The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Jillion / Jones Lee of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2012. On October 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 30, 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 October 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2012.
The Center appointed Daniel Kraus as the sole panelist in this matter on November 29, 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 a limited company incorporated in Denmark. The Complainant is the owner of the LEGO trademark and all other trademarks used in connection with the famous LEGO brand of construction toys and other products. The Complainant and its licensees, through their predecessors in business, commenced use of the LEGO trademark in the United States of America in 1953 and the annual revenue of the Lego group of companies has grown to more than USD 2.8 billion. Lego products are sold in more than 130 countries throughout the world. The Complainant is also the owner of a great number of domain names consisting of or containing the word “Lego” as set out in Annex 8 to the Complaint. LEGO is rated as a “Superbrand” in a report set out in Annex 9 to the Complaint, which shows LEGO as number 8 of the most famous trademarks and brands in the world. The Complainant has registered the trademark LEGO in the United States under No. 3440699.
The disputed domain name was registered on June 21, 2012 and is redirected to a pay-per-click parking web site containing in particular links to websites where LEGO products are offered. 5. Parties’ Contentions A. Complainant
The Complainant maintains that its LEGO trademark not only has substantial inherent distinctiveness but also has acquired substantial reputation through use and extensive advertising. It further submits that the LEGO trademark is a well-known trademark in accordance with the provisions of Article 6bis of the Paris Convention.
The Complainant submits that the disputed domain name comprises the word “lego”, which is identical to the registered trademark LEGO.
It also states that the disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO and that the addition of the suffix “busters” is rather fitted to strengthen the impression that the disputed domain name belongs to, or is affiliated with the Complainant.
The Complainant further alleges that the addition of the top-level domain name (TLD) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to the determine the confusing similarity between the trademark and the disputed domain name.
The Complainant goes on to submit that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that the Respondent has no licence or authorization given by the Complainant to the Respondent, to use the trademark LEGO. It cites in support its contentions Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055 where the panel found that, in the absence of any licence or permission from the complainant, no actual of contemplated bona fide or legitimate use could be claimed by the respondent. The Complainant also notes that the Respondent is not an authorized dealer of the Complainant and has never had a business relationship with it.
The disputed domain name having been registered on June 21, 2012, the Complainant states that the Respondent cannot claim to have been using “Lego”, without being aware of the Complainant’s rights to it.
The Complainant goes on to state that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a website displaying sponsored links, thereby using the disputed domain name for commercial gain and consequently, the Respondent, is tarnishing the trademark LEGO.
The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
In relation to the disputed domain name having been registered and used in bad faith, the Complainant submits that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s trademark LEGO as to the source, sponsorship, affiliation or endorsement of its website.
The Complainant had sent the Respondent a cease and desist letter on August 17, 2012, which was followed up with two reminders. No response was received.
Finally, the Complainant mentions the willful blindness of the Respondent, who cannot claim he/she had no knowledge of the fact that the generated pay-per-click advertising links related at least in part to the trademark LEGO.
The Complainant summarizes by saying that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark at the point of the registration and that there is no connection between the Respondent and the Complainant. By using the disputed domain name the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for its own commercial gain.
The Complainant requests the Panel to decide that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that the disputed domain name should be either cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
Consequently, the Panel shall further analyze the eventual concurrence of the above-mentioned circumstances in the present case. A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this element, namely: that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to its mark. The Complainant has rights in the LEGO trademark, holding registrations worldwide, including in China where the Respondent is located.
The Panel finds the dominant part of the disputed domain name represents the Complainant’s famous trademark LEGO. In addition to this, the disputed domain name contains the generic word “busters” which is without legal relevance for the present procedure.
Considering the brand awareness of the Lego products worldwide, an Internet user would most probably assume in the Panel’s opinion a connection with the Complainant when seeking information on a website with the disputed domain name .
A wide number of UDRP panels have ordered the transfer of domain names incorporating trademarks and generic words as the mere addition of a generic term to a famous mark does not sufficiently distinguish the domain name from the complainant’s trademark in the mind of the consumers. See LEGO Juris A/S v. SAKCHAI SRION,WIPO Case No. D2012-0604; Nintendo of America inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434.
For all the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark.
Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The second element of a claim of abusive domain registration is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)).
Some UDRP panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a domain name. See, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other UDRP panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM , WIPO Case No. D2000-0403.
As the Respondent has not filed any response in this proceeding, the Panel may accept as being true all reasonable allegations made by the Complainant (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
In any event, the Panel has carefully reviewed the record in this case, and finds that the Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any rights to register or use its trademark.
The Respondent failed to submit any response in the present procedure and did not respond to the Complainant’s cease and desist letter and reminders, which were sent prior to commencing the present proceedings. The silence of the Respondent may support a finding, based on other relevant circumstances, that it has no rights or legitimate interests in respect of the disputed domain name. See also Alcoholics Anonymous World Services, Inc. v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,WIPO Case No. D2000-0011.
In view of the above, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, since the Complainant asserted that the Respondent was intentionally using the Complainant’s trademarks to increase the traffic to its website and the websites of others.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
The evidence submitted by the Complainant sufficiently establishes to the Panel that the trademark LEGO is well-known worldwide in relation to construction toys and it has been used for decades, including in China. The disputed domain name was registered on June 21, 2012, and contains the Complainant’s trademark in its entirety as a prefix and dominant part.
The registration of a domain name that is practically identical to a well-known trademark by a party that has no legitimate connection with the mark or relationship with the owner of the mark, may generally constitute bad faith registration.
According to paragraph 4(b)(iv) of the Policy, bad faith is established if it is evidenced that the disputed domain name is used to intentionally attempt to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or a product or service on the registrant’s website or location.
In the present case, after analysing the printouts of the website “www.” to which the disputed domain name relates, the Panel considers that the Respondent was using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks as to the source, sponsorship or endorsement of the website (Annex 11 of the Complaint).
Moreover, the use of a well-known trademark for a web portal providing sponsored links is a classic method to generate financial gain via the pay-per-click or click-through device, whereby the operators of other websites pay a commission to the owner of the domain name for traffic redirected to them.
Thus, the Panel finds that the disputed domain name was registered and used in bad faith, so that the third element of paragraph 4(a) of the Policy is met. 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.
Daniel Kraus
Sole Panelist
Date: December 13, 2012
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