Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is softwareegypt of Cairo, Egypt. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2012. On June 18, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On June 19, 2012, GoD, LLC transmitted by email to the Center its verification response disclosing registrant information for the disputed domain name which differed from the named Respondent in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on June 25, 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 Respondent of the Complaint, and the proceedings commenced on June 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 17, 2012.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on July 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
Complainant is the owner of the LEGO trademark for LEGO construction toys and other LEGO products. Complainant owns trademark registrations worldwide for LEGO products, including in Egypt, Respondent’s country of residence. Complainant has subsidiaries and branches throughout the world, and its products are sold in more than 130 countries, including Egypt.
Complainant also owns over 2,400 domain names containing the LEGO mark.
The LEGO brand is a famous mark. It was listed as the 8th most recognized trademark in the world by Superbrands UK’s Top 500 list for 2009/10. Many UDRP decisions have found that the mark is famous.
Respondent registered the disputed domain name on April 20, 2012. It reverts to a webpage depicting a young child and offering nursery and pre-school services.
On May 18, 2012, Complainant sent a cease and desist letter to Respondent. Despite two reminders, there was no response. 5. Parties’ Contentions A. Complainant
Complainant asserts that its mark is a famous mark that is internationally recognized. Complainant contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s mark LEGO in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is insertion of the generic word “academy”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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
As set forth above, Complainant holds registered trademarks worldwide for its LEGO building block construction toys and related products. It sells such products in more than 130 countries. The LEGO mark was listed as the 8th most famous mark by Superbrands UK for 2009/10. Numerous prior UDRP panels have concluded that the LEGO mark is famous. See, e.g., LEGO Juris A/S v. Fateha el yakhloufi, WIPO Case No. D2012-0995, and other UDRP decisions cited therein. Consequently, the Panel agrees that the LEGO mark is famous and finds that Complainant has rights in the mark alleged to be contained in the disputed domain name.
Complainant also registered and uses and over 2,400 related domain names to promote its products.
The disputed domain name consists of Complainant’s mark LEGO in its entirety, and the only difference between Complainant’s mark and the disputed domain name is the addition of the generic word “academy”. It has long been held that the addition of a generic word is irrelevant to the determination of whether the domain name is identical or confusingly similar to a complainant’s mark. Furthermore, Complainant asserts that it has educational programs that provide resources and training for schools and supports kindergartens, schools and orphanages, and therefore the addition of the suffix “academy” serves to strengthen the impression that the disputed domain name is affiliated with Complainant.
Accordingly, the Panel finds that Complainant has rights in the LEGO mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the LEGO mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name. The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that “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 web site or location or of a product or service on your web site or location.”
This Panel infers that Respondent most likely knew of Complainant’s world-famous LEGO mark when Respondent registered the disputed domain name, given the general fame of the mark, and the fact that the LEGO mark is registered in Egypt and that Complainant’s LEGO products are sold in Egypt, Respondent’s country of residence. Respondent therefore registered the disputed domain name in bad faith.
It appears that Respondent is making commercial use of the disputed domain name. It reverts to a webpage depicting a young child and offering nursery and pre-school services, with apparent links (though not active) to information on the academy’s teachers, meals and programs. Under paragraph 4(b)(iv) of the Policy above, Respondent’s use of the disputed domain name clearly is an attempt to create confusion to attract Internet users to Respondent’s website for commercial gain.
This Panel finds that Respondent has registered and used the disputed domain name in bad faith and that Complainant meets the third criterion of 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 Complainant.
Sandra A. Sellers
Sole Panelist
Dated: August 7, 2012
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