Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Nguyen Tien Luc a.k.a. Tien Luc Nguyen of Thanh Hoa, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2011. On September 15, 2011, the Center transmitted by email to N LLC a request for registrar verification in connection with the disputed domain name. On September 15, 2011, N LLC. 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 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 13, 2011.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on October 31, 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 one of the leading manufacturers of construction toys products in the world.
Complainant owns various trademark registrations in the LEGO mark for construction toys and other products in several countries, including Vietnam (trademark registration number: 287.932).
Complainant owns more than 1000 domain names containing the term “Lego”.
The disputed domain name was registered on July 20, 2011, and it routes to a website offering online games. 5. Parties’ Contentions A. Complainant
Complainant avers that its trademark LEGO is among the best-known trademarks in the world, due to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising and promotional materials. Complainant alleges that the LEGO trademark has been recognized as being famous. Complainant avers that it has expanded its use of the LEGO trademark to products other than construction games, such as computer hardware and software, books, videos and computer controlled robotic construction sets. Complainant continues that the protection for the LEGO trademark goes beyond toys and goods similar to toys. Identical or Confusingly Similar to Complainant’s Trademark
Complainant avers that the dominant part of the disputed domain name comprises the word “lego”, which is identical to Complainant’s well known trademark LEGO, which has been registered as trademark and domain names in numerous countries around the world. Complainant alleges that the addition of the word “games” is not relevant and will not have any impact on the overall impression of the dominant part of the name LEGO. Complainant also contends that the addition of the top-level domain “.name” does not have any impact on the overall impression of the dominant portion of the disputed domain name. Therefore, Complainant alleges that the disputed domain name should be considered to be confusingly similar to Complainant’s trademark LEGO. No Rights or Legitimate Interests in Domain Name
Complainant avers that Respondent has no registered trademarks or trade names corresponding to the disputed domain name . Complainant also indicates that no license or authorization of any kind has been given by Complainant to Respondent to use the trademark LEGO. Complainant avers that Respondent is not using the disputed domain name in connection with bona fide offering of goods or services, and that Respondent has intentionally chosen a domain name based on a famous trademark in order to generate traffic to a website containing online games, the majority of which are produced by competitors of Complainant. As a result, Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name . Registration and Use of Domain Name in Bad Faith
Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Complainant argues that the considerable value and goodwill of its trademark LEGO is what made Respondent register the contested domain name . Complainant indicates that it tried to contact Respondent through a cease and desist letter, to which Complainant received no response despite sending two reminders to Respondent. Complainant argues that failure of Respondent to respond to the cease and desist letter should be considered relevant in finding of bad faith. Complainant alleges that Respondent is using the disputed domain name to attract Internet users and then promote competitors of Complainant on its website.
Complainant further contends that Respondent was aware of the rights of Complainant in the trademark LEGO and the value of said trademark when he registered the disputed domain name. Complainant further argues that by using the disputed domain name, Respondent is misleadingly diverting consumers for his commercial gain. B. Respondent
Respondent did not reply to Complainant’s contentions1. 6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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.
Complainant must establish these elements even if Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. However, in the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is confusingly similar to the well-known trademark LEGO, in which Complainant has rights.
Confusing similarity is generally recognized when trademarks are paired up with various types of generic prefixes and suffixes. See e.g. Dr. Ing. H.c F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488.
Panels disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. V,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
Adding the word “games” to the trademark LEGO is not in creating any distinction since the word “games” is the name of the product associated with the trademark LEGO. It is a generic name and not a distinctive trademark that would distinguish the disputed domain name from the trademark of Complainant.
The Panel concludes, therefore, that Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
Complainant must show a prima facie case proving that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and Respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002 -0005).
Complainant avers that Respondent has no registered trademarks or trade names corresponding to the disputed domain name . Complainant also avers that Respondent has no license or authorization to use the LEGO trademark. In the absence of a response, the Panel accepts Complainant’s undisputed factual averments as true.
The disputed domain name is being used to offer online games. It also appears that the website displays sponsored links to other commercial websites. The Panel infers that Respondent receives revenues when it diverts traffic through link advertisements on Respondent’s website. E.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.
The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name. E.g., Hoffmann-La Roche Inc. v. O,WIPO Case No. D2007-1806 (citing Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784); Hoffmann-La Roche Inc. v. Samuel Teodorek, supra.
The Panel also finds there is no bona fide offering of goods or services by Respondent. Filing no response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its rights or legitimate interests in use of the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, and other circumstances. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel infers that Respondent registered the disputed domain name in attempts to trade on the fame of Complainant’s trademark, which was registered, used and widely promoted by Complainant before Respondent registered the disputed domain name. The Panel finds that it is inconceivable under the circumstances that Respondent would have been unaware of Complainant’s LEGO trademark. The element of bad faith exists in light of the fact that the trademark LEGO is a well-known trademark and that Respondent knew or should have known of its existence. See, The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113. Respondent is deliberately attempting to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark. Therefore, the Panel finds that Respondent registered the domain name in bad faith.
The fact that the disputed domain name is used to display links to promote online games, some of which are Complainant’s competitors, leads the Panel to conclude that this activity demonstrates bad faith use. Hoffmann-La Roche Inc. v. AZ Marketing Inc., Thomas Brennan, WIPO Case No. D2007-1843; Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088).
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) 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 Complainant
Nayiri Boghossian
Sole Panelist
Dated: November 14, 2011
Full & Egal Universal Law Academy