The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is sakchai srion of Chonburi, Thailand. 2. The Disputed Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2012. On March 23, 2012, the Center transmitted by email to N LLC a request for registrar verification in connection with the Disputed Domain Name. On March 23, 2012, N LLC 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 March 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2012.
The Center appointed Michael D. Cover as the sole panelist in this matter on April 24, 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 is a limited company incorporated in Denmark. The Complainant is the owner of the LEGO trademark and all other trademarks used in connection with the famous LEGO brand of construction toys and other products. The Complainant and its licensees, through their predecessors in business, commenced use of the LEGO trademark in the United States of America in 1953 and the annual revenue of the Lego group of companies has grown to more than USD 2.8 billion. Lego products are sold in more than 130 countries throughout the world, including Thailand. The Complainant is also the owner of a great number of domain names consisting of or containing the word “Lego” as set out in Annex 8 to the Complaint. LEGO is rated as a “Superbrand” in a report set out in Annex 9 to the Complaint, which shows LEGO as number 8 of the most famous trademarks and brands in the world. The Complainant has registered the trademark LEGO in Thailand under No. KOR78605.
The Respondent has an address in Chonburi, Thailand. 5. Parties’ Contentions A. Complainant
The Complainant maintains that its LEGO trademark not only has substantial inherent distinctiveness but also has acquired substantial reputation through use. It further submits that the LEGO trademark is a well-known trademark in accordance with the provisions of Article 6bis of the Paris Convention.
The Complainant submits that the Disputed Domain Name is confusingly similar to its LEGO trademark in which the Complainant has rights. It states that the dominant part of the Disputed Domain Name is the word “Lego” and that the addition of the suffix “zone” is not relevant and does not have any impact on the overall impression of the dominant part of the Disputed Domain Name. It cites various UDRP decisions where LEGO has been found to be a well-known mark and that the addition of a descriptive element is not relevant and has no impact on the overall impression of the dominant part of the mark LEGO. It concludes that the Complainant is the owner of the well-known trademark LEGO and that the Disputed Domain Name is clearly confusingly similar to the Complainant’s registered trademark LEGO.
The Complaint goes on to submit that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It states that the Respondent has no registered trademarks corresponding to the Disputed Domain Name and that no licence or authorization has been given by the Complainant to the Respondent. It cites in support its contentions Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 where the panel found that, in the absence of any licence or permission from the complainant, no actual of contemplated bona fide or legitimate use could be claimed by the respondent. The Complainant also notes that the Respondent is not an authorized dealer of the Complainant and has never had a business relationship with it.
The Disputed Domain Name having been registered on January 30, 2012, the Complainant states that it is highly unlikely that the Respondent would not have known of the LEGO trademark. The Complainant goes on to state that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Instead, the Disputed Domain Name resolves to a site displaying links to the on-line sale of toys, some of which are the products of the Complainant and some of which are not, thereby using the Disputed Domain Name for commercial gain, the Respondent not being a legitimate reseller. The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
In relation to the Disputed Domain Name having been registered and used in bad faith, the Complainant submits that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the website to which the Disputed Domain Name redirects, by creating a likelihood of confusion with the Complainant’s trademark LEGO. The Complainant had sent the Respondent a cease and desist letter in February 2012, which was followed up with two reminders. No response was received.
The Complainant summarises by saying that the Respondent should be considered to have registered and be using the Disputed Domain Name in bad faith.
The Complainant requests the Panel to decide 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
The Complainant is required to demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to its trademark LEGO, that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts the submissions of the Complainant that the Disputed Domain Name is confusingly similar with the well-known trademark LEGO in which the Complainant has rights. The addition of the non-distinctive matter “zone” and also the top level domain “.net” does not detract from the dominant element “Lego”. This has been established in many UDRP decisions, including Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434 where the panel found that the addition of non-distinctive terms does nothing to reduce the confusing similarity of the disputed domain name in question with the complainant’s well-known trademark. B. Rights or Legitimate Interests
The Panel also accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Such use as has taken place of the Disputed Domain Name has not been bona fide, as it relies on confusing links to on-line toy offerings, does not involve the Respondent being known by the Disputed Domain Name and cannot be said to be legitimate noncommercial or fair use of the Disputed Domain Name, without the intent for commercial gain to misleadingly divert consumers. The Respondent is not a legitimate reseller of the Complainant. The Respondent has not been licensed or authorized by the Complainant to use the Complainant’s well-known trademark LEGO. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains a non-exhaustive list of circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(iv) of the Policy is applicable in relation to this Complaint, in that the Panel finds that the Respondent has been using the Disputed Domain Name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s well-known trademark LEGO. The Panel accepts that it would have been highly unlikely, as submitted by the Complainant, that the Respondent would have been unaware of that well-known trademark when the Respondent registered the Disputed Domain Name in early 2012, the well-known trademark LEGO having been in use by that point for nearly 60 years.
The Panel accordingly finds that the Disputed Domain Name has been registered and is being used in bad faith.
The Panel finds that the Disputed Domain Name is confusingly similar to the trademark LEGO in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used 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 Disputed Domain Name, , be transferred to the Complainant.
Michael D. Cover
Sole Panelist
Dated: May 9, 2012
Full & Egal Universal Law Academy