The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services of Stockholm, Sweden.
The Respondent is Ken Hartman of Houston, Texas, United States of America. 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 14, 2011. On October 14, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, GoD, Inc. 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 the 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. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 11, 2011.
The Center appointed Francine Tan as the sole panelist in this matter on November 21, 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, based in Denmark, is the owner of the trade mark LEGO, used in connection with construction toys and other 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. The Complainant and its licensees (collectively “the LEGO Group of Companies or the LEGO Group”), through their predecessors, commenced use of the LEGO trade mark in the U.S. in 1953, in relation to construction toys made and sold by them. The Complainant asserts that over the years, the business of making and selling LEGO branded toys has grown remarkably, and the revenue for the LEGO Group in 2009, for instance, was more than USD 2.8 billion.
The Complainant claims to be the owner of more than 1,000 domain names containing the trade mark LEGO, including . It asserts that the LEGO trade mark is one of the most well-known trade marks 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. According to a list of the top 500 Superbrands for 2009/10, provided by Superbrands UK, LEGO was shown to be the 8th of the most famous trade marks in the world. The Complainant claims that the LEGO mark has attained a well-known trade mark status in accordance with the provisions of Article 6bis of the Paris Convention for protection of Industrial Property and the protection for the LEGO trade mark, accordingly, goes far beyond toys and goods similar to toys.
The Respondent registered the disputed domain name on March 3, 2011.
On April 12, 2011, the Complainant sent a cease and desist letter to the Respondent by e-mail, requesting a voluntary transfer of the disputed domain name and offering compensation for the cost of registration and transfer fees (not exceeding out of pocket expenses). The Respondent replied on the same day and asked for compensation of USD 1,000 which he claimed to have invested in the disputed domain name. The Complainant replied and informed the Respondent that the Complainant could not offer a reimbursement amount beyond the registration fee and possible transfer cost. A few days later, the Complainant sent instructions to the Respondent as regards how the disputed domain name might be transferred to the Complainant. Several reminders were sent to the Respondent. The Complainant received a reply on August 24, 2011, in which the Respondent said that he had sold the disputed domain name and that he was therefore unable to transfer the disputed domain name over to the Complainant. The Complainant asserts that according to the WhoIs record for the disputed domain name, this statement of the Respondent was not correct. 5. Parties’ Contentions A. Complainant
The Complainant asserts as follows:
(1) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name was registered and used in bad faith.
On the first issue, the Complainant submits that the dominant part of the disputed domain name comprises the trade mark LEGO and the addition of the suffix “armory” is not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO, instantly recognizable as a world famous trade mark. The Complainant cited earlier UDRP panel decisions in which LEGO was accepted as being a well-known trade mark. The addition of the generic top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the trade mark and the disputed domain name. There is a considerable risk that the public will perceive the disputed domain name either as a domain name owned by the Complainant or that there is some kind of commercial relationship with the Complainant, and there may be initial interest confusion.
On the second issue, the Complainant submits the following the bases for its contention that the Respondent has no rights or legitimate interests in respect of the disputed domain name:
(i) there is no evidence that the Respondent has any registered trade marks or trade names corresponding to the disputed domain name;
(ii) the Complainant has also not found anything that would suggest that the Respondent has been using the word LEGO in any other way that would give them any legitimate rights to the use thereof;
(iii) the Complainant has not licensed or authorized the Respondent to use the trade mark LEGO;
(iv) it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the trade mark LEGO at the time the disputed domain name was registered, and it is obvious that it is the fame of the LEGO trade mark that has motivated the Respondent to register the disputed domain name; and
(v) the Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen a domain name based on a registered trade mark in order to generate traffic to a web site displaying sponsored links.
On the third issue, the Complainant makes the argument that the sponsored links displayed on the website to which the disputed domain name resolves probably provide the Respondent with income derived from visitor click on the links, which is a factor indicating bad faith. The Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Rules prescribe that the Complainant has to prove each of the elements 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 the Complainant has rights; and
(ii) the 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. A. Identical or Confusingly Similar
The Complainant has established that it has undisputed rights to the trade mark LEGO, and which the Panel accepts to be well known. The Panel agrees with the Complainant that the disputed domain name is confusingly similar to the Complainant’s LEGO trade mark.
The incorporation of the word “armory” in the disputed domain name does not serve to remove the confusing similarity, as the word appears to be generic or descriptive in nature rather than possessing a distinctive character. It has been established in previous UDRP panel decisions that the mere addition of a generic word to a third party’s trade mark within a domain name would not serve to remove or negate the confusing similarity with the said trade mark. In this case, the Complainant’s LEGO trade mark is clearly recognizable, and a dominant feature within the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out that “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition provides the following consensus view vis-à-vis the issue of what a Complainant is required to establish in relation to the second element of paragraph 4(a) of the Policy:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Panel is of the view that the Complainant has satisfied its burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Panel is not satisfied that the Respondent’s use of the disputed domain name in the manner shown in the evidence submitted by the Complainant constitutes a legitimate noncommercial or fair use of the disputed domain name. There is also no evidence of a bona fide offering of goods or services, nor is there evidence that the Respondent has been commonly known by the name “Legoarmory”. The Respondent could have easily asserted his rights and legitimate interests in the disputed domain name when it received the cease and desist letter. However, at no point did he allude to or suggest that this was the case. In any event, bearing in mind the well-known nature of the trade mark LEGO, the Respondent would have had to provide very convincing evidence of its rights and legitimate interests in respect of the disputed domain name. However, the Respondent has not filed any Response in this case, and in the absence of the same, the Panel is unable to make a finding other than that the Complainant has established the second element of paragraph 4(a) of the Policy. The Panel also draws a negative inference from the Respondent’s silence in these proceedings. C. Registered and Used in Bad Faith
The Panel also finds that the third element of paragraph 4(a) of the Policy has been established by the Complainant.
It is not plausible that the Respondent did not know of the Complainant’s well-known trade mark, LEGO, when it registered the disputed domain name. The Respondent’s website, in fact, reflects the client’s very trade mark which makes it all the more evident that the Respondent knowingly and deliberately chose to incorporate the Complainant’s trade mark when registering the disputed domain name. This constitutes bad faith registration.
The Panel draws a negative inference from the Respondent’s failure to file a Response and concludes that the Respondent’s registration of the disputed domain name was made in a bid to attract Internet users to his website for commercial gain, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The facts fall squarely within paragraph 4(b)(iv) of the Policy and in the absence of any evidence to the contrary from the Respondent, the Panel finds that the Complainant has established the third element of paragraph 4(a) 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 disputed domain name be transferred to the Complainant.
Francine Tan
Sole Panelist
Dated: December 5, 2011
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