The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Frederik Soleimani of New York, New York, United States of America. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with B LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2012. On October 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 29, 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 November 5, 2012. On November 5, 2012, the Center received a fax communication from the Respondent in which the Respondent offered to settle the case at a price of USD 982. On November 5, 2012, the Center transmitted a possible settlement email to both parties. On November 9, 2012, the Center received an email communication from the Complainant in which the Complainant refused to settle. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2012.
The Center appointed Daniel Kraus 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 states that it has used the LEGO trademark since at least 1953 in connection with construction toys, that the LEGO trademark is among the best-known trademarks in the world, and that it has been identified by Superbrands United Kingdom (“UK”) as the eighth most-famous trademark in the world. The Complainant further states that its products are sold in more than 130 countries. The Complainant has provided a list of trademark registrations that it owns worldwide for LEGO, filed e.g. in the United States of America. These trademarks are referred to collectively hereafter as the “LEGO Trademark”.
The Disputed Domain Name was registered on August 14, 2012, and is redirected to a pay-per-click parking website containing in particular links to websites where LEGO products are offered. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Disputed Domain Name is confusingly similar to the LEGO Trademark because the Disputed Domain Name contains the LEGO Trademark in its entirety; the addition of the suffix “s” is not relevant and will not have any impact on the overall impression of the dominant part of the Disputed Domain Name.
Further, according to the Complainant, the Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name because no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO; it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name LEGO at the time of the registration; using the Disputed Domain Name to generate traffic to a pay-per-click website from which the Respondent can generate revenue, whether or not it has influenced the links included by the Registrar, and whether or not he effectively gets revenue himself.
Finally, the Complainant argues that the Disputed Domain Name was registered and is being used in bad faith because, by using the Disputed Domain Name in connection with a parked pay-per-click website, the Respondent has been 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 website; again, whether or not the Respondent has effectively obtained revenue itself is not relevant; finally, because LEGO is a famous trademark, it is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by the Complainant, it is apparent that the Complainant has rights in and to the LEGO Trademark. This conclusion is further supported by numerous previous decisions under the Policy regarding the same complainant and trademark, including, just to cite two recent decisions, LEGO Juris A/S v. Colin Heggie,WIPO Case No. D2011-1304, and LEGO Juris A/S v. James Holmes,WIPO Case No. D2012-0490.
As to whether the Disputed Domain Name is identical or confusingly similar to the LEGO Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “legos”), as it is well-established that the generic top-level domain name (i.e., ”.net”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2: “The applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”
The addition of a simple letter, as here a mere “s” which refers to the plural of LEGO, can exacerbate the confusing similarity between the Complainant’s trademark and the Disputed Domain Name and increase the risk of confusion between the Disputed Domain Name and the trademarks.
Here, because the above mentioned letter “s” precisely only refers to the plural of the well-known LEGO trademarked toys, the Panel finds it clearly creates confusing similarity between the Disputed Domain Name and the Complainant’s trademark.
The addition of the letter “s” strengthens the impression that the Disputed Domain Name belongs to, or is affiliated with the Complainant.
Accordingly, the Panel finds that the Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has argued that, inter alia, the Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name because no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the LEGO Trademark and that it is highly unlikely that the Respondent would not have known of the Complainant’s rights in the name LEGO at the time of the registration.
Using the Disputed Domain Name to generate traffic to a pay-per-click parking website with links to products from (broadly speaking) competitors or other websites, thereby diluting or even tarnishing the reputation of the Complainant’s trademark, is not a bona fide offering of goods or services; and the links displayed on the website connected to the Disputed Domain Name should be seen as sponsored links as the Respondent most likely derives income once a visitor clicks on the links.
It has been found by previous panels that under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of the Complainant’s allegations and without any evidence from the Respondent to the contrary, the Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (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. Policy, paragraph 4(b).
In the present case, the Complainant argues that bad faith exists pursuant to Policy, paragraph 4(b)(iv), given that the website used by the Respondent in connection with the Disputed Domain Name has been connected to a pay-per-click parking website. Besides, the offer for transfer made by the Respondent for an amount of USD 982 exceeds out of pocket expenses of registration and transfer.
As was decided by other UDRP panels (in particular in Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,WIPO Case No. D2000-0911), the fact that the respondent chooses to register a well-known mark to which it has no connections or rights indicates that it was in bad faith when registering the disputed domain name. This is also valid in the present case. The Panel also finds that the Respondent’s use of the Disputed Domain Name is an attempt by the Respondent to intentionally attract, for commercial gain, Internet users for the purpose of redirecting the Internet users to specific web pages. The Respondent is using the Disputed Domain Name to create a likelihood of confusion with the Complainant’s LEGO mark and benefit either from the “clicks” on the parked websites, or from a resale of the Disputed Domain Name. Whatever the case may be, the Respondent has not seized the opportunity to rebut the Complainant’s argumentation.
The Panel therefore finds that the Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 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
Dated: December 12, 2012
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