Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
Respondent is David Bishop of Cincinnati, Ohio, United States of America. 2. The Domain name and Registrar
The disputed domain name is registered with GoD, Inc. (the “Registrar”) 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2011. On September 16, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2011, the Registrar 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 Respondent of the Complaint, and the proceedings commenced on September 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2011.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on November 9, 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 LEGO Juris A/S is the owner of LEGO, and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products.
Complainant commercializes its products throughout the world, including in the United States of America, where Respondent is based.
Complainant and its licensees, commenced use of the LEGO mark in the United States of America since 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown extraordinarily. By way of example, the revenue for the LEGO Group 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.
Complainant is the owner of the trademark LEGO registered in numerous countries all over the world and also the owner of more than 1000 domain names containing the term LEGO.
The disputed domain name was registered to Respondent on January 25, 2011. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to its LEGO trademarks and domain names and that the addition of the suffix “training” to the LEGO is not relevant and will not have any impact in respect of the overall impression of the dominant part of the domain name, LEGO, instantly recognizable as a world famous trademark.
The likelihood of confusion includes an obvious association with the trademark of Complainant.
Respondent is not affiliated with Complainant and there is no evidence to suggest that Respondent has registered the disputed domain name to advance legitimate interests.
Complainant also sent to Respondent a cease and desist letter by e-mail on March 18, 2011 followed by three reminders requiring immediate transfer of the disputed domain name.
Respondent replied, only after the first reminder indicating that he did not consider his domain name registration as an infringement of LEGO rights. He likewise indicated that he would want permission to keep and use the disputed domain name.
Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including its trademark. Respondent admitted in his e-mail dated June 15, 2011: “I am aware that I do not currently have any kind of authorization or relationship with the LEGO Group”.
Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions in the Complaint.
The Respondent only replied on June 15, 2011 to a cease and desist letter sent by Complainant before the filing of the Complaint with the Center. There, he indicated in part as follows:
“I am not using it for a functional website, nor for any commercial gain. I have no intention of causing confusion with or dilution of your client's trademark. To my knowledge, the registration of the domain name is not infringing upon or otherwise violating the rights of any third party, and is not in breach of the Uniform Dispute Resolution Policy.
I kindly request your advice and direction. I am developing a business plan with future interest in using the domain. The dominant part of the domain is 'training' and consistent with this business plan. I have conducted business with organizations over the past 11 years where I used LEGO brand 'building blocks' to conduct exercises in professional and executive subject training. I am certain the LEGO Group does not currently provide these services or products.
I do not want to create a false and misleading impression that I am in any way representing the LEGO Group's products. To the credit of your client and with your help, it is evident the LEGO name has become a descriptive word for the product - 'building blocks'.
I am aware that I do not currently have any kind of authorization or relationship with the LEGO Group. I would like permission to keep and use the domain for my training business, and within reason I'm willing to comply with anything the LEGO Group wishes in order to do so.” 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
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.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the 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. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from, as it considers appropriate. A. Identical or Confusingly Similar
In the present case, the disputed domain name incorporates the word “Lego” which is identical to Complainant’s well-known registered trademark LEGO (LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840).
According to Complainant the disputed domain name is confusingly similar to Complainant’s world famous trademark LEGO. The addition of the word “training” is not relevant and will not have any impact on the overall impression and the wording “training” can not be considered the dominant part of the domain name. Complainant mentioned Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488, in which it was stated 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.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and commercial use of the same for several years.
The first element of the Policy has, therefore, been met. B. Rights or Legitimate Interests
The Respondent registered the domain name on January 25, 2011 and the “mere registration of a domain name does not establish rights or legitimate interests in the disputed domain name” (Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134).
Complainant contends that it has not given any license or authorization of any kind to Respondent to use the LEGO trademark, a fact which was confirmed by Respondent himself.
Respondent has not provided Complainant with any evidence demonstrating that Respondent might be commonly known by the disputed domain name, or that Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Respondent cannot claim that he is unaware of Complainant’s rights.
The Panel concludes that Respondent lacks of any rights or legitimate interests in the disputed domain name.
The second element of the Policy has, therefore, been met. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its 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 [the Respondent’s] web site or location or of a product or service on its web site or location.”
Even though Respondent wrote, in his single answer of the four e-mail sent him by Complainant, that the use of the disputed domain name was not commercial, the Panel notes that the website to which the disputed domain name resolved showed sponsored links which most likely derives income to the owner once a visitor clicks on a link and is redirected to different online shops.
“The record further reflects the Respondent's use of the disputed Domain Names to attract Internet users to the Respondent's website in order to generate pay-per-click advertising revenues. The Panel concludes for the foregoing reasons that the Respondent registered and is using the disputed Domain Names in bad faith.” (The Jennifer Lopez Foundation v. Jeremiah Tieman, WIPO Case No. D2009-0057)
The third element of the Policy has, therefore, been met. 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 the Complainant.
Eva Fiammenghi
Sole Panelist
Dated: November 23, 2011
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