Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is VietHOST Quynh Giao of Hanoi, Socialist Republic of Vietnam. 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 31, 2011. On August 31, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On August 31, 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 September 2, 2011. On September 7, 2011, the Center received an email communication from Respondent. The Center acknowledged receipt on the same day, and on September 9, 2011, Complainant filed a request for suspension of the proceedings. The proceedings were subsequently suspended until October 9, 2011. On October 6, 2011, Complainant filed a request for extension to the suspension. The suspension was extended to November 9, 2011, and on November 10, 2011, Complainant filed a request for reinstitution of the proceedings. The proceedings were reinstituted as of November 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2011. Respondent did not submit any response. Accordingly, the Center informed the parties regarding the commencement of the panel appointment process on November 24, 2011.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on November 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 is the owner of the famous mark LEGO for construction toys and other LEGO branded products. Complainant has been using the mark since 1959. Complainant holds more than 1000 registrations of domain names for or incorporating the LEGO mark and has registered LEGO as a trademark in various countries all over the world, including in Vietnam, where Respondent resides.
The disputed domain name was registered on May 24, 2011, and Respondent uses the disputed domain name for a website on which links to third parties offering competing products are displayed. 5. Parties’ Contentions A. Complainant makes the following contentions:
1. The disputed domain name is confusingly similar to Complainant’s LEGO mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain name.
3. Respondent registered and used the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 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 in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management., Inc. v. webnet-marketing, inc., NAF Claim No. 0095095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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:
1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the LEGO mark under paragraph 4(a)(i) of the Policy based on its registration of the mark in the United States, Vietnam, and elsewhere throughout the world. Previous UDRP panels have agreed that registration of a mark with the United States Patent and Trademark Office (USPTO) and other trademark authorities establishes rights in the mark under paragraph 4(a)(i) of the Policy. See Paisley Park Enterprises v. James Lawson, NAF Claim No. 384834 (finding that the complainant had established rights in the PAISLEY PARK mark under paragraph 4(a)(i) of the Policy through registration of the mark with the USPTO); see also Reebok International Limited. v. Shaydon Santos, NAF Claim No. 565685 (finding trademark registration with the USPTO was adequate to establish rights pursuant to paragraph 4(a)(i) of the Policy).
The disputed domain name is confusingly similar to Complainant’s LEGO mark under paragraph 4(a)(i) of the Policy. The disputed domain name includes Complainant’s entire mark and simply adds a geographic identifier and the generic top-level domain (“gTLD”) “.com.” The inclusion of the geographic identifier “vietnam” does not distinguish the disputed domain name from Complainant’s mark. See Gannett Co., Inc. v. Henry Chan,WIPO Case No. D2004-0117 (“[I]t is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The affixation of the gTLD “.com” is also insufficient to distinguish a domain name. See Innomed Technologies, Inc. v. DRP Services, NAF Claim No. 221171 (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s LEGO mark under paragraph 4(a)(i) of the Policy.
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
It is well established that Complainant carries the initial burden of presenting a prima facie case. Once this burden has been satisfied, as is the case here, the burden then shifts to Respondent to refute Complainant’s claims. See Swedish Match UK Limited. v. Admin, Domain, NAF Claim No. 873137 (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy). Some UDRP panels have construed a respondent’s failure to submit a response as evidence that the respondent lacks rights or legitimate interests in the domain name. See Bank of America Corporation v. Bill McCall, NAF Claim No. 135012 (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). This Panel will review the record against the requirements of paragraph 4(c) of the Policy to make a determination on Respondent’s rights or legitimate interests.
Complainant alleges that Respondent is not commonly known by the disputed domain name for the purposes of paragraph 4(c)(ii) of the Policy. The relevant WhoIs information identifies the disputed domain name registrant as “VietHOST Quynh Giao”, which the Panel finds to bear no resemblance to the disputed domain name. See Tercent Inc. v. Lee Yi, NAF Claim No. 139720 (stating “nothing in Respondent’s WHOIS information implies that Respondent is “commonly known by” the disputed domain name” as one factor in determining that paragraph 4(c)(ii) of the Policy does not apply). Complainant states that it did not authorize Respondent to register the disputed domain name. Without a Response, and absent any contrary evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain name for the purposes of paragraph 4(c)(ii) of the Policy. See The Braun Corporation v. Wayne Loney, NAF Claim No. 699652 (concluding that the respondent was not commonly known by the domain names where the WhoIs information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the disputed domain name to display links to third parties selling toys in competition with Complainant, and no doubt commercially benefits from the links by receiving click-through fees. In Martin H. Meyerson v. Speedy Web, NAF Claim No. 960409, and Skyhawke Technologies., LLC v. Tidewinds Group, Inc. a/k/a DNS Admin, NAF Claim No. 949608, the panels concluded that a respondent’s use of a domain name to offer competing hyperlinks did not establish rights or legitimate interests in the domain name under paragraphs 4(c)(i) or (iii) of the Policy. The Panel similarly finds that Respondent is making neither a paragraph 4(c)(i) of the Policy bona fide offering of goods or services nor a paragraph 4(c)(iii) of the Policy legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Respondent’s registration and use of the disputed domain name demonstrates bad faith attraction for commercial gain under paragraph 4(b)(iv) of the Policy. Through the use of a confusingly similar domain name, Respondent deceives Internet users into mistakenly believing that Respondent is affiliated with Complainant’s business in some way. Respondent uses this confusion to drive Internet users to its website, where it hopes to realize financial gain through pay-per-click or similar fees. The Panel finds that this constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v. Mazhar Ali, NAF Claim No. 353151 (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy 4(b)(iv).”); see also Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159 (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).
Complainant contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the well-known LEGO mark. While constructive notice by itself has not generally been held to suffice for a finding of bad faith registration and use, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy because Respondent had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC. c/o Manish Patel, NAF Claim No. 648190 (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Craig Butler, NAF Claim No. 744444 (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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.
Sandra J. Franklin
Sole Panelist
Dated: December 8, 2011
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