The Complainant is LEGO Juris A/S of Billund, Denmark represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is WhoisGuard / Susan Bridges of Los Angeles, California, United States of America and Bluffton, South Carolina, United States of America, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2011. On August 19, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On August 22, 2011, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 23, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 23, 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 August 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2011.
The Center appointed Nicholas Weston as the sole panelist in this matter on September 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.
The Panel finds that the Respondent has received appropriate notice of this proceeding and that the Center has discharged its responsibility under paragraph 2(a) of the Rules. Prima facie evidence of this is the courier’s delivery report to the Center following physical notification of the Complaint to the Respondent even though the words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service. 4. Factual Background
The Complainant operates a business selling toys in more than 130 countries. The Complainant holds registrations for the LEGO trademark and variations of it in more than 190 countries including the United States of America (“United States”), which it uses to designate toy building blocks and connecting links. The United States trademark registration has been in effect since 1974 and has been used in that country since 1953. Approximate global revenue for sales of LEGO brand product in 2009 was USD 2.8 billion.
The Complainant conducts business on the Internet using numerous domain names containing the word “lego” including with a toy business website resolving from these domains. The Complainant also owns more than 1000 domain names comprising or containing the word “lego”.
The Disputed Domain Name was registered on November 4, 2010, which resolves to a web page containing an article about LEGO brand toys and related advertisements and links. 5. Parties’ Contentions A. Complainant
The Complainant cites its trademark registrations of the trademark LEGO in various countries as prima facie evidence of ownership.
The Complainant submits that the mark LEGO is well-known (citing LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator,WIPO Case No. D2010-1260; and LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680). The Complainant submits that its rights in that mark predate the registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the LEGO trademark (citing Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488) and that the similarity is not removed by the addition of the words “my” or “superstore”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademark (citing Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055). The Complainant also contends that use, which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services (citing Drexel University v. David Brouda,WIPO Case No. D2001-0067, “rights or legitimate interests cannot be created where the user of the Domain Names at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”).
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules, as by using the Complainant’s LEGO mark in the Disputed Domain Name, “to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website” (citing Philip Morris Inc. v. Alex Tsypkin,WIPO Case No. D2002-0946). The Complainant also cites the finding in Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787, which held “the failure of the Respondent to respond to the letter of demand from the Complainant further supports an inference of bad faith.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark LEGO in the United States and in many other countries throughout the world. The Panel finds that the Complainant has rights in the mark LEGO in the Respondent’s relevant jurisdiction, the United States, pursuant to United States Trademark Registration No. 1026871. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark LEGO.
The Panel also finds that the mark LEGO is well-known: see 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”).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the LEGO trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark; (b) conjoined with the prefix, the possessive pronoun “my”; (c) followed by the suffix “superstore”; and (d) followed by the top level domain suffix “.com”.
It is well established that the top-level designation used as part of a domain name should be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; and Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). The relevant comparison to be made is with the second level portion of the Disputed Domain Name: “mylegosuperstore”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, an obvious contraction of a descriptive word: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; and Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
This Panel agrees with the numerous other Panels have followed the line of reasoning set out in Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok,WIPO Case No. D2000-1007, which held that the addition of the word “my” is not sufficient to avoid confusion.
The additional term “superstore” was found by the Panel in Wal-Mart Stores, Inc. v. Terry Davies,WIPO Case No. D2006-0031, to be “of a totally non-distinctive nature”. This Panel also finds that the additional element, specifically the word “superstore”, after the Complainant’s registered trademark, does not serve to adequately distinguish the Disputed Domain Name in this matter which remains confusingly similar to the registered trademark: (see Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554; Dr. Ing. h.c. F. Porsche AG v. "Porsche AG",WIPO Case No. D2002-0103; and Corbis Corporation v. RegisterF/Whois Protection Service / surf advertising company /Joseph, Graham,WIPO Case No. D2006-0546).
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Name is therefore confusingly similar to the LEGO trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1)
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see, National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that web site is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (See, National Trust for Historic Preservation v. Barry Preston, supra.; The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2)
However, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a pay-per-click (”PPC”) landing web page dominated by an article describing the Complainant’s history and advertising or offering for sale products in connection and competition with the Complainant’s mark, thereby illegitimately “trying to sponge off the Complainant’s world famous trademark”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer's mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its PPC web page.
The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
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 or service on your web site or location.”
The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited,WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
The Panel finds that the trademark LEGO is so well-known in the United States for toy building blocks that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it.
Further, a gap of ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant held direct United States registration for the trademark LEGO, United States Registration No. 1026871 from 1974 predating its rights from the Respondent’s registration by approximately 36 years.
A further conclusion can be drawn about the Respondent from its use of the Disputed Domain Name resolving to a web page containing links and advertisements that directly compete with the offerings to be found on the web site operated by the Complainant. In this Panel’s view, it is in breach of the eNom, Inc “Registration Agreement” for breach of the warranty: “You represent and warrant that the statements in your application are true and that no Services are being procured for any unlawful purpose, including but not limited to the infringement of any intellectual property right.” Indeed clause 4C(i) of that agreement specifically states “It is your responsibility to know whether or not the domain name(s) you select or use or allow others to use infringe legal rights of others”. This too reinforces the perception of an apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademark.
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
The Respondent’s use of the Disputed Domain Name is apparently for domain monetization unconnected with any bona fide supply of goods or services by the Respondent. The business model in this case, is for the Respondent to passively collect click through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s LEGO products. Exploitation of the reputation of a trademark to obtain click through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. (See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,supra; Lilly ICOS LLC v. The Counsel Group LLC,WIPO Case No. D2005-0042; and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, supra).
This Panel finds that the Respondent has taken the Complainant’s trademark LEGO and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a PPC parking web page hosted by eNom, Inc. for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 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 Disputed Domain Name, be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Dated: October 7, 2011
Full & Egal Universal Law Academy