The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Domain Tech Enterprises of Santiago, Chile and Privacyp of Nobby Beach, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Power Brand Center Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2011. On September 27, 2011, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the disputed domain name. On September 27, 2011, Power Brand Center Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details 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 October 6, 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 October 6, 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 October 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2011. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 2, 2011.
The Center appointed Erica Aoki as the sole panelist in this matter on November 17, 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 language of the administrative proceeding is English. 4. Factual Background
Complainant is based in Denmark and 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. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States and in Australia
The Complainant owns more than 1000 domain names containing the term LEGO and the Complainant's company policy is that all appropriate domain names containing the word LEGO should be owned by the Complainant.
The disputed domain name was registered on Jan 14, 2005.
When the Complainant became aware that the Respondent had registered the domain name the Complainant decided to file the present complaint. 5. Parties’ Contentions A. Complainant
The Complainant is the owner of the trademark LEGO and several domain names containing the word LEGO which is been recognized as famous trademark in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.
The Complainant commenced use of the LEGO mark in the United States of America during 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown remarkably. The LEGO Group's revenue in 2009, was more than USD 2,8 billion.
The Complainant's licenses its intellectual property rights, including its trademark rights, in the United States of America and elsewhere.
According to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO goes far beyond toys and goods similar to toys. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name is addressed to a page containing links to several advertisement links. 6. Discussion and Findings
The Complainant was able to show the requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights: and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name: and
(iii) that the disputed domain name has been registered and used in bad faith. A. Identical or Confusingly Similar
Based on the facts presented by the Complainant, this Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights under Policy, paragraph 4(a)(i). The Panel finds that there is no doubt that the disputed domain name is confusing similar to the Complainant’s registered trademark, as the Disputed Domain Name includes the Complainant’s marks in full, with only the addition of the letter “men” to the LEGO mark. B. Rights or Legitimate Interests
The Panel finds the following on the record in these Policy proceedings:
The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain name.
The Policy indicates that a registrant may have a right or legitimate interest in a domain name if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute.
The Respondent’s knowledge of the Complainant’s right is presumed since it is a well known trademark.
The Respondent is in no way connected with the Complainant and has no authorization to use any of the Complainant’s trademarks.
There is no evidence that the Respondent is or was commonly known by the disputed domain name as an individual, business or other organization.
Thus the Respondent has no known rights or legitimate interests in respect of the disputed domain name. There is no evidence of the 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.
Further, the Panel notes that the Respondent has not used the domain name in connection with a legitimate noncommercial or fair use activity.
Respondent webpage contains a number of sponsored listings via the Google Ads program, including links to websites advertising, goods including LEGO toys. As the Respondent is more than likely generating click-through revenue from such sponsored listings, the Panel holds that the Respondent is not making any noncommercial or fair use of the disputed domain name in any respect.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name, under Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant contends that Respondent has registered and used the domain name in bad faith under paragraph 4(b) of the Policy and that the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy 4(b)(iv).
The Complainant’s trademark is recognized as being a well known trademark. So it is very likely that the Respondent was aware of the Complainant’s rights to LEGO trademark at the time the disputed domain name was registered, indicating that such registration was made in bad faith. The Panel finds that this inference is strengthened by the Respondent’s apparent use of the domain name to sell, unauthorized, the Complainant’s goods via the Internet.
Based on that evidence, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an on-line location, by creating a likelihood of confusion with the Complainant’s mark and company name as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other location, and this constitutes evidence of bad faith. Policy, paragraph 4(b)(iv).
Also, based on the undisputed allegations, the registration of the disputed domain name by the Respondent is in order to divert Internet users seeking information about the Complainant.
Accordingly, and as also supported by the Panel’s findings above under the second element of the Policy, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under Policy paragraph 4(a)(ii). 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.
Erica Aoki
Sole Panelist
Dated: December 1, 2011
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