Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Domain Tech Enterprises of Santiago, Chile. 2. The Domain Name and Registrar
The disputed domain name is registered with Power Brand Center Corp. (“Power Brand”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on December 27, 2011. On December 28, 2011, January 3, 2012, and January 6, 2012 the Center transmitted by email to Power Brand a request for registrar verification in connection with the domain name. On January 6, 2012, Power Brand transmitted by email to the Center its verification response, which disclosed registrant and contact information for the domain name that differed from that in the Complaint, along with other details of the registration. The same day, the Center sent an email communication to Complainant providing the new information and inviting it to submit an amendment to the Complaint; Complainant submitted an amendment to the Complaint on January 9, 2012. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 January 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 31, 2012.
The Center appointed Debra J. Stanek as the sole panelist in this matter on February 7, 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
Complainant is the owner of the trademark LEGO, which is well-known throughout the world for its construction toys and other products. Predecessors of Complainant and its licensees began using the LEGO mark in the United States in 1953 in connection with its construction toys. Complainant owns numerous trademark registrations for the mark LEGO for a variety of goods and services, including a United States federal registration for toy building blocks that was issued in 1975. Complainant also owns numerous domain names that include the term “lego.”
The domain name was registered on December 14, 2010; it is not clear when Respondent acquired the domain name. The domain name is currently used for a website that appears to displays sponsored links to regarding the sale of toys and other products and services.
Respondent has not replied to communications from Complainant objecting to the registration and use of the domain name. 5. Parties’ Contentions A. Complainant 1. Identical or Confusingly Similar
The dominant part of the domain name is the term “lego”, which is identical to the registered trademark LEGO.
The domain name is confusingly similar to Complainant’s world famous trademark. The addition of a hyphen1 and the suffix “roadtrip” is not relevant and does not affect the overall impression of the dominant part of the domain name, LEGO, instantly recognizable as a world famous trademark. The addition of descriptive words does nothing to distinguish the domain name from Complainant’s famous mark.
The addition of the top-level domain “.com” similarly does not have any impact on the overall impression made by the dominant portion of the domain name and is therefore irrelevant in determining confusing similarity.
Those viewing the domain name are bound to mistake it for a name related to Complainant. There is a considerable risk that the public will perceive it either as owned by Complainant or that it has some commercial relationship with Complainant. 2. Rights or Legitimate Interests
Complainant has not found evidence that Respondent has any registered trademarks or trade names that correspond to the domain name. Nor has Complainant found evidence that would suggest that Respondent has been using “lego” in any way that would give it any rights or legitimate interests in the term. Consequently, Respondent may not claim any rights established by common usage.
Complainant has not licensed or authorized Respondent to use the LEGO trademark. Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant.
Respondent’s mere registration of the domain name does not give it a right or a legitimate interest in respect of the domain name. It is highly unlikely that Respondent would not have known of Complainant’s rights in the LEGO mark at the time the domain name was registered.
Respondent cannot claim to have not been aware of Complainant’s rights in the LEGO mark.
Respondent is not currently using the domain name in connection with a bona fide offering of goods or services. The site displays sponsored links to the online sale of toys, other consumer products and gaming sites. Respondent is using a domain name based on a registered trademark in order to generate traffic to a commercial site; the use of the domain name to direct visitors to sponsored links is not a bona fide use. 3. Registered and Used in Bad Faith
The LEGO mark is well-known with a substantial and widespread reputation throughout the world. The considerable value and goodwill of the mark LEGO is most likely what made Respondent register the domain name at issue here.
Complainant first tried to contact the registrant of the domain name using the information in the WhoIs record on February 2, 2011, which identified a “privacy” service. In its cease and desist letter, Complainant advised that the unauthorized use of the LEGO trademark violated Complainants’ rights. Complainant requested immediate transfer of the domain name and offered compensation for the expenses of registration and renewal fees (not exceeding out of pocket expenses). No reply was received to that letter or two subsequent reminders.
The WhoIs information subsequently identified a new “privacy” service and Complainant again wrote to the registrant and again did not receive any reply. Respondent’s failure to respond is relevant in determining bad faith.
Since the original registration, except for a period when the site was not active, the nature of the website used with the domain name has not changed. It displays sponsored links, from which Respondent derives “click-through” revenue when a visitor clicks on one of the sponsored links.
Consequently, Respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.
Whether or not Respondent is the one getting revenue from the products being sold at the websites is irrelevant for the finding of bad faith in this case. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to prevail, a complainant must prove, as to each disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights.
(ii) The respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b). A. Procedural Matters 1. Identity of Respondent
The Rules define the “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.” See Rules, paragraph 1, s.v. “Respondent.” The Panel is of the view that a complaint is “initiated” when it is filed with the Center as described in the Rules, paragraph 3. This is consistent with the paragraph 3(a) of the Rules,2 which provides (emphasis added):
Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN.
Therefore, in the Panel’s view, the original Complaint correctly named the identity shield service as the Respondent. It was only after this proceeding was filed and commenced that the registrar identified “Domain Tech Enterprises” as the registrant. Complainant thereafter amended its Complaint to substitute that entity as Respondent.
Notwithstanding the Panel’s conclusion that the Complaint as originally brought was proper, for purposes of this Decision, the Panel treats only “Domain Tech Enterprises” as Respondent. B. Substantive Discussion 1. Identical or Confusingly Similar
Complainant has established rights in the mark LEGO by virtue of the evidence of its U.S. federal trademark registration for the mark.
Respondent’s domain name is not identical to Complainant’s mark. As a general matter, the Panel is of the view that a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark. Here, the domain name includes the term “road trip” after “lego.” As used in the domain name, “road trip” does not seem to serve a generic or necessarily descriptive function. Nonetheless, in the Panel’s view, the LEGO mark remains the dominant portion of the domain name.3
The Panel finds that the domain name is confusingly similar to a mark in which Complainant has rights. 2. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 (once complainant makes a prima facie case, the burden of alleging or producing evidence demonstrating rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(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.
As noted above, a complainant must establish each of the three elements outlined in paragraph 4(a) of the Policy in order to prevail. The Panel concludes that Complainant has made a prima facie showing that none of the three examples set forth in paragraph 4(c) of the Policy are applicable here.
It does not appear that Respondent is making a legitimate noncommercial or fair use of the domain name. Nor does it appear from the WhoIs record, that Respondent is or could be commonly known by the domain name. As noted above, the domain name is similar to Complainant’s mark, which is well-known throughout the world and was certainly in wide use prior to registration of the domain name. It appears that the domain name is being used to generate “click through” revenue for the registrar or Respondent.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c) of the Policy. 3. Registered and Used in Bad Faith
A complainant must establish that the domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which may establish bad faith, (see Policy, paragraph4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant’s rights in the LEGO mark long predate Respondent’s registration and use of the domain name. Further, the Panel has already concluded that Respondent has no rights or legitimate interests in the domain name and that the use of the domain name was not in connection with a bona fide offering of goods or services. Under these circumstances, combined with the adverse inferences drawn by Respondent’s failure to respond, the Panel finds that Complainant has established that Respondent registered and is using the domain name in bad faith. 7. Decision
For all 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 Complainant.
Debra J. Stanek
Sole Panelist
Dated: February 17, 2012
1 The Panel notes that the reference to a hyphen is mistaken.
2 See also, Rules, paragraph 4, which is entitled “Notification” of Complaint and does not refer to “initiation.” Instead, paragraph 4(c) refers to the “commencement” of the proceedings.
3 The presence or absence of spaces and the addition of the generic top-level domain “.com” is not relevant for these purposes.
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