The Complainant is LEGO Juris A/S, Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Chainarong Wongkanya, Bangkok, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2012. On April 10, 2012, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On April 10, 2012, FastDomain, Inc. transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 13, 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 (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 April 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2012.
The Center appointed Thomas Hoeren as the sole panelist in this matter on May 23, 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 the holder of the LEGO trademark and all other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products (see Annex 6 of the Complaint). The trademark LEGO is among the best-known trademarks in the world, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. 5. Parties’ Contentions A. Complainant
The Complainant held: The Domain Name is confusingly similar to the Complainant’s trademark LEGO. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in the name. Consequently the Respondent may not claim any rights established by common usage. It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO.
The Complainant first tried to contact the Respondent on January 4, 2012 through a cease and desist letter (Annex 12 of the Complaint). In the letter the Complainant advised the registrant that the unauthorized use of the LEGO trademark in the Domain Name violated the rights in the trademark LEGO, owned by the Complainant. The Complainant requested the immediate transfer of the Domain Name and offered compensation for the expenses of registration and renewal fees (not exceeding out of pocket expenses). A reminder was sent on January 20, 2012 and January 27, 2012. The Complainant never heard back from Respondent following the reminders. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed in a complaint, the Complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the Panel of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Complainant holds numerous registrations for the mark LEGO; it has evidenced registrations for the trademark LEGO in several countries including the United States. The Domain Name incorporates the Complainant’s trademark LEGO respectively in its entirety. This is in itself sufficient to support the claim that Domain Name is confusingly similar to the Complainant’s marks. Cf EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”) and also Oakley, Inc. v. Zhang Bao,WIPO Case No. D2010-2289). The addition of the suffix “2012”is not relevant and will not have any impact on the overall impression of the dominant part of the names, LEGO. B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy. According to a consistent series of WIPO UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
The Panel notes that the Respondent has failed to file a response to prove its rights or legitimate interests in the Disputed Domain Name under paragraph 4(c) of the Policy. For all of the above reasons, and taking into consideration the use of the Domain Name as explained below, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
Obviously the Respondent knows or should have known the products of the Complainant when registering the Domain Name; this domain name was registered globally many years after the Complainant registered its trademark LEGO. The Complainant’s trademark has a strong reputation and is widely known, as evidenced in the complaint. The Respondent failed to respond to the Complaint; it has been evidenced by the Complainant that the Respondent has been contacted through a cease and desist letter, sent by e-mail. There was no reply to this communication, and neither was there a reply to the reminder sent on June 2, 2010. The Panel considers this fact as a further indication of bad faith vis-à-vis the Respondent. It can be inferred from the submitted evidence that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trademark which is re-directed to a commercial site, namely ““ which has the appearance of a blog site (Annex 11 of the Complaint). The active site displays sponsored links to ultimately online sale of toys. Finally, in the Panel’s view, in relation to a widely-known trademark are a clear indication of bad faith not only in the registration stage but also in the use of the Domain Name. 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.
Thomas Hoeren
Sole Panelist
Dated: May 26, 2012
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