The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is 107inc, Gregory Simmons of Greenville, South Carolina, United States of America. 2. The Domain Name And Registrar
The disputed domain name is registered with L Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2012. On May 15, 2012, the Center transmitted by email to L Inc. a request for registrar verification in connection with the disputed domain name. On May 21, 2012, L 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 May 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2012.
The Center appointed James McNeish Innes as the sole panelist in this matter on June 15, 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 owner of a number of trademarks incorporating the term “lego”, used in connection with the famous LEGO brands of construction toys and other LEGO branded products. The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the United States and elsewhere. The Complainant and its licensees (collectively “the LEGO Group of Companies or the LEGO Group”), through its predecessors, commenced use of the LEGO mark in the United States in 1953, to identify construction toys made and sold by it. Over the years, the business of making and selling LEGO branded toys has grown. The revenue for the LEGO Group in 2009 was more than USD 2.8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States. The Complainant is also the owner of more than 2400 domain names containing the term “lego”. It is the strict policy of the Complainant that all domain names containing the word “lego” should be owned by the Complainant.
The Respondent registered the disputed domain name on November 17, 2011. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions include the following:
(a) The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. The Complainant has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction and has maintained an extensive website under the domain name . The mark is in the list of the official top superbrands for 2009/10 as provided by Superbrands UK.
(b) The disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO. The fame of the trademark has been confirmed in a number of previous UDRP decisions e.g., LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840 and LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680.
(c) The disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO. The addition of the prefix “letgomy” is not relevant and will not have any impact on the overall impression of the dominant part of the name, “lego”, instantly recognizable as a world famous trademark.
(d) Anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark LEGO there is a considerable risk that the trade public will perceive the disputed domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. By using the trademark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark.
(e) The Respondent has no trademarks or tradenames corresponding to the disputed domain name and there is nothing to suggest use of the name “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. No license or authorisation of any kind has been given by the Complainant to the Respondent to use the mark.
(f) The Respondent registered the disputed domain name on November 17, 2011. It is unlikely that the Respondent would not have known of the Complainant’s legal rights in the LEGO mark at the time of the registration.
(g) The disputed domain name is currently connected to a website containing sponsored links which displays links related to third party websites. The Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites. In this case the use of sponsored links is a factor indicating bad faith as the Respondent is using the Complainant’s trademark to attract visitor to its site.
(h) The awareness of the trademark LEGO is considered, in the whole Community in general, to be significant and substantial. The number of third party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed the last years (as an indication, see e.g., LEGO Juris A/S v. Domains By Proxy, LLC/ Quest Commerce Inc. Quest Commerce Inc,WIPO Case No. D2012-0048, LEGO Juris A/S v. David Hudson, WIPO Case No. D2012-0060, LEGO Juris A/S v. Execucorp Management One, Inc.,WIPO Case No. D2012-0062, LEGO Juris A/S v. Nasirudin, EazyS,WIPO Case No. D2011-0617, LEGO Juris A/S v. Owen Jones, WIPO Case No. D2011-0537, LEGO Juris A/S v. Xianbin Chen,WIPO Case No. D2011-0505, LEGO Juris A/S v. Bridge Port Enterprises Limited,WIPO Case No. D2011-0442, LEGO Juris A/S v. Probuilders, WIPO Case No. D2011-0226, LEGO Juris A/S v. Private Private, WIPO Case No. D2010-2191, LEGO Juris A/S v. AbdiPraja, WIPO Case No. D2010-2178, LEGO Juris A/S v. Communikas LLC, WIPO Case No. D2010-2115, LEGO Juris A/S v. W, WIPO Case No. D2010-2101, LEGO Juris A/S v. lego building co, WIPO Case No. D2010-2047, LEGO Juris A/S v. Multi-Medija Studio, Informacijske Storitve Milan Malek S.P., WIPO Case No. D2010-2043, LEGO Juris A/S v. William Stehlin, WIPO Case No. D2010-2042, LEGO Juris A/S 诉 yanghuitong, WIPO Case No. D2010-2030, LEGO Juris A/S v. Maho Jakotyc,WIPO Case No. D2010-0835, LEGO Juris A/S v. Online Toy Superstore, WIPO Case No. D2010-0839 and LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840). The considerable value and goodwill of the mark LEGO is most likely, a large contribution to this and also what made the Respondent register the disputed domain name.
(i) LEGO is a famous trademark worldwide. It is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the disputed domain name the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain. Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.
(j) The Complainant’s contentions are confirmed by the record. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings
According to paragraph 15(a) of the Rules, the panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(a) That the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
(b) That the respondent has no rights or legitimate interests in respect of the domain name.
(c) That the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant contends that the disputed domain name is identical or confusingly similar to its mark for the following reasons:
(a) The dominant portion of the disputed domain name is confusingly similar to the Complainant’s mark LEGO.
(b) The only difference between the Complainant’s mark and the disputed domain name is the addition of the prefix “letgomy”.
(c) The disputed domain name adds a non-distinctive prefix and is confusingly similar to the Complainant’s trademark.
The Panel accepts the Complainant’s contentions and finds that the disputed domain name is confusingly similar to the Complainant’s mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the panel to be proved based upon its evaluation of the evidence presented shall demonstrate a respondent’s rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) of the Policy:
(a) before any notice to you [respondent] 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
(b) you [respondent] (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
(c) you [respondent] 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.
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not submitted a Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions under the heading “Evidence of Registration and Use in Bad Faith”. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
The Respondent has made no Response in this connection. The Complainant has made contentions that would lead to situations mentioned in paragraph 4(b)(iv) of the Policy. The Panel accepts the Complainant’s assertion that the Respondent has attempted to divert Internet users to its website for commercial gain by creating confusion with the Complainant’s mark. The Panel finds that the Policy, paragraph 4(a)(iii) has been satisfied. 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.
James McNeish Innes
Sole Panelist
Dated: June 25, 2012
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