The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is “- -” of Indonesia. 2. The Domain Name And Registrar
The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2012. On February 9, 2012, the Center transmitted by email to eNom, Inc a request for registrar verification in connection with the disputed domain name. On the same date, eNom, 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 February 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2012.
The Center appointed Christian Pirker as the sole panelist in this matter on March 16, 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 Complainant, LEGO Juris A/S which is based in Denmark, is the owner of LEGO and other trademarks used in connection with the LEGO brands of construction toys and various LEGO branded products. The trademark LEGO is a well-known trademark around the world. The Complainant and its licensees commenced use of the LEGO trademark in the United States in 1953. The Complainant is also the owner of more than 1,000 domain names containing the term “lego”. Since 1999, the LEGO Group has a license agreement with Lucasfilm Ltd. concerning the use of the trademark STAR WARS incorporated in the LEGO product line. STAR WARS was the first licenced property produced by the LEGO Group. LEGO products are sold in more than 130 countries.
The Complainant’s marks LEGO have been registered, among others, as a Community trademark on October 5, 1998, with a filing date of April 1, 1996, registration no. 39800, in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42. The Complainant also owns numerous other trade and service marks in other jurisdictions that are listed in the Complaint.
The Complainant tried to contact the Respondent, requesting a voluntary transfer of the disputed domain name and offering compensation for the expenses of registration and transfer fees. However, no response from the Respondent was ever received. 5. Parties’ Contentions A. Complainant
The Complainant has alleged that the trademark of LEGO is one of the world’s most recognized marks and has produced a list by “Superbrands UK”, where it appears in its 2009/10 assessment as the 8th most famous trademark and brand in the world. The Complainant maintains that by reputation and statutory recognition it is entitled to protection with the right to prevent any use of the well-known trademark or a confusingly similar representation of it in connection with any products or services, even beyond those classes for which it has been formally registered. Due to the use of the LEGO trademark in it entirety in the disputed domain name, must be considered confusingly similar to the Complainant’s world famous trademark LEGO. The combination of the two trademarks LEGO and STAR WARS plus an additional generic word do not diminish the confusingly similarity to the Complainant’s trademark. The addition of the suffixes “star wars advent calendar” is not relevant and will not have any impact on the overall impression of the dominant part of the name LEGO. Therefore, anyone who sees the disputed domain name is bound to mistake it for the name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain name, given the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the trademark LEGO or to apply for or use any domain name incorporating that mark.
In respect of bad faith, the Respondent cannot have ignored the fact that LEGO is a famous trademark worldwide and it is highly unlikely that it was not aware of the rights that the Complainant has in the trademark and the value of said trademark, at the time of registration. Moreover, the website to which the disputed domain name resolves displays sponsored links to other online shops, therefore the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for its own commercial gain.
Accordingly, the Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings
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, these rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy states that the complainant must prove that each of the three following elements are present:
(i) That the 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 domain name; and
(iii) That the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
As already stated in other UDRP decisions (e.g. LEGO JURIS A/S V. LEVEL 5 CORP.,WIPO Case No. 2008-1692; LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715; LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680) and supported by the evidence submitted, the Complainant has established to the satisfaction of the Panel that it owns rights in the trademark LEGO and that it is one of the world’s most recognized marks.
The LEGO trademark is entirely included in the disputed domain name in addition with another trademark STAR WARS and the descriptive words “advent calendar”.
As stated in LEGO Juris A/S, v. Lego Star Wars Minifigs,WIPO Case No. D2011-1231, “In addition to the trademark LEGO, the disputed domain name includes in the added suffix a reference to another well-known mark, that of the trademark STAR WARS. In Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC,WIPO Case No. D2003-0112 it was held that a mere combination of two separate trademarks, is to be considered confusingly similar to each of the asserted trademarks.”
Further, the adjunction of the words “advent calendar” to the trademark LEGO in the disputed domain name does not diminish the confusing similarity with the trademark. In similar UDRP cases, panels have found that adding descriptive words does not avoid the confusing similarity between a trademark and a domain name incorporating said trademark. See e.g. Sanofi-Aventis v. Gideon Kimbrell, WIPO Case No. D2010-1559; Greenbrier IA, Inc. v. Moniker Privacy Services/Jim Lyons, WIPO Case No. D2010-0017 and Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green, WIPO Case No. D2010-0024.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark LEGO in accordance with paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a respondent can establish its rights or legitimate interests in its domain name if it shows the presence of any of the following circumstances:
(i) Before any notice to the respondent of the dispute, the respondent uses of, or makes 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) The respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is 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.
It is for the complainant to demonstrate that the condition set out in paragraph 4(a)(ii) of the Policy is met prima facie. Provided that the complainant is successful in demonstrating that the condition is met prima facie, it is for the respondent to demonstrate its rights or legitimate interests. Accordingly, the burden of production shifts to the respondent.
In the present case, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent failed to respond to the Complaint.
Moreover, there is no evidence in the file that the Respondent has rights or legitimate interests in the disputed domain name.
Accordingly, the Panel considers that the Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The third element to be established by the Complainant is that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name.
(i) Circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark, or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or its location.
The Complainant alleges that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.
Some UDRP panels in certain default cases have accepted credible factual allegation from a complainant as true, particularly as these pertain to paragraph 4(a)(iii) of the Policy regarding bad faith (Lexar Media, Inc. v. Michael Huang,WIPO Case No. D2004-1039; Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039; Playmouth state College v. Domains, Best Domain, WIPO Case No. D2002-0939).
Since the Respondent could unlikely be unaware of the Complainant’s trademark, has failed to give any answer and failed to challenge the Complainant’s allegations according to which the disputed domain name was registered and was being used in bad faith, such bad faith registration and use can be accepted by this Panel as true.
That being said, the Panel further states the following:
The instances of bad faith listed in the Policy, paragraph 4(b), are expressly without limitation. The Panel agrees with former WIPO UDRP decisions that the respondent’s registration of a domain name incorporating a very well-known mark of which the respondent must have clearly been aware of, without any evident right to do so, can itself be taken as evidence of bad faith. See, e.g., Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa,WIPO Case No. D2001-0745.
The awareness of the LEGO trademark may be considered to be significant and substantial. The Panel also notes that in a previous WIPO UDRP case including both the LEGO and the MINDSTROMS trademarks (LEGO Juris A/S v. Floyd Goddard/ Oneandone, Private Registration,WIPO Case No. D2010-0544), the panel stated: “The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of the Complainant’s trademarks and activities at the time of the registration of the disputed domain name may be considered an inference of bad faith See Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226, and Sony Kabushiki Kaisha also trading as Sony Corporation v. Inja, Kil,WIPO Case No. D2000-1409.”
Taking in to account the above, added to the absence of participation in the proceeding of the Respondent and the lack of clear contact details, it is in the Panel’s view that the Respondent’s registration was made with knowledge of the Complainant’s mark, which further supports a finding of bad faith registration.
Further, regarding the bad faith use issue and due to the similarity with LEGO Juris A/S, v. Lego Star Wars Minifigs,WIPO Case No. D2011-1231, the Panel adopts the wordings of the afore-mentioned decision according to which the Panel “accepts the evidence that on entering the website using the disputed domain name there are sponsored links displayed which redirect the user, upon clicking the HTML links, to other online shops. The inference which the Panel draws, in the absence of any response from the Respondent, is that the Respondent derives income to itself once a visitor clicks on the links. This is an example of bad faith registration and use. Given the reputation of the LEGO brand and the unlikelihood of the Respondent selecting the disputed domain name for registration by chance the Panel infers that the registration of the site intended to draw income from the improper use of the connection to the Complainant was registration in bad faith”.
Further, the Panel finds that the circumstances in this case lead to the conclusion of bad faith use for the following reasons:
- The disputed domain name may lead customers or potential customers of LEGO products to believe that they are on the Complainant’s website.
- The Respondent’s use of the disputed domain name has no relation to the Complainant’s activities except for misleading potential customers.
- The lack of clear Respondent’s contact details seems rather to hide its identity.
- The Respondent did not actively participate in the proceedings.
Accordingly, the Panel is convinced that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under 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.
Christian Pirker
Sole Panelist
Dated: March 30, 2012
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