The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Moustafa Mahmoud of Dubai, United Arab Emirates. 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 16, 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 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 14, 2012.
The Center appointed Stefan Abel as the sole panelist in this matter on November 28, 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 LEGO trademarks used in connection with construction toys and other products. The LEGO trademarks of the Complainant are registered in various countries and include in particular a LEGO trademark registered in the United Arab Emirates. The LEGO trademark has been used for over 50 years. In 2009, the revenue for the LEGO group was more than USD 2,8 billion. The LEGO trademark is listed as number eight of the most famous trademarks and brands in the world by a United Kingdom of Great Britain and Northern Ireland (U.K.) publication (Superbrands U.K.).
The Complainant further owns more than 2,400 domain names containing the term “lego”.
The Respondent registered the disputed domain names on June 5, 2012. The website at the disputed domain names contain a number of links to various commercial third parties’ websites. Some of these websites are related to the trademark LEGO, for example, an online shop where Lego products can be acquired. The websites display different categories in English language and also the text related to further links is partly in English. 5. Parties’ Contentions A. Complainant
In summary, the Complainant’s contentions are as follows:
The disputed domain names are confusingly similar to the Complainant’s LEGO trademark as it incorporates this term exactly and in its entirety. The addition of the word “hat” fails to distinguish the disputed domain names from the Complainant’s trademarks.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has registered and is using the disputed domain names to generate traffic to websites with sponsored links. The Respondent derives a financial benefit in the form of a pay-per-click revenue.
The Complainant requests that the disputed domain names 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)(i) to (iii) of the Policy:
- The disputed domain names are identical of confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interest in respect of the disputed domain names; and
- The disputed domain names have been registered and are 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 disputed domain name in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademarks LEGO. The disputed domain names consist of the Complainant’s trademark LEGO in combination with the term “hat”. This additional generic term describes to the Panel a part of the Complainant’s construction toys, i.e. a headgear, which may be placed on Lego toy characters. This meaning will be at least understood by the English speaking part of the public the disputed domain names are addressing. Another meaning or use of the term “legohat” is not apparent.
The term “hat” added to the Complainant’s trademarks LEGO in the disputed domain names therefore lacks any distinctive character with regard to the signs owned by the Complainant and does not exclude the confusing similarity of the disputed domain names to the Complainant’s trademarks.
As a general rule, the addition of a generic term to a domain name, consisting of a trademark rarely excludes the finding of confusing similarity under the Policy. This finding is consistent with a 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 the Complainant has satisfied paragraph 4(a)(i) of the Policy. 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 names.
The element “lego” used in the disputed domain names does not have any apparent descriptive meaning related to the content of Respondent’s websites. The terms “legohat” or “lego” on the website at the disputed domain name are 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. 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. 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 disputed domain names.
Producing evidence that the Respondent prima facie has no rights or legitimate interests in the disputed domain names must therefore be regarded as sufficient to establish the requirement of paragraph 4(a)(ii) of the Policy if the Respondent fails to rebut the prima facie case. This finding is consistent with the consensus view in previous UDRP decisions (see, e.g., Belupo d.d.v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel finds the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Complainant has established this element in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
The Panel finds that, by using the disputed domain names for a set of pay-per-click links to websites which are related to the Complainant’s trademark 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 names combine the Complainant’s trademarks with the term “hat” which is descriptive of a part of the goods marketed under the Complainant’s trademarks. In addition to that, the disputed domain names websites provide links to websites which are related to the trademark LEGO, in particular online shops, where Lego products can be acquired. Internet users are therefore likely to get the idea that the Respondent’s website at the disputed domain names is an official website of the Complainant, sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion will attract more customers to the website at the disputed domain names which will result in commercial gain as the Respondent’s website 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 names without having the Complainant and its trademarks in mind. The Respondent’s intention to use the disputed domain names as a reference to the Complainant and its trademarks is obvious considering that no rights or legitimate interests in using the disputed domain names are apparent, that the Complainant’s trademarks are well known and have been registered also in the United Arab Emirates years before the registration of the disputed domain names.
The Panel finds the Complainant has satisfied 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 disputed domain names, and be transferred to the Complainant.
Stefan Abel
Sole Panelist
Date: December 20, 2012
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