The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Sharon Carbral of North Carolina, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Wild West Domains, Inc (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2011. On October 25, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 25, 2011, the Registrar 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 Domain Name.
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 November 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2011.
The Center appointed Warwick Smith as the sole panelist in this matter on December 6, 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
The Complainant is the Danish-based corporation which markets the well-known LEGO branded construction toys and certain other products. Its LEGO trade mark is well-known around the world. Watches are among the products which the Complainant markets.
The Respondent and the Domain Name
The Domain Name was registered by the Respondent on April 28, 2011.
The Complainant produced a screenshot of the website to which the Domain Name resolves (“the Respondent’s website”), taken on October 19, 2011. The Respondent’s website was prominently headed “Lego Watches”. It provided what appeared to be news items about certain “Lego” products, as well as what appeared to be sponsored links to third party websites, including some offering products unrelated to those offered by the Complainant (the Complainant drew attention to one sponsored link which took the site visitor to a third party website offering printers for sale). A sub-page of the Respondent’s website, reached by clicking on “Buy Legos” on the home page, offered what appeared to be genuine Lego products for sale. Reproduced on this sub-page of the Respondent’s website was a reproduction of a “Lego” logo used by the Complainant.
The Respondent did not appear to be offering any products for direct sale on the Respondent’s website; rather, site visitors were redirected to other online shopping websites.
At the foot of the home page of the Respondent’s website the following appeared:
“Copyright © 2011 Lego Watches. All Rights Reserved”
The Panel’s Visit to the Respondent’s Website
In accordance with normal practice, the Panel has visited the Respondent’s website. That happened on December 8, 2011. The Respondent’s website appeared to be in a similar form to that shown in the October 19, 2011 screenshots produced by the Complainant.
The Complainant’s Cease and Desist Letter
On May 24, 2011, the Complainant’s representative sent a “cease and desist” letter to the Respondent. The letter referred to the Complainant’s LEGO trade mark, and specifically to the Complainant’s United States-registered mark No. 1.018.875. The letter requested the Respondent to transfer the Domain Name to the Complainant, and advised that the Complainant would reimburse any fee the Registrar might charge for the transfer, together with the registration fee paid by the Respondent for the Domain Name. The letter sought a reply within 7 days.
When the Respondent did not reply, follow-up emails were sent by the Complainant’s representative on June 14, 2011 and August 16, 2011. No reply was received to any of these communications. 5. Parties’ Contentions A. Complainant
The Complainant contends:
1. The Domain Name is identical or confusingly similar to the Complainant’s LEGO mark. The Complainant’s mark is incorporated in full in the Domain Name, and the addition of the suffix “watches” will have no impact on the overall impression of the dominant part of the Domain Name, which is the Complainant’s world famous LEGO mark. The fact that the Complainant sells watches only serves to strengthen the impression that the Domain Name belongs to, or is affiliated with, the Complainant.
2. In Lego Juris A/S v Susan Waldes, WIPO Case No. D2010-1845, the panel found that an almost identical domain name, was confusingly similar to the Complainant’s LEGO mark. The same conclusion should be reached in respect of the Domain Name in this case.
3. By using the Complainant’s LEGO mark as the dominant part of the Domain Name, the Respondent has been exploiting the Complainant’s goodwill in its mark, which may result in dilution and other damage to the mark.
4. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant relies on the following:
(a) The Complainant has not found that the Respondent has any registered trade marks or trade names corresponding to the Domain Name;
(b) The Complainant has not found anything else which would suggest that the Respondent has been using “Lego” in a way which might give it a legitimate interest in that name;
(c) No license or authorization has been given to the Respondent to use the Complainant’s LEGO mark;
(d) The Respondent is not an authorized dealer of the Complainant’s products, and has never had a business relationship with the Complainant;
(e) LEGO is a famous trademark worldwide, and any use of the mark in a domain name would violate the rights of the trademark owner (citing Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc., WIPO Case No. D2001-1314);
(f) The Respondent cannot claim to have been unaware of the Complainant’s rights to that mark, and it is obvious that the fame of the Complainant’s LEGO mark has motivated the Respondent to register the Domain Name;
(g) The Respondent is not using the Domain Name in connection with any bona fide offering of goods or services;
(h) The Respondent does not qualify as a legitimate dealer in the Complainant’s products, as it does not meet the criteria prescribed in the often-cited WIPO UDRP decision Oki Data Americas Inc v ASD Inc.,WIPO Case No. D2001-0903. First, the Respondent cannot be regarded as a reseller of the Complainant’s products – the Respondent does not do the actual selling, but refers site visitors to third party websites at which Lego and other products may be purchased (citing LEGO Juris A/S v. Suka LLC,WIPO Case No. D2011-1057). Secondly, the Respondent’s website fails to disclose that the Respondent has no relationship with the Complainant. In fact, the copyright claim appearing on the Respondent’s website suggests that the Respondent claims to have rights in the LEGO mark. Thirdly, the Respondent cannot be considered to be using the Respondent’s website to sell only the trademarked goods, as the Respondent’s website provides sponsored links to third party websites selling goods other than those of the Complainant.
(i) The Respondent’s prominent use of the Complainant’s own logo on the Respondent’s website is designed to (falsely) imply a connection between the Respondent and the Complainant. In those circumstances, the Respondent’s use of the Domain Name cannot be said to be bona fide.
5. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following:
(a) The Respondent made no reply to the Complainant’s representative’s cease and desist letter or to the follow-up emails.
(b) The Respondent has been using the Complainant’s LEGO trade mark to attract visitors to the Respondent’s website, and the combination of the use of the Complainant’s mark and the provision of sponsored links providing pay-per-click revenue for the Respondent, indicates bad faith on the part of the Respondent.
(c) The Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s LEGO mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. What the Complainant must prove under the Policy
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
i. That the disputed domain name is identical or confusingly similar to a trademark or service mark in 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 is being used in bad faith.
Paragraph 15(a) of the Rules requires the 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel, absent exception circumstances, to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate. B. Identical or Confusingly Similar
The Panel finds that the Complainant has proved this part of the Complaint. The Complainant is the registered proprietor of the trade mark LEGO in numerous jurisdictions, and that mark is incorporated in full in the Domain Name. Numerous UDRP panels have found that the incorporation of the complainant’s registered mark in a disputed domain name may be sufficient to establish confusing similarity for the purposes of the Policy – see, for example, Nokia Group v. Mr Giannattasio Mario, WIPO Case No. D2002-0782, and the decisions referred to near the top of page 6 of the decision (html version, available on the Center’s website at ) in that case.
The Panel agrees with the panel in the Lego Juris A/S v Susan Waldes, supra, that the addition of the word “watches” to the Complainant’s mark in the Domain Name does nothing to remove the confusing similarity between the Domain Name and the Complainant’s LEGO mark – indeed, the inclusion of the word “watches” compounds the likelihood of confusion, as the Complainant is itself a seller of watches, and the word is therefore descriptive of one of the Complainant’s products (see in that regard, Marie Claire Album SA v Buy This Domain, WIPO Case No. D2002-0677, and the WIPO UDRP decision of the 3-member panel in The Ritz Hotel v. Damir Kruzicevic, WIPO Case No. D2005-1137).
The “.org” suffix is not taken into account in the comparison required by paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) as follows:
“[…] 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 a 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.[…] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, the Domain Name is confusingly similar to the Complainant’s mark, and the Complainant has not authorized the Respondent to use the Complainant’s mark, whether in a domain name or otherwise. The copyright claim in the name of “Lego Watches” on the Respondent’s website is not enough on its own to show that the Respondent has become commonly known by the name “Lego Watches”, and there is no other evidence which might have provided a basis for a defense under paragraph 4(c)(ii) of the Policy.
Similarly, there can be no “authorized reseller” right or legitimate interest. Although it appears that the Respondent redirects site visitors to some websites which offer the Complainant’s products, the Respondent does not appear to sell those products itself, and the Respondent’s use of the Domain Name does not satisfy the criteria set out in the Oki Data America case, supra, for genuine resellers of a complainant’s trade marked goods (the Respondent does not meet the Oki Data America’s requirements that the reseller should sell only the Complainant’s products, and should make plain on its website the nature of its relationship with the Complainant (or that it has no such relationship, if that is the case)).
The foregoing circumstances sufficiently establish a prima facie case of “no rights or legitimate interests”, so the burden of production shifts to the Respondent. As the Respondent has not filed a Response, that burden has not been discharged, and the Panel finds that the Complainant therefore succeeds on this part of the Complaint. D. Registered and Used in Bad Faith
The Complainant’s LEGO mark is famous around the world, and the Respondent has clearly been aware of the Complainant and its products. The links from the Respondent’s website to sites offering the Complainant’s products, and the use of the Complainant’s logo on the Respondent’s website, leave no room for doubt about that.
In those circumstances, and in the absence of any Response, the Panel concludes that the Respondent has opportunistically used the fame of the Complainant’s LEGO mark to attract to the Respondent’s website Internet users who would reasonably expect to find at the Domain Name a website operated or endorsed by the Complainant. The Respondent will then have derived revenue from those site visitors who have clicked on the sponsored links on the Respondent’s website.
The Panel accepts the Complainant’s submission that the Respondent has been using the Domain Name intentionally to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s LEGO mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Paragraph 4(b)(iv) of the Policy provides that such circumstances are deemed to be evidence of bad faith registration and use, and there is nothing in the evidence which points to any different conclusion.
For the foregoing reasons, the Complainant has also made out its case on this part of the Complaint. 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 Smith
Sole Panelist
Dated: December 12, 2011
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