The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Oxana Mishukova of Bishkek, Kyrgyzstan. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2011. On December 6, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Name. On the same date, 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 Complainant filed an amended Complaint on December 12, 2011 in order to reflect the correct date of filing.
The Center verified that the Complaint together with the amended 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 December 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2012.
The Center appointed William P. Knight as the sole panelist in this matter on January 13, 2012. 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 Domain Name was registered on August 3, 2011.
According to the Complaint, the Complainant is a Danish company that owns the trademark LEGO and all other trademarks used in connection with the famous LEGO brand of construction toys and other LEGO branded products, which it licenses to related entities that manufacture and distribute such toys and other products around the world. The Complainant and its predecessors in title have been in business from the early years of the twentieth century, producing children’s toys since 1932 and using the LEGO trademark since 1934. The Complaint asserts that the Complainant has sold its products under the LEGO brand in the United States since 1953. Undoubtedly, the Complainant's products and LEGO brand were well-known in its home country of Denmark and other northern European nation from before that date. The Complainant and its licensees (collectively “the LEGO Group of Companies or the LEGO Group”) have grown to a worldwide business, the revenue for the LEGO Group in 2010 exceeding USD 3 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries.
The Complainant has registered the trademark LEGO in many countries, including in Europe, the United States and Kyrgyzstan and is also the owner of more than 1000 domain names containing the term LEGO.
The Complainant and its related companies have expanded their use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. However, the most basic and most well-known of its products is a small, brightly coloured, plastic brick which is the basic component of the toys that may be constructed from the kits sold under the LEGO brand.
The Complainant has not licensed the Respondent to use its registered trademark LEGO.
The Domain Name was being used to display a site with a heading “lego supermarket” with pages showing images and information regarding LEGO products with links being provided to the Amazon website where the products may be purchased. There are also links to entirely unrelated websites.
The Complainant has attempted to make contact with the Respondent with respect to the use of the Domain Name on three occasions, but the Respondent has not replied to those approaches. 5. Parties’ Contentions A. Complainant
The Complainant asserts, inter alia, as follows:
(i) that the Domain Name is confusingly similar to the Complainant’s name and its registered trademarks for LEGO;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
In respect of (i), the Complainant claims that the dominant element of the Domain Name is LEGO and that this is a well-known mark. The Complainant says that the addition of the generic suffix “bricks” is not sufficient to prevent the Domain Name from being confusing similar to the Complainant’s registered trademarks and, in fact, serves to strengthen the confusing similarity of the Domain Name to the Complainant’s registered trademarks because of the renown of this most basic element of the Complainant’s and its related companies’ construction sets.
In respect of (ii), the Complainant states that there is no indication that the Respondent is commonly known by the name “legobricks” and that the Complainant has not licensed the use of its trademarks by the Respondent. The Complainant says that the use made of the Domain Name by the Respondent is not that of a genuine reseller of the Complainant’s products, it simply provides an opportunity for click-through revenue from Amazon’s and other suppliers’ websites. As a result, and given the fame of the LEGO trademark, the Complainant argues, the Respondent cannot claim any actual or contemplated bona fide or legitimate use of the Domain Name, relying on Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055; Dr. Ing. h.c. F. Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312 and Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.,WIPO Case No. D2001-1314, amongst others.
In support of (iii), the Complainant asserts that, on the date the Domain Name was registered, the Respondent must have been aware of the Complainant’s rights in its LEGO trademarks, and this is of course supported not only by the reference to “bricks” in the Domain Name but also the actual use made of the Domain Name. The Complainant also relies upon the use of the Domain Name for the sole purpose of gaining pay-per-click revenue from Amazon and other suppliers and failure of the Respondent to respond to the Complainant’s correspondence regarding the Domain Name. In such circumstances, the Complainant argues, the registration and use of the Domain Name must be regarded as registration and use in bad faith, in that it involves using the Domain Name in order intentionally to attempt to attract, for commercial gain, Internet users to other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website in the terms of paragraph 4(b)(iv) of the Policy.
The Complainant requests that the Domain Name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy.
The Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so. The Respondent, failing to respond, has not explained either the registration or use of the Domain Name by her.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion is capable of being drawn from the evidence, provided by the Complainant that is found by the Panel to be credible, and not contradicted by the Respondent. A. Identical or Confusingly Similar
It is clear to the Panel that the Complainant is the owner of the LEGO trademark.
In this case, the addition of the word “bricks” does not serve to distinguish the Domain Name from the Complainant’s trademark because this is a generic word referring only to the Complainant’s products. Indeed, the Panel finds that the addition of this word in the Domain Name would, if anything, exacerbate the likely deception of Internet users seeking the Complainant’s products. The dominant impression given by the Domain Name remains the Complainant’s trademark LEGO.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark LEGO and, accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant’s name and mark is world famous. The Respondent was entitled to demonstrate some right or legitimate interest with respect to the Domain Name, and paragraph 4(c) of the Policy gives good examples of how the Respondent could have done so. The Respondent has given no such explanation.
The use of a domain name to attract Internet users interested in the Complainant’s products, as the Domain Name was undoubtedly intended to do, solely for the purpose of generating pay-per-click revenue does not amount to a legitimate interest in a domain name for the purposes of the Policy; see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraphs 2.3 and 2.6.
The Panel, therefore, agrees with the Complainant’s submission that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy directs that the Complainant must establish that the Domain Name has been registered and is being used in bad faith.
So far as concerns the first limb of this requirement, registration in bad faith, the Panel notes the following:
(a) the Domain Name was registered at a time when the Respondent must have been aware of the pre-existing rights of the Complainant, and the Domain Name itself and the only use that has been made of it make this apparent;
(b) there is virtually no commercial use which could be made of the Domain Name that would not infringe the legal rights of the Complainant and be misleading and deceptive upon the public; and
(c) if the Respondent had any intention to make some legitimate use of the Domain Name, she has had opportunity either to do so or otherwise to explain her conduct, but has done neither.
Therefore the Panel concludes that the Respondent registered the Domain Name with bad faith, in the sense required by the Policy.
Turning now to the second limb of this requirement, “use in bad faith”:
(a) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its registration as a trademark and use in many countries;
(b) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by her of the Domain Name, and her actual use of the Domain Name is plainly intended to attract Internet users interested in the Complainant’s products for the purpose of gaining pay-per-click revenue; and
(c) taking into account all of the above, the Panel finds that it is not possible to conceive any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate.
The Panel therefore concludes that the Respondent registered and is using the Domain Name in bad faith. 7. Decision
In the light of the findings in paragraph 6 above, the Panel concludes that:
- the Domain name is confusingly similar to the trademark LEGO belonging to the Complainant; and
- the Respondent has no rights or legitimate interests in the Domain Name; and
- the Domain Name has been registered and is being used in bad faith.
Accordingly, the Panel orders in accordance with paragraphs 4(i) of the Policy and 15 of the Rules that the Domain Name be transferred to the Complainant.
William P. Knight
Sole Panelist
Dated: January 17, 2012
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