The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Phillip Corriher of Charlotte, North Carolina, United States of America. 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 July 2, 2012. On July 2, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On July 2, 2012, GoD, 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 July 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2012.
The Center appointed Simon Minahan as the sole panelist in this matter on August 7, 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 Panel finds the following matters established as facts for the purposes of making this decision.
The Complainant, as part of the LEGO group of Companies which manufacture and sell LEGO plastic construction toys, is the owner of the LEGO trade mark which is widely in use around the world and has been since 1954. The LEGO mark is the subject of many trade mark registrations internationally, including in the USA and throughout Europe and, in particular, in Turkey.
In connection with trade in connection with the LEGO trade mark the LEGO Group has, since 2009, enjoyed a trade in excess of US$2.5 billion annually.
The LEGO trade mark is, and has previously been held to be, a famous or well-known trade mark (e.g: LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840).
The Respondent is not and has never been licensed or otherwise authorised by the Complainant to apply or otherwise make use of the LEGO trade mark or to register the disputed domain name or any domain name comprising the LEGO trade mark.
The disputed domain name is presently and has been associated with a website which contains links to various commercial sites including Ebay. 5. Parties’ Contentions A. Complainant
The Complainant contends, among other things that the disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO and that the Respondent has registered and is using it in bad faith in order to improperly take advantage of the fame of the mark and divert LEGO related custom to its own ends.
In particular the Complainant contends that the addition of the suffix “mag” does not relevantly distinguish the disputed domain name from its mark and will not have any impact on the overall impression of the dominant part of the disputed domain name, “lego”, which is instantly recognizable as a world famous trademark. (Citing Dr. Ing.h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488).
The Complainant further contends that:
a) the Respondent is to be taken to have known of the LEGO mark when it registered the disputed domain name ;
b) there is no evidence of the Respondent being associated with or making any historical use of any LEGO trade mark or any LEGOmag or like trade mark prior to registering the disputed domain name and making commercial use of it;
c) the Respondent had and has no legitimate interest in the LEGO mark and can acquire none arising from use in association with the disputed domain name in the circumstances (citing Drexel University v. David Brouda,WIPO Case No. D2001-0067);
d) the use of the disputed domain name in connection with a website carrying banner advertisements and hyperlinks to commercial webpages which are not associated with the Complainant is a bad faith diversion of goodwill and commercial traffic. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel finds the Complaint to be properly constituted and further finds it has jurisdiction under the UDRP.
Notwithstanding that the Respondent has not replied to the claims of the Complainant, the Complainant nonetheless has the onus of making out the grounds for transfer or cancellation of the disputed domain name, under the UDRP. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s LEGO trade mark for the following reasons.
The disputed domain name comprises the Complainant’s famous LEGO trade mark and the suffix “mag”. In this Panel’s view, the combination is strongly suggestive of an offering by the Complainant.
The Panel notes and accepts the Complainant’s submission that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes(see e.g Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh (supra) and the many other cases supporting the proposition). The Panel considers “mag” to be such a generic suffix having the meaning or connotation of “magazine” or “store”.
The Panel also notes that similar reasoning was applied inWIPO Case No. D2009-0753 where one of the domain names was and the panel found that this domain name was confusingly similar to the trademark LEGO.
Further, the presence of the gTld identifier generic top-level domain “.info” is to be disregarded as neutral and does not operate to distinguish the disputed domain name from the Complainant’s mark or to diminish or reduce confusion around it. See e.g: Telecom Personal v. ,WIPO Case No. D2001-0015; Nokia Corporation v. Private Case,WIPO Case No. D2000-1271. B. Rights or Legitimate Interests
The Panel notes the evidence of the Complainant that it knows of no history of use by the Respondent or interest or right in the Respondent to use the LEGO or LEGOmag trade mark or any associated domain names. It further notes and accepts that under paragraph 4(a)(ii) of the UDRP the set of circumstances shifts the evidentiary burden of establishing those rights to the Respondent (see e.g: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Time Out Group Ltd. v. Marc Jacobson, WIPO Case No. D2001-0317). The Respondent has not discharged this burden and so the Panel finds it has no rights or legitimate interests in the disputed domain name.
Further the Panel accepts the Complainant’s contention that the Respondent knew of the LEGO trade mark when it registered the disputed domain name and that, accordingly, the Respondent cannot acquire any rights or legitimate interests in the disputed domain name by the use of it in such circumstances (citing Drexel University v. David Brouda,WIPO Case No. D2001-0067). C. Registered and Used in Bad Faith
The Panel, as noted above, finds the LEGO trade mark is internationally famous or well known. It further considers that commercial use of a trademark in a domain name by anyone other than the complainant or its licensee would, unless some clear justification were established, violate the rights of the trademark owner: Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.,WIPO Case No. D2001-1314.
No such justification has been established here in respect of the use of the disputed domain name in connection with a website directing traffic to commercial webpages.
The Panel also notes, in this regard, that the Respondent has failed to respond to cease and desist letters prior to the commencement of this procedure under the Policy and the prior UDRP decisions regarding this as going to establish bad faith (see e.g. News Group Newspapers Limited and News Network Limited v.Momm Amed Ia, WIPO Case No. D2000-1623).
The Panel finds that the Respondent registered the disputed domain name knowing of the Complainant’s trade mark and seeking to leverage off it by using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.
Accordingly, the Panel finds that the disputed domain name has been registered and used, 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.
Simon Minahan
Sole Panelist
Date: August 19, 2012
Full & Egal Universal Law Academy