The Complainant is LEGO Juris A/S, Billund, Denmark, represented by Melbourne IT Digital
Brand Services AB, Sweden.
The Respondent is Milton Alfredo, Berwickshire, United Kingdom of Great Britain and Northern Ireland (“U.K.”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2012. On October 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 2012, the Registrar 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 October 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2012.
The Center appointed Stefan Abel as the sole panelist in this matter on November 26, 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 numerous LEGO trademarks. The LEGO trademarks have been used for over 50 years intensively throughout the world mainly to identify construction toys. The revenue for the LEGO Group in 2009 was more than US D2, 8 billion. In particular, the Complainant also holds several trademark registrations for LEGO in the U.K. The trademark has been shown as number eight of the most famous trademarks and brands in the world by a U.K. publication (Superbrands).
The Respondent registered the disputed domain name on March 14, 2012. The Respondent’s site at the disputed domain name contains a number of links to numerous commercial websites which are related to the brand LEGO inter alia, a site which is an online shop where LEGO-products can be acquired. 5. Parties’ Contentions A. Complainant
In summary, the Complainants contentions are as follows:
The disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO. The addition of the suffix “play” and a hyphen is not relevant and will not have an impact on the overall impression of the dominant part of the name, LEGO, instantly recognizable as a world famous trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant did not grant any license or authorization of any other kind to the Respondent. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent had intentionally chosen a domain name based on a registered trademark in order to generate traffic at the sponsored links site under the domain name at issue.
The Respondent registered and is using the disputed domain name in bad faith.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides for a transfer or cancellation of a domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
- The Respondent’s disputed domain name is identical of confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out certain circumstances which, in particular, but without limitation, shall be evidence of registration and use of the domain name in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark LEGO. The disputed domain name consists of the Complainant’s trademark LEGO in combination with the term “play”. The Panel finds this additional generic term describes only the purpose of the products that the Complainant provides under its company name and trademarks. The term “play” added to the Complainants trademark LEGO by a hyphen in the domain name therefore does not only lack any distinctive character with regard to the signs owned by the Complainant but reinforces the confusing similarity of the domain name to these marks.
As a general rule, the addition of a generic term to a domain name, consisting of a trademark rarely excludes finding of confusing similarity under the Policy. This finding is consistent for the number of previous UDRP decisions (see e.g., Grupo Televisa, S.A. Televisa S.A. de C.V. Comercio Mas, S.A. de C.V. Estrategia Televisa, S.A. de C.V. Videoserpel, Ltd. V. Registrant info@ 9876543210,.WIPO Case No. D2003-0735; British Broadcasting Corporation v. Registrant (187640) info@ +1.25255572,WIPO Case No. D2005-1143).
The Panel finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its registered trademarks or to register the disputed domain name.
The element “Lego” used in the disputed domain name does not have any apparent descriptive meaning related to the content of Respondent’s website. The term “lego-plays” or “lego” on the website at the disputed domain name is not apparently used as a designation for a person or a company other than the Complainant or for services or products other than those provided by the Complainant.
By producing evidence on these circumstances, the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The evidentiary burden therefore shifts to the Respondent. The Respondent must then by concrete evidence demonstrate its rights or legitimate interests in that domain name in order to refute the prima facie case. The Respondent has made no such showing.
The Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish this element of the Policy as it is an impossible task for the Complainant to prove a negative that is primarily within the knowledge of the Respondent, such as the lack of rights or legitimate interests in the domain name.
Producing evidence that the Respondent prima facie has no rights or legitimate interests in the domain name must therefore be regarded as sufficient under the circumstances to establish the requirement of paragraph 4(a)(ii) if the Respondent fails to rebut the prima facie case. This finding is consistent with the consensus in previous UDRP decisions (see e.g. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds that the Complainant has established this element in accordance which paragraph 4(b)(iv) of the Policy for the following reasons:
The Panel finds that, by using the disputed domain name for a set of pay-per-click links to sites which are related to the brand LEGO, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Lego company name and trademarks as to source, sponsorship and affiliation of the website (paragraph 4(b)(iv) of the Policy).
The disputed domain name combines the Complainant’s trademarks with the term “play” which is descriptive of the goods marketed under the Complainant’s trademarks. In addition to that, the Respondent’s website provides links to websites which are related to the brand LEGO, in particular online shops, where Lego products can be acquired. Internet users are therefore likely to get the idea that the Respondent’s site at the disputed domain name is an official site of the Complainant, sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion will likely attract more customers to the site at the disputed domain name which will result in commercial gain as the Respondent’s site provides links to numerous commercial websites.
The Panel finds that the Respondent acted intentionally. It is not conceivable to the Panel that the Respondent could have registered the disputed domain name without having the Complainant and its trademarks in mind. The Respondent’s intention to use the disputed domain name as a reference to the Complainant and its trademarks is obvious to the Panel considering that no rights or legitimate interests in using the domain name are apparent, that the Complainant’s trademarks are well known and have been registered also in the U.K. years before the registration of the disputed 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 disputed domain name be transferred to the Complainant.
Stefan Abel
Sole Panelist
Dated: December 17, 2012
Full & Egal Universal Law Academy