The Complainant is LEGO Juris A/S, of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Sharon Carbral, of Charlotte, North Carolina, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2011. On October 4, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On October 4, 2011, Wild West Domains, Inc. (the “Registrar”) 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 a Complaint Deficiency Notification to the Complainant on October 6, 2011 providing the registrant and contact information disclosed by the Registrar. 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 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2011.
The Center appointed David J.A. Cairns as the sole panelist in this matter on November 11, 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
The Complainant is a Danish corporation. It is the owner of Community Trade Mark registration No.: 000039800 for the word mark LEGO registered on October 5, 1998 for various Nice classifications. It is also the owner of the official LEGO website at . Among the toys sold by the Complainant and available on the official website are toys based on the space shuttle, including a toy called “Shuttle Expedition”.
The Respondent registered the disputed domain name on May 9, 2011.
On June 17, 2011 the Complainant sent a cease-and-desist letter to the Respondent. The following response was received by email on June 25, 2011 from the Respondent:
“Subject: Re: LEGO- Notification of Violation of Trademark rights
I apologize for the length of time that has elapsed from initially receiving your email. After reading your email I wanted to extend an apology for any infringements to yourself or your client. Currently, I would like you and your client to know that I will remove my site immediately. This is an affiliate marketing site which promotes Lego products only, but however as I stated I will remove the site and extend my apologies once again for the inconvenience.”
The website was not removed. The Complainant sent reminder communications that were not answered.
The Panel viewed the website hosted at the disputed domain name on November 22, 2011. The landing page prominently offered price comparisons for the “Lego Space and Airport Set”. On the right hand side of the page there were pictures of LEGO products that provided links to stores selling these products. On the left-hand side of the page under the heading “AdChoices” there were links to various products and services including “Airport transfers”, “Expat Removals”, “Cab service in paris”, “Linea Directa Insurance”, “Shannon Airport Transfers”, and many more. There were other pages on the website that included offers for sale of LEGO products as well as advertisements for unrelated products and services. When the Panel clicked on the advertisements, there were links to websites offering goods and services unrelated to LEGO products. 5. Parties’ Contentions A. Complainant
The Complainant states that the LEGO trademark has been used, by itself and its licensees, to identify construction toys sold by them for many years. Today LEGO products are sold in more than 130 countries. In addition to registered trademarks, the Complainant is also the owner of more than a 1000 domain names containing the term LEGO. The Complainant states that the trademark LEGO is among the best known trademarks in the world, and that LEGO has the status of a well known trademark for the purposes of Article 6bis of the Paris Convention for Protection of Industrial Property, confirmed and extended by Article 16.2 and 16.3 of the TRIPS Agreement.
The Complainant states that the disputed domain name is confusingly similar to the LEGO trademark. The dominant part of the disputed domain name comprises the word LEGO. The addition of the suffix “shuttleadventure” does not diminish the overall impact of the name LEGO; rather it enhances the relationship with the LEGO trademark. The Complainant states that the public will consider the disputed domain name is owned by the Complainant or has a commercial relationship with the Complainant.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no registered trademarks or tradenames corresponding to the disputed domain name, and nor has the Complainant licensed or authorised its use by the Respondent. The Complainant states that given the fame of the LEGO trademark then it can be assumed the Respondent knew of the LEGO trademark at the time of registration. The Complainant states that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services but rather for commercial gain through links to a third party website selling LEGO toys as well as sponsored advertising.
The Complainant also states that the disputed domain name was registered and is being used in bad faith. It refers to the international fame of the LEGO trademark, the communications between the Complainant and the Respondent regarding the voluntary removal of the website, and the use of the website for pay-per-click advertising. It states that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of its website.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions in this proceeding. Its response of June 25, 2011 to the Complainant’s cease-and-desist letter is set out above. 6. Discussion and Findings
The Panel is required to 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 appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the LEGO trademark by virtue of its trademark registration referred to above.
The disputed domain name consists of the mark LEGO and the suffix “shuttleadventure”. The disputed domain name is not identical to the Complainant’s trademark and so the Panel turns to consider whether it is confusingly similar to the LEGO trademark.
In Pfizer Inc v. The Magic Islands,WIPO Case No. D2003-0870, the Panel held that the fact that a domain name incorporates a trademark in its entirety is a solid indication of but does not ipso facto mean that the domain name is confusingly similar to the trademark. The similarity depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin”.
In some circumstances a descriptive suffix may reduce or eliminate the confusion arising from the use of a trademark, such as where the trademark is not distinctive or strong in secondary meaning. For example, in Digital City, Inc. v. Smalldomain,WIPO Case No. D2000-1283, the Panel stated that: “consumers are not likely to be confused where (1) a domain name comprises a mark and a suffix; (2) where that mark is essentially generic within the online world and has not acquired such distinctiveness as to merit broader protection; and (3) where the suffix (or the domain name as a whole) does not relate specifically to the business of the Complainant”.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark for the following reasons: (i) the LEGO trademark is inherently distinctive with its distinctiveness reinforced by many years of use and its extensive international reputation and goodwill; (ii) the “shuttleadventure” suffix is a descriptive phrase composed of two words; (iii) the suffix refers to a product sold by the Complainant under the LEGO trademark (i.e., a toy shuttle), as well as to the sense of adventure associated with space-related toys; (iv) the suffix therefore relies on and emphasises the trademark element of the disputed domain name, and relates specifically to the business and products of the Complainant; and (v) Internet users will associate the disputed domain name with the Complainant’s trademark, and believe that the Respondent’s website offers information or sales relating to the Complainant’s shuttle products.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the LEGO trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; (iv) the Respondent has been making a commercial use of the disputed domain name (through the appearance of advertisements on its website, and presumptively through pay-per-click revenue from retailers of the Complainant’s products as well as other vendors reached through the Respondent’s website) so the circumstances described in paragraph 4(c)(iii) do not exist in the present case.
As regards paragraph 4(c)(i), the Panel finds that the Respondent has not used the disputed domain name in relation to a bona fide offering of goods or services. The Respondent has been using the disputed domain name to provide links (and presumptively to generate pay-per-click revenue) to retailers of the Complainant’s products, but also to offer for sale the unrelated products and services advertised on its website. This is not a bona fide offering of goods or services because the Respondent is using the Complainant’s trademark to attract Internet users to its website, who are then offered the products and services of others (in other words, “bait and switch” marketing, which is not bona fide: see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Further, in its communication to the Complainant dated June 25, 2011 the Respondent did not assert any rights or legitimate interests in the disputed domain name, and in fact implicitly recognised the absence of such rights or interests in offering to remove the site and apologising for its use.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith. The Respondent’s use of the disputed domain name in the present case falls within paragraph 4(b)(iv): by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 web site or location or of a product or service on the web site or location.
The purpose of commercial gain is demonstrated by the use of the website to host advertising and sponsored links. The likelihood of confusion is established by the confusing similarity between the Complainant’s trademark, particularly as applied to its shuttle toy, and the disputed domain name. Internet users are likely to assume that this website is the website of, or affiliated to, the Complainant, and that it sells or relates to the Complainant’s products, whereas it is unrelated to the Complainant and also offers a range of unrelated products and services.
The Respondent’s communication of June 25, 2011 provides further evidence of bad faith. The communication contained a false statement (“This is an affiliate marketing site which promotes Lego products only”, whereas it advertised many unrelated products and services), and the Respondent did not comply with its undertaking to the Complainant to remove the site. In fact the Respondent has continued in bad faith and in full knowledge of the Complainant’s objection to generate revenue in the same way as prior to its communication to the Complainant.
The Respondent knew of the Complainant’s famous trademark, and also its shuttle product at the time of registration, and in the Panel’s view intentionally set out to exploit the Complainant’s goodwill to generate revenue.
For these reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith by the Respondent. 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 the Complainant.
David J.A. Cairns
Sole Panelist
Dated: November 23, 2011
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