respondent has been using LEGOLAND in any other way that would give them any legitimate rights in the name. Consequently Respondent may not claim any rights established by common usage.
Respondent registered the disputed domain name on March 30, 2011. Complainant submits that the mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.
Complainant submits that it is highly unlikely that Respondent would not have known of Complainant’s legal rights in the name LEGOLAND at the time of the registration. It is rather obvious that it is the fame of the trademark that has motivated Respondent to register the disputed domain name. Respondent cannot claim to have been using LEGOLAND, without being aware of Complainant’s rights to it. This, among other facts, proves that Respondent’s interests cannot have been legitimate. LEGO and LEGOLAND are famous trademarks worldwide and in Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc., WIPO Case No. D2001-1314, it was established that any use of such a trademark in a domain name would violate the rights of the trademark owner. The panel in that case stated that "given the notoriety of the Complainant's Deutsche Bank Mark, any use which the Respondent would make of any domain name, as here, that incorporated the Complainant's Deutsche Bank Mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the Complainant has long held in its mark".
Complainant further submits that Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to his own house rental business. The disputed domain name redirects to the website “”, where houses for rent are offered. The houses are located close to the LEGOLAND theme park in Florida, which probably is why Respondent chose the disputed domain name. Respondent does not qualify to fulfill the requirements for a bona fide offering set out in the often cited Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, the requirements are also included in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), as he does not offer Complainants products in any way. By doing this, Respondent is using the LEGO trademark and misleading Internet users to commercial websites for his own commercial gain and consequently, Respondent is tarnishing the trademarks LEGO and LEGOLAND. Respondent is trying to sponge off the Complainant’s world famous trademark. In Drexel University v. David Brouda,WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.”
Complainant further states that the text “Copyright © 2008 ” is displayed at the bottom of the website, which may give a visitor the impression that the registrant has rights to use the LEGOLAND mark. A.3. Registration in Bad Faith
Complainant states that its trademarks LEGO used and registered in respect of toys and LEGOLAND registered in respect to theme parks are famous trademarks with a substantial and widespread reputation throughout the world. Awareness of the trademarks LEGO and LEGOLAND are significant and substantial among the public. The number of UDRP cases involving the trademarks LEGO or LEGOLAND in combination with other words has exceeded twenty cases in the past few years.
Complainant submits that it is highly unlikely that Respondent would not have known of Complainant’s legal rights in the name LEGOLAND at the time of the registration of the disputed domain name on March 30, 2011. It is rather obvious that it is the fame of Complainant’s trademarks that motivated Respondent to register the disputed domain name. The disputed domain name redirects to the website “www.”, where houses for rent are offered. The houses are located close to the LEGOLAND theme park in Florida, which probably is why Respondent chose the disputed domain name. A.4. Use in Bad Faith
Complainant submits that the disputed domain name has been registered and used in bad faith. Under paragraph 4(b)(iv) of the Policy, the following circumstances shall be evidence of the use and registration of a domain name in bad faith: “(iv) by using the domain name, the registrant has intentionally attempted 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 its website or location or of a product or service on its website or location”.
Complainant states that the disputed domain name redirects to the website “” where houses for rent are offered. The houses are located close to the LEGOLAND theme park in Florida, which probably is why Respondent chose the disputed domain name. In Philip Morris Inc. v. Alex Tsypkin,WIPO Case No. D2002-0946, the panel stated “It follows from what has been said about legitimacy that the Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internauts to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).”
Complainant states that it first tried to contact Respondent on May 9, 2011 through a cease and desist letter, sent by email. Complainant advised Respondent that the unauthorized use of the LEGOLAND trademark within the disputed domain name violated Complainant’s rights in said trademark. Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). No response was received so two reminders were sent on May 17 and June 15, 2011, respectively, without any reply. Since the efforts of trying to solve the matter amicably were unsuccessful Complainant chose to file a complaint according to the UDRP process. It has been mentioned in earlier disputes that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith. See, 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. B. Respondent B.1. Identical or Confusingly Similar
Respondent submits that “Legoland” is a geographical designation. Respondent states that the villa he rents is both in the “Disneyland” and “legoland” part of Florida.
Respondent states that he rents out his holiday home in Florida when he is not using it himself. It is located in what is recognised as the disney area of Florida. Respondent further submits that his villa is also now in the “legoland” area of Florida. Respondent further states that he has another website for advertising the rental of his holiday villa, namely, “www.”. The disputed domain name resolves to Respondent’s “www.” website.
Respondent states that there is already a domain name of longstanding: owned by a third party which resolves to the web-site of a villa just like his with no connection or affiliation to DISNEY. There is no disclaimer on the third party’s website.
Respondent submits that Complainant has not alleged even once in the Complaint that the disputed domain name infringes Complainant’s trademarks. Respondent states that he registered and not as alleged in the Complaint. Respondent submits that Complainant's whole case seems to be based on his use of LEGOLAND (upper case) when the disputed domain name does not include the word LEGOLAND. Respondent states he registered “legoland” (small letters) linked to two other words by hyphens, and regards legoland as a geographical place, i.e. the former Cypress Gardens. Respondent states that every time the disputed domain name is mentioned by Complainant, it is deliberately, incorrectly referred to in capital letters to try to disguise the fact that there is no infringement by the disputed domain name as it is all in small letters. Respondent states that true disputed domain name is not mentioned once in the Complaint. In one place Complaint’s annex actually shows to try and enhance a non-existant case. Complainant has registered hundreds of domain names, many incorporate the word “legoland” in them. If using the word ”legoland” in a domain name infringed the LEGOLAND copyright why would the firm separately individually, register domain names with “legoland” in them. B.2. No Rights or Legitimate Interests in respect of the Disputed Domain Name
Respondent submits that Internet visitors visiting the website associated with the disputed domain name would not assume any connection between the disputed domain name and Complainant’s trademarks. Respondent submits that the disputed domain is linked to Respondent’s Dolphins Dream, Perfect Disney website he has been using for 5 years. Several addresses go to the same site. In Respondent’s view It is impossible for anyone viewing his website to think he has anything to do with the brand LEGOLAND. The website is eight pages long and barely even mentions the place now called Legoland. There are three very short mentions: "Legoland - 30 mins", "directly between Disney and Legoland" and "It is perfectly placed directly between Disney and the new 'must visit' Florida Legoland". Respondent states that he is sorry if he should have included a disclaimer and will include one in the future if it is felt necessary. Respondent states that there is not a disclaimer for Disney or any other place mentioned on his website. B.3. Registration in Bad Faith
Respondent acknowledges that he was aware that a theme park bearing the name “Legoland” was to be opened in Florida in close proximity to Respondent’s rental property prior to the date that Respondent registered the disputed domain name on March 30, 2011. Respondent states that earlier this year he heard that the LEGO firm had bought the Cypress Gardens site quite near his villa and that the site was going to be called Legoland. He states that he, therefore, registered the disputed domain name with legoland (in small letters) as part of it, to go with the above one with disney in it, as his villa will be in the Legoland area of Florida. It could not any longer be in the Cypress Gardens area because Cypress Gardens had ceased to exist. B.4. Use in Bad Faith
Respondent relies upon the submissions stated in section B.2 above to support his position that no Internet visitor viewing the website to which the disputed domain name resolves would conclude that there was any connection between Respondent’s rental property and Complainant. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “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.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. Procedural Issue
Respondent asserts that Complainant has not alleged even once in the Complaint that the disputed domain name infringes Complainant’s trademarks. Respondent states that he registered and not as alleged in the Complaint. Many UDRP panels have noted the fact that letters in domain names are only registered using lower case lettering. Further, it has become customary for parties to capitalize the letters forming a common law or registered trademark in a Complaint to distinguish the words in which trademark rights are alleged. Elsewhere in the Response, Respondent refers to the “the brand LEGO” and to “copyright names LEGOLAND or LEGO”. Complainant referred at length in the Complaint to its trademark registrations throughout the world for its trademarks LEGO and LEGOLAND. Further, Complainant cited numerous recent UDRP decisions relating to its trademarks LEGO or LEGOLAND. In reviewing the Response as a whole, the Panel is satisfied that that Respondent was aware that Complainant was alleging that the disputed domain name was confusingly similar to Complainant’s registered trademarks LEGO and LEGOLAND. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the owner of numerous registered trademarks for LEGO and LEGOLAND registered in many countries throughout the world including numerous registrations in the United States in relation to the goods and services described in section 4 above. Complainant’s trademarks were registered and used in the United States for decades prior to Respondents registration of the disputed domain name on March 30, 2011.
The disputed domain name consists of Complainant’s distinctive trademark LEGOLAND in combination with the descriptive term “villa”, the geographical term “florida” and the top level domain descriptor “.com”.
Many UDRP decisions have found that domain names are generally confusingly similar to trademarks when the domain name incorporates the trademark in its entirety. See, PepsiCo.Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696 (a domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark”; holding , , and other domain names confusingly similar to the complainant’s PEPSI mark); and Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768.
The suffix “-villa-florida” does not detract from the overall impression that the disputed domain name is confusingly similar to Complainants well-known registered trademarks LEGO and LEGOLAND. UDRP panels have repeatedly held that merely adding a descriptive addition or generic term to a trademark, such as “villa” or “florida” does not sufficiently distinguish the domain name from the trademark. See, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.
The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusingly similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v.The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Respondent has not submitted any evidence to support its position that “Legoland” is a geographical term in the State of Florida.
The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant’s registered trademarks LEGO and LEGOLAND. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
The registration of the LEGO and LEGOLAND trademarks preceded the registration of the disputed domain name by decades. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use its trademarks. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, the panel stated that, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant. This was stated by the panel as a factor in the finding that respondent had no legitimate interest. See, Dr. Ing. h.c. F. Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312.
The disputed domain name redirects to the website “www.”, where Respondent’s vacation home is offered for rent. The house is located close to the LEGOLAND theme park in Florida, There is no evidence that Respondent is commonly known by the disputed domain name. See, The Caravan Club v. Mrgsale, NAF Claim No. 95314 (domain name ; Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith); See also CBS Broadcasting Inc. v. Worldwide Webs, Inc.,WIPO Case No. D2000-0834.
On May 9, 2011, Complainant forwarded Respondent a cease and desist letter that requested transfer of the disputed domain name. Complainant has not received a response to its cease and desist letter.
The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name.
Respondent was given the opportunity by way of Response to demonstrate its rights or legitimate interests in the disputed domain name.
Respondent asserts that the term “Legoland” is a geographic term in Florida and Respondent is entitled to use the geographic term. Respondent did not file any evidence that “Legoland” is a geographic term in Floida.
Respondent asserts that it is impossible for anyone viewing his website to think he has anything to do with the brand LEGOLAND. Respondent asserts that the website is eight pages long and barely even mentions the place now called Legoland.
The trademarks LEGO and LEGOLAND are among the leading brand names in the world. Respondent cannot claim to have been using LEGOLAND, without being aware of Complainant’s rights to it. The disputed domain name in which LEGOLAND is the distinguishing element implies some association of the disputed domain name with Complainant’s trademark LEGOLAND. There is a public attraction associated with very well known trademarks. This, among other facts, supports an inference that Respondent’s interests cannot have been legitimate. LEGO and LEGOLAND are well known trademarks worldwide and in Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc.,WIPO Case No. D2001-1314, it was established that any use of a very well known trademark in a domain name would violate the rights of the trademark owner. The panel stated that "given the notoriety of the Complainant's Deutsche Bank Mark, any use which the Respondent would make of any domain name, as here, that incorporated the Complainant's Deutsche Bank Mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the Complainant has long held in its mark".
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith. C. 1 Registered in Bad Faith
Complainant’s registered trademarks for LEGO and LEGOLAND are well-known and distinctive of Complainant’s goods and services based on extensive use and advertising of the trademarks throughout the world for a long period of time. Particulars of some of Complainant’s trademark registrations are summarized in section 4 above. The number of UDRP cases involving the trademarks LEGO or LEGOLAND in combination with other words has exceeded twenty cases in the past few years alone.
Respondent acknowledged in the Response that earlier this year he heard that the LEGO firm had bought the Cypress Gardens site quite near his rental villa and that the site was going to be called Legoland. He states that he, therefore, registered the disputed domain name with “legoland” (in small letters) as part of it, to go with the one with “disney” in it, as his villa will be in the Legoland area of Florida. It could not any longer be in the Cypress Gardens area because Cypress Gardens had ceased to exist. Respondent’s reference to the LEGO firm among other facts supports an inference that Respondent was aware of Complainant’s registration of its trademarks LEGO and LEGOLAND before he registered the disputed domain name.
The Panel finds on a balance of probabilities that Respondent registered the disputed domain name in bad faith. C.2. Disputed Domain Name Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to a respondent’s website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.
The disputed domain name redirects to the website “www.”, where Respondent advertises his villa for rent. The villa is located close to the LEGOLAND theme park in Florida. Complainant’s trademark LEGOLAND is the distinctive portion of the disputed domain name and constitutes the prefix of the disputed domain name. Respondent has failed to establish any rights or legitimate interests in the disputed domain name. In Philip Morris Inc. v. Alex Tsypkin,WIPO Case No. D2002-0946, the panel stated: “It follows from what has been said about legitimacy that the Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internauts to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).”
Complainant first tried to contact Respondent on May 9, 2011 through a cease and desist letter, sent by email. Complainant advised Respondent that the unauthorized use of the LEGOLAND trademark within the disputed domain name violated Complainant’s rights in said trademark. Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). No response was received so two reminders were sent on May 17 and June 15, 2011, respectively, without any reply. Since the efforts of trying to solve the matter amicably were unsuccessful Complainant chose to file a complaint according to the UDRP process. It has been mentioned in earlier UDRP disputes that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith. See; 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.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complainant satisfies the requirement under paragraph 4(a)(iii) of the Policy. 7. Decision
For all 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.
Ross Carson
Sole Panelist
Dated: September 13, 2011
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