Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Roy Jones of Northampton, Northamptonshire, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2011. On October 11, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On October 11, 2011, GoD, Inc. 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 October 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 11, 2011.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on November 29, 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 and holds more than 1000 registrations of marks for or incorporating the LEGO mark. Complainant is also the licensee of the HARRY POTTER mark and uses it in connection with its Lego Harry Potter Quidditch Match product line.
Respondent registered the on December 11, 2010, and uses it to display links to third parties such as A. Respondent offered to sell the disputed domain name to Complainant but did not verify his costs. 5. Parties’ Contentions A. Complainant makes the following contentions:
1 Respondent’s domain name is confusingly similar to Complainant’s LEGO mark.
2. Respondent does not have any rights or legitimate interests in the domain name.
3. Respondent registered and used 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 Mgmt., Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (July 31, 2000) (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. Robertson,WIPO Case No. D2000-0009 (February 29, 2000) (“In the absence of a response, it is appropriate to accept as true all reasonable 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 a 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 Policy paragraph 4(a)(i) based on its registration of the mark in the United States of America, the United Kingdom of Great Britain and Northern Ireland, Australia, and elsewhere throughout the world. Previous panels have agreed that registration of a mark with the USPTO and other trademark authorities establishes rights in the mark under Policy paragraph 4(a)(i). See Paisley Park Enters. v. Lawson, NAF Claim No 384834 (February 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy paragraph 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, NAF Claim No. 565685 (December 21, 2005) (finding trademark registration with the United States Patent and Trademark Office (USPTO) was adequate to establish rights pursuant to Policy paragraph 4(a)(i)).
The disputed domain name wholly includes Complainant’s mark, adds the generic top-level domain (gTLD) “.net”, and then incorporates the name of Complainant’s product line. That product line uses yet another registered trademark HARRY POTTER, which Complainant licenses from Warner Bros. Consumer Products. Respondent’s domain name clearly references Complainant’s business, which does not distinguish the disputed domain name from Complainant’s mark under Policy paragraph 4(a)(i), nor does the addition of a gTDL. See Space Imaging LLC v. Brownell, AF-0298 (eResolution September 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., NAF Claim No 916991 (April 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark under Policy paragraph 4(a)(i).
The Panel finds that the requirements of Policy paragraph 4(a)(i) 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 Ltd. v. Admin, Domain, NAF Claim No 873137 (February 13, 2007) (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 Policy paragraph 4(c)). Some panels have construed a Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, NAF Claim No 135012 (December 31, 2002) (“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 Policy paragraph 4(c) requirements to make a determination on Respondent’s rights and legitimate interests.
Complainant alleges that Respondent is not commonly known by the domain name for the purposes of Policy paragraph 4(c)(ii). The relevant WhoIs information identifies the domain name registrant as “Roy Jones,” which the Panel finds to bear no resemblance to the disputed domain name. See Tercent Inc. v. Lee Yi, NAF Claim No 139720 (February 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy paragraph 4(c)(ii) does not apply). Complainant states that it did not authorize Respondent to register the confusingly similar domain name. Without a Response, and absent any contrary evidence in the record, the Panel must find that Respondent is not commonly known by the domain name for the purposes of Policy paragraph 4(c)(ii). See Braun Corp. v. Loney, NAF Claim No 699652 (July 7, 2006) (concluding that the respondent was not commonly known by the disputed 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 disputed 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 such as A and no doubt commercially benefits from the links by receiving click-through fees. In Meyerson v. Speedy Web, NAF Claim No 960409 (May 25, 2007), and Skyhawke Techns., LLC v. Tidewinds Group, Inc., NAF Claim No 949608 (May 18, 2007), the panels concluded that a respondent’s use of a disputed domain name to offer competing hyperlinks did not establish rights and legitimate interests in the domain name under Policy paragraphs 4(c)(i) or (iii). The Panel similarly holds that Respondent is making neither a Policy paragraph 4(c)(i) bona fide offering of goods or services nor a Policy paragraph 4(c)(iii) legitimate noncommercial or fair use of the domain name.
Complainant also alleges that Respondent attempted to sell the domain name to Complainant, but would not verify his costs. In Mothers Against Drunk Driving v. Hyun-Jun Shin, NAF Claim No 154098 (May 27, 2003), and Wal-Mart Stores, Inc. v. Stork,WIPO Case No. D2000-0628 (August 11, 2000), the panels found that a general offer to sell a disputed domain name may be evidence that a respondent lacks Policy paragraph 4(a)(ii) rights and legitimate interests in a domain name. The Panel agrees and finds accordingly.
The Panel finds that the requirements of Policy paragraph 4(a)(ii) have been satisfied. C. Registered and Used in Bad Faith
Respondent’s registration and use of the domain name demonstrates bad faith attraction for commercial gain under Policy paragraph 4(b)(iv). Through the use of a confusingly similar domain name, Respondent deceives consumers into mistakenly believing that Respondent is affiliated with Complainant’s business in some way. Respondent uses this confusion to drive Internet traffic to its site, where it hopes to realize financial gain through pay-per-click or similar fees. The Panel finds that this constitutes bad faith under Policy paragraph 4(b)(iv). See Hewlett-Packard Co. v. Ali, NAF Claim No 353151 (December 13, 2004) (“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 paragraph 4(b)(iv).”); see also Utensilerie Assoc. S.p.A. v. C & M,WIPO Case No. D2003-0159 (April 22, 2003) (“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 Policy paragraph 4(a)(iii) because Respondent had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, NAF Claim No 648190 (April 10, 2006) (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. Butler, NAF Claim No 744444 (August 17, 2006) (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 Policy paragraph 4(a)(iii) 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 the Complainant.
Sandra J. Franklin
Sole Panelist
Dated: December 13, 2011
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