The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Pawel Tykwinski of Mielno, Poland / WP-3 of Szczecin, Poland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Az.pl, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2012. On June 28, 2012, the Center transmitted by email to Az.pl, Inc. a request for registrar verification in connection with the disputed domain name. On June 29, 2012, Az.pl, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 4, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 5, 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 July 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2012.
The Center appointed Dana Haviland as the sole panelist in this matter on August 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.
According to the registrar, the language of the registration agreement is English, and the language of this proceeding is therefore English. Rules, paragraph 11(a). 4. Factual Background
The Complainant, based in Denmark, is the owner of the LEGO trademark, used in connection with its well-known LEGO brand of construction toys and other products. The company has subsidiaries and branches throughout the world, and its products are sold in more than 130 countries, including Poland, where the Respondent resides. Its revenues in 2009 exceeded USD 2.8 billion. Its licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in Poland and elsewhere.
The Complainant has submitted evidence of the many registered trademarks of its LEGO mark worldwide, as well as a list of its many domain names incorporating the LEGO mark.
The Respondent registered the Domain Name with Az.pl, Inc. in Poland, on February 7, 2012. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the Domain Name is identical or confusingly similar to a registered trademark in which it has rights, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent registered and used the Domain Name in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The dominant part of the Domain Name is the Complainant’s LEGO mark, to which has been added the geographical identifier “indonesia” and the “.com” suffix. Under paragraph 4(a)(i) of the Policy, a domain name is confusingly similar to a mark where the domain name fully incorporates the mark and simply adds a generic or geographically descriptive term that does not negate the confusing similarity. See Las Vegas Sands, LLC v. Michael Silver, WIPO Case No. D2006-0979 (domain name confusingly similar to complainant’s SANDS mark); Playboy Enterprises International, Inc. Zaynel Demirtas,WIPO Case No. D2007-0768 ( domain name confusingly similar to complainant’s mark).
The Panel finds that the Domain Name is confusingly similar to the Complainant’s mark in which the Complainant has rights, and that the Complainant has thus established the first element, pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made 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 not acquired 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.
The Complainant alleges that the Respondent is not known by the Domain Name, is not an authorized dealer of the Complainant’s products, has never had a business relationship with the Complainant, and has not been licensed to use the Complainant’s LEGO mark in the Domain Name or otherwise. The Complainant has searched and has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name.
“[W]here Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is uniquely within the knowledge and control of the respondent.” Diebold, Incorporated v. Paul Terwilliger,WIPO Case No. D2003-0416. The Respondent has not responded to the Complaint and has provided no evidence in opposition to the Complainant’s allegations or in support of any rights or interests described in the three above subparagraphs of paragraph 4(c) of the Policy, or any other right or interest in the Domain Name.
The Respondent’s use of the Domain Name for sponsored links to paid advertising is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See, e.g., Swarovski Aktiengesellschaft v. Transure Enterprise Ltd., WIPO Case No. D2009-1638.
The Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name, and that the Complainant has satisfied the second element in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive examples of circumstances which, if proven, shall be evidence of the registration and use of a domain name in bad faith, including, in subparagraph 4(b)(iv):
“by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.”
The Domain Name was registered on February 27, 2012 by the Respondent. The Complainant has submitted evidence that on June 28, 2012, the Domain Name website was being used by the Respondent for commercial gain through sponsored links to third party websites, including pornographic websites. This use of the Domain Name incorporating the Complainant’s LEGO mark for advertising revenues from sponsored links constitutes bad faith use under paragraph 4(b)(iv) of the Policy, and the bad faith use shown is close enough in time to the registration of the domain name to support an inference that the registration was made in bad faith with the intent to use the domain name for this impermissible purpose. See Barclays Bank PLC v. Rico Martinez,WIPO Case No. D2010-1987; Swarovski Aktiengesellschaft v. Transure Enterprise Ltd., WIPO Case No. D2009-1638; Asian World of Martial Arts Inc. v. Texas International Property Associates;WIPO Case No. D2007-1415.
The Panel finds that the Complainant has established the Respondent’s registration and use of the Domain Name in bad faith, and that the Complainant has therefore satisfied the third element of its claim, under paragraph 4(a)(iii) 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 Domain Name be transferred to the Complainant.
Dana Haviland
Sole Panelist
Dated: August 29, 2012
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