The Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Media Harmony Pty Ltd, George Alcantara of New South Wales, Australia. 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 August 12, 2011. On August 12, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same date, eNom 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 August 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2011.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on September 28, 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 the owner of the trademark LEGO, registered in numerous countries throughout the world including Australia where the Respondent resides and is domiciled. The Complainant is also the owner of more than one thousand domain names corresponding to the term LEGO. 5. Parties’ Contentions A. Complainant
The Complainant is the producer of the LEGO brand of construction toys and other branded products. After commencing sales in (at least) the United States of America of LEGO construction toys in 1953, the Complainant asserts that sales of LEGO toys have grown remarkably, to more than 2.8 billion dollars in 2009. The Complainant and its subsidiaries sell their LEGO products in more than 130 countries throughout the world, including Australia where the Respondent resides and is domiciled.
The Complainant asserts that the LEGO trademark is among the best known trademarks in the world. Attached to the Complaint was a listing by Superbrands U.K. of the top 500 “superbrands” for the years 2009/10, showing LEGO as the most famous toy brand and the number 8 most famous brand of any kind in the world.
Complainant’s Australian registrations for its trademark LEGO have been registered since at least 1979, well prior to the registration of the disputed domain name.
The Complainant asserts that it has expanded use of its LEGO trademark beyond construction toys to computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant also maintains an extensive website at the domain name .
The Complainant asserts that the disputed domain name is identical or confusingly similar to its famous LEGO trademark, registered in numerous countries worldwide and notably in Australia where the Respondent resides and is domiciled. The addition of the suffixes “city” and “online” strengthen the impression that the disputed domain name belongs to or is affiliated with the Complainant. The words are used in connection with Complainant’s toy products; ”lego city” could be believed by consumers to be a fictive “LEGO city”, and complainant has shops online.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent has no registered trademarks or trade names corresponding to the disputed domain name, nor anything else suggesting that the Respondent has been using LEGO in any other way that would give the Respondent legitimate rights in the name. The Complainant asserts that it has provided no license or authorization to the Respondent to use the trademark LEGO, that the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with Complainant, and that it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the LEGO name at the time the disputed domain name was registered. The Complainant asserts that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but has intentionally chosen the disputed domain name based upon the Complainant’s registered trademark in order to generate traffic to a website displaying sponsored links. The Complainant asserts that there is no evidence that the Respondent uses the disputed domain name as a company name or has any other legal right in the name LEGO, but that the Respondent is trying to sponge off the Complainant’s world-famous trademark.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith because the Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to the attached website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The website to which the domain name resolves displays sponsored links which, the Complainant asserts, promote LEGO products and sell them online; another factor indicating bad faith.
The Complainant asserts that it tried to contact the Respondent before filing the Complaint by a cease and desist letter, in which the Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees. The Registrar replied to the Respondent advising they had removed the disputed domain name but that it would not be transferred. The disputed domain name and the website remained active so the Complainant chose to file this Complaint under the Policy. At the time the Complaint was filed, the Registrant had changed its registrar to a company in Australia. The Complainant asserts that Respondent’s failure to respond to a cease and desist letter is further evidence relevant to a finding of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the domain name 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In order to prevail in a proceeding under the Policy, a complainant must typically prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001.
However, the Policy, paragraph 4(b), states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [the Respondent has] registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent has] 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 [the Respondent has] engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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.
These circumstances are non-exclusive, and a panel may consider other circumstances as constituting registration and use of a domain name in bad faith.
Where, as here, the Respondent is in default, the Panel may draw such inferences as it considers appropriate, according to the Rules, paragraph 14(b). B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered and famous trademark LEGO, which the disputed domain name contains in its entirety. The sponsored links on the Respondent’s website resolve to online sites where it is possible to buy Complainant’s LEGO products; thus the word “online” in the disputed domain name is merely descriptive and fails to distinguish the disputed domain name from the Complainant’s famous trademark. Similarly, the word “city” could describe either the types of edifices one could build with Complainant’s LEGO building blocks, or could describe a retail site where Complainant’s retail products are sold. In any event, neither word diminishes the likelihood of association between the disputed domain name and the Complainant’s famous trademark. The Panel finds that the Complainant has provided sufficient evidence to establish element 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant asserts, and the Respondent has failed to rebut, that the Complainant has not authorized, licensed or consented to the Respondent’s registration and use of the disputed domain name, and that the Respondent is not commonly known by the name ”legocityonline”, nor is he a reseller of the Complainant’s products, authorized or otherwise. Combined with the inferences this Panel may make as a result of the Respondent’s default herein, this Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name, which showing the Respondent has failed to rebut. See Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1 and cases cited therein. As a result, the Complainant has established element 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel finds that the Complainant has provided sufficient evidence to satisfy paragraph 4(b)(iii) of the Policy, namely that by using the disputed domain name, the Respondent intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
In addition to the inferences to be drawn from the Respondent’s default in this proceeding, the Panel draws an inference that the Respondent was aware of the Complainant’s famous trademark at the time he registered the disputed domain name from the fact that the website linked to the disputed domain name displays sponsored links from which one can purchase Complainant’s LEGO products for sale. The Panel draws the further inference that the Respondent registered the disputed domain name to obtain “pay-per-click” revenue by misdirecting Internet users seeking Complainant’s LEGO products to the website of the sponsored links. See mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; see also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483. The Panel finds that the Complainant has established element 4(a)(iii) 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.
Jordan S. Weinstein
Sole Panelist
Dated: October 12, 2011
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