The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Daniel Aziz of Essex, 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 24, 2011. On October 25, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On October 25, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming:
(1) it is the Registrar of the disputed domain name;
(2) the Respondent is listed as the registrant;
(3) the Respondent’s contact details;
(4) the disputed domain name was first registered to the Respondent on August 23, 2011; and
(5) English is the language of the registration agreement.
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 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2011.
The Center appointed Warwick A. Rothnie 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
The Complainant and its predecessors have been manufacturing and selling construction toys under the trademark LEGO for many years. The range of products and services it provides has expanded over time. These days products branded LEGO include computer hardware, software, books, videos and computer controlled robotic construction sets. The LEGO Group’s activities include a number of theme parks operated under the trademark LEGOLAND.
In 2009, the annual revenue of the LEGO Group exceeded USD2.8 billion. Its LEGO products are sold in more than 130 countries the United Kingdom. A corporation called Superbrands (UK) Ltd. has ranked the LEGO trademark as the eighth most valuable brand in the world in 2009/2010. The other brands in the “Top 10” included MICROSOFT, ROLEX, GOOGLE, BRITISH AIRWAYS, BBC, MERCEDES-BENZ, COCA-COLA, APPLE and ENCYCLOPAEDIA BRITANNICA.
The Complainant has provided a listing of numerous trademark registrations around the world for LEGO. For present purposes, it is sufficient to note UK trademark registration No. 1292923 for LEGO in respect of goods and services in International Classes 35, 40, 41, 42, 43 and 44. This trademark was filed in 1986 and registered in 1991.
In 2011, the LEGO Group launched a new product line under the name NINJAGO.
The Respondent registered the disputed domain name in August 2011.
It resolves to a website which features the Complainant’s LEGO “logo” trademark and NINJAGO brand name prominently and repeatedly. The website appears to reproduce promotional material largely, if not all, from the Complainant’s website about various products in the Complainant’s NINJAGO range. If one clicks on the hyperlinks on the Respondent’s website, one is taken to a page on the Amazon UK website for that product. Similarly, if one wishes to buy the product by clicking the appropriate “buy-now”-button on the Respondent’s website, one is also redirected to the Amazon website. 5. Discussion and Findings
Under paragraph 4 (a) of the Policy, the Complainant must prove each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark to which it has rights;
(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.
No response has been filed. The Complaint has been served, however, on the physical and electronic co-ordinates specified in the WhoIs record (and confirmed as correct by the Registrar). Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to decide the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and in accordance with the Policy, the Rules and any rules and principles of law deemed applicable. A. Identical or Confusingly Similar
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark, and, if so, the disputed domain name must be shown to be identical or confusingly similar to the proven trademark.
The Complainant has clearly proved ownership of the registered trademarks referred to in section 4 above. In addition, the Panel finds that the Complainant has very substantial rights at common law in LEGO in, amongst other places, the United Kingdom.
There can be no doubt that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name consists of LEGO, NINJAGO, “Fire Temple” and the gTLD, “.com”. The last element can be disregarded for present purposes as a functional requirement of the domain name system.
Viewed as a whole, the component LEGO is a distinctive or characterizing feature of the disputed domain name which is likely to be associated with the Complainant. The likelihood for association is only increased by the presence in the disputed domain name of the other elements NINJAGO (an invented name for one of the Complainant’ product lines) and “Fire Temple”(one of the products or sets in that product line).
Accordingly, the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
A respondent may have rights or legitimate interests under the Policy in the circumstances set out in paragraph 4(c) of the Policy. The circumstances set out in paragraph 4(c) of the Policy are examples only, however, and are not an exhaustive numeration in ways in which rights or legitimate interests can be shown.
While paragraph 4(c) of the Policy states that these are circumstances where the respondent may show rights or legitimate interests, the overall burden of establishing this requirement falls on the Complainant. Nonetheless, in view of the difficulty inherent in proving a negative and because the relevant information is often in the possession of the respondent only, it will be sufficient for the complainant to establish a prima facie case which, if not rebutted, will lead to this ground being established (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0), paragraph 2.1).
The Complainant states that it has not licensed nor otherwise authorised the Respondent to register or use the Complainant’s trademark as part of the Respondent’s domain name. He is not an authorised dealer in LEGO products. So far as the Complainant can establish the Respondent does not have any registered trademarks or trade names corresponding to LEGO or the disputed domain name.
Given the fame of the Complainant’s trademark, the Complainant contends that the Respondent must have known about its trademarks when he registered the disputed domain name.
As a consequence of not filing a response, the Respondent has not contested any of these matters.
Given the distinctiveness of the Complainant’s trademark, these factors are more than sufficient to raise a prima facie case against the Respondent in the present case.
Nonetheless, the nature of the use made in fact by the Respondent calls for some consideration of its legitimacy under the Policy. The Complainant has anticipated this and its submissions argue that the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 and described in WIPO Overview 2.0, paragraph 2.3 as the consensus view of Panels, are not applicable. In summary, those criteria are:
1. “[r]espondent must actually be offering the goods or services at issue;
2. [r]espondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
3. [t]he site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the web site is the official site, if, in fact, it is only one of many sales agents;
4. [r]espondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.”
The Complainant contends that at least the first and third criteria are not satisfied in the present case. First, the Complainant relies on a number of decisions in which panels have ruled that a respondent can bring itself within the Oki Data principles only if it is the party actually selling the goods; a mere redirection to another site such as the Amazon site is not sufficient. The cases cited by the Complainant are LEGO Juris A/S v. Andrew VierlingWIPO Case No. D2010-1913 and LEGO Juris A/S v. Suka LLCWIPO Case No. D2011-1057. In the latter case as in this case, no response was filed. As to the inapplicability of the third factor, the Complainant points out that there is no disclaimer on the Respondent’s website.
If the matter were arising under the Policy for the first time, this Panel has considerable doubts that someone who “merely” offers products for sale through an affiliate type program should necessarily be found to lack rights or legitimate interests under the Policy. It is not, at least to this Panel, self-evident why someone who “merely” offers goods for sale through an affiliate relationship should necessarily be treated differently to someone who actually executes the transaction him or herself. The question may well turn on the extent to which people dealing with the person operating the website that links through to an affiliate seller understand whom they are dealing with and their relationship, if any, with the trademark owner.
While earlier UDRP panel’s decisions are not binding on a Panelist, there is a very strong policy in favour of certainty and predictability so that similar cases are decided in similar fashion. Not all the decisions relied on by the Complainant, or cited in the decisions, have involved decisions against defaulting respondents. A number of panels have also adopted this approach in cases not involving the Complainant. See e.g. Rockwool lnternational A/S v. VivaldaWIPO Case No. D2011-1442 although in many of the cases a finding of absence of rights or legitimate interests has arisen from a combination of factors. See e.g. Mangusta S.r.l. v. Miguel SanchoWIPO Case No. D2011-1170 where, amongst other things, the respondent offered for sale, or planned to offer for sale, rival products as well as the products authorised by the complainant trademark owner.
As the learned three member panel in World Wrestling Federation Entertainment, Inc. v. Ringside CollectiblesWIPO Case No. D2000-1306 recognised, these types of cases raise “difficult issues” and each very often turns on its own facts. Although the Ringside Collectibles case is often cited as the foundation for the proposition relied on by the Complainant in the present case, the Ringside Collectibles panel did not in fact reach the particular question as the respondent in that case was not actually using the domain name in question and the learned panel did not find the respondent’s claims of preparations to use the domain name credible.
The Panel notes that the Respondent’s mode of operation is very different to that considered concurrently by the panel in Lego Juris A/S v L, Frank SchuermansWIPO Case No. D2011-1559. In that case, the respondent’s website was plainly differentiated from the Complainant and could not reasonably be confused for a website of the Complainant: it had its own branding, text, layout and appearance. The present situation is markedly different as the Respondent’s website uses the Complainant’s logos, images and promotional text in profusion and almost exclusively.
The Respondent also has not sought to defend his rights or motives.
Taking all these matters together, and having regard to the interests of certainty and predictability, the Panel concludes that the Respondent has not rebutted the Complainant’s prima facie case that he does not have rights or legitimate interests in the disputed domain name under the Policy. Accordingly, the Complainant has established the second requirement under the Policy. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the domain name to take advantage of its significance as a trademark (usually) owned by the complainant.
There can be no doubt that the Respondent was aware of the Complainant’s trademark when he registered the disputed domain name. There can be no other explanation for the incorporation of LEGO, NINJANGO and “Fire Temple” into the disputed domain name. Plainly, the Respondent sought to take advantage of the close association of all those terms with the Complainant and its products.
As the Panel has already found that the Respondent had no rights or legitimate interests under the Policy, it must also follow that the disputed domain name has been both registered and used in bad faith. In the absence of a right or legitimate interest under the Policy to the disputed domain name, the inference is plainly open that the Respondent registered the disputed domain name with knowledge of the Complainant’s rights and an intention to trade on those rights to generate “click through” revenues. In carrying out that plan, the Respondent has also used the disputed domain name in bad faith. 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.
Warwick A. Rothnie
Sole Panelist
Dated: December 13, 2011
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