The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Kim Bum LLC of Seoul, Republic of Korea / PrivacyP of Nobby Beach, Australia. 2. The Domain Names and Registrar
The disputed domain names and are registered with RegisterM Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 23, 2012. On November 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 30, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 4, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 11, 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 December 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2013.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on January 9, 2013. 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 Complianant is Lego, the company based in Denmark, a worldwide leader in the field of toys.
The Complainant is is the owner of LEGO, and other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products. The LEGO trademarks predate the domain name registrations by at least 20 years. The Complainant and its licensees (collectively “the LEGO Group”), through their predecessors, commenced use of the LEGO mark in the U.S. during 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has remarkably grown: the revenue for the LEGO Group in 2009, was more than USD 2,8 billion. At the end of 2010 the LEGO Group’s global market share rose from 4.8% (at the end of 2009) to approximately 5.9%.
The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries.
The Complainant owns a huge number of trademark registrations all over the word, including in Australia, where the privacy shield provider is located and in the Republic of Korea where the Respondent, Kim Bum, apparently resides.
The Complainant’s trademark LEGO is one of the best-known trademarks in the world: in the official top 500 Superbrands for 2009/10, provided by Superbrands UK, LEGO appears as number 8 in the list of the most famous trademarks and brands in the world.
The Complainant is also the owner of more than 2,400 domain names containing the term LEGO.
The disputed domain name was registered on August 15, 2012; the disputed domain name was registered on August 9, 2012. Both disputed domain names resolve to a parking page displaying sponsored links to other web-sites on which toys and even Lego products are sold. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s world famous trademark LEGO. The fame of the Complainant’s trademark LEGO was confirmed by numerous previous UDRP panel decisions; for example see LEGO Juris A/S v. Rampe Purda,WIPO Case No. 2010-0840; LEGO Juris A/S v. Domain Administrator;WIPO Case No. 2010-1260; LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680; LEGO Juris A/S v. Level 5 Corp.,WIPO Case No. D2008-1692 and LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715.
The addition of the terms “harrypottercheats” and “indianajonescheats” are not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO, instantly recognizable as a world famous trademark. Consequently, the disputed domain names are confusingly similar to the Complainant's LEGO trademark.
Similarly the mere addition of the gTLD “.com” is irrelevant because the generic top level domain is not a distinctive element and is unimportant to determine the confusing similarity between the trademark and the disputed domain names.
The Complainant contends that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain names. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any rights or legitimate interests in the name. Consequently, the Respondent may not claim any rights established by common usage.
The Complainant contends that no license or authorization has been given by the Complainant to the Respondent to use the trademark LEGO and that the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
Furthermore, the Respondent did not demonstrate any use or demonstrable preparation to use the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names direct Internet users to sites displaying sponsored links and such use does not constitute a bona fide offering of goods and services, as stated in several previous UDRP decisions.
The Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith.
The Respondent’s bad faith registration is established by the fact that the Respondent was aware of the existence of the Complainant’s trademark given its status of a well-known and reputed trademark with a substantial and widespread value and goodwill all over the word.
Moreover, the Respondent never replied to the letters sent to it by the Complainant, and as stated in earlier decisions, “the failure of the Respondent to respond to the letter of demand from the Complainant further supports an inference of bad faith”
The Respondent’s bad faith use of the disputed domain names is evidenced by the fact that the disputed domain names are currently connected to websites with sponsored links; consequently, the Respondent is using the disputed domain names 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 its website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the disputed domain names registered by the Respondent are 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 in respect of the disputed domain names; and
(iii) the disputed domain names registered by the Respondent have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain names and are confusingly similar to the Complainant’s LEGO trademark, a clearly well-known mark in which the Complainant has established rights through registration and extensive use.
The disputed domain names incorporate the Complainant’s LEGO trademark in its entirety; the only difference is the mere adjunction of the terms “harrypottercheats” and “indianajonescheats”.
The addition of the above terms is not enough to the Panel to prevent confusing similarity between the disputed domain names and the Complainant’s famous trademark (see America Online Inc. v. Yetech Communication Inc.,WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu,WIPO Case No. D2005-0987)
On the contrary, considering that, two specific Complainant’s products are related to “Harry Potter” and “Indiana Jones” (see annex 14 to the Complaint) the addition of the terms “harrypottercheats” and “indianajonescheats” is likely to enhance the confusion and to lead customers to believe that the disputed domain names are effectively linked to, affiliated with or connected to the Complainant.
The Panel believes that people considering the disputed domain names without awareness of their content may think that they are in some way connected and associated with the Complainant: this situation is known as “initial interest confusion” (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul,WIPO Case No. D2004-0988).
Finally, with regards to the suffix “.com”, as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society,WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@,WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether it is identical or confusingly similar to the Complainant’s mark; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.
There is no doubt to the Panel that the disputed domain names and are confusingly similar to the Complainant’s trademark. Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain name, such as:
(i) use or preparation to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the disputed domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain names.
The Complainant states that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain names or anything that would suggest that the Respondent has been using LEGO in any other way that would give them any rights or legitimate interests in the name. Moreover, no license or authorization has been given by the Complainant to the Respondent to use the trademark LEGO and the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
Furthermore, the use of the disputed domain names can not be considered under the circumstances a bona fide offering of goods or services. As a matter of fact, by registering the disputed domain names the Respondent clearly intended to profit from the use of domain names which are confusingly similar to the Complainant’s well-known trademark, diverting Internet users to websites where pay-per-click links exist and generate income for the Respondent. Indeed, the disputed domain names have been used to list links to different websites, some of which offer products from competitors of the Complainant, and others pertain to the Complainant.
Since the Respondent has registered and is using the disputed domain names with the clear intention to use the Complainant’s marks and name for its own profit, it can be stated that such use does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names.
Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the disputed domain names may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani v. Yoon-Min Yang,WIPO Case No. D2005-0090).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names were registered and are being used in bad faith.
The Complainant’s name, trademark and activity are well-known throughout the world and considering the widespread use and fame of the Complainant’s trademark, in this Panel’s view the Respondent must have been aware of them when it registered the disputed domain names. And indeed, the Respondent’s awareness of the Complainant’s activity and rights may be inferred by the fact that the Respondent registered the disputed domain names incorporating the LEGO trademark in its entirety, with the addition of the terms “harrypottercheats” and “indianajonescheats” that clearly relate to Complainant’s product.
As the Panel has found that the Respondent has no right or legitimate interest in the disputed domain names, in line with other prior UDRP decisions (Banca Sella s.p.a. v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano,WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l.,WIPO Case No. D2002-0395) the Panel believes that, given the circumstance of this case and in the absence of any right or legitimate interest and lacking any contrary evidence by the Respondent, the Respondent’s registration of disputed domain names confusingly similar to the Complainant’s worldwide well-known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates,WIPO Case No. D2007-1412, and Mastercard International Incorporated v. Total Card Inc.,WIPO Case No. D2007-1411).
Concerning the use of the disputed domain names, the Complainant has proven that they resolve to a searchable portal website, offering several commercial links to different websites where information concerning the Complainant’s products as well as those of the Complainant’s competitors are offered. In the Panel’s opinion the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s products and to obtain information about the Complainant’s activity, to another variety of web-sites related to toys and games, by creating a likelihood of confusion with the Complainant’s trademark and business. By exploiting the renown of the Complainant’s trademark, the Respondent diverts Internet users looking for the Complainant’s website and seeks to gain profit out of the disputed domain names by providing sponsored links to several other websites and obtaining revenues from the diverted traffic (besides the decisions mentioned by the Complainant, see also MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios,WIPO Case No. D2008-0325).
Furthermore, in the Panel’s view the use of a proxy registration service to avoid disclosing the name and contact details of the real party owner of the disputed domain names, is also consistent with an inference of bad faith in registering and using the disputed domain names (see Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696 cited by Complainant, and Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov,WIPO Case No. D2004-0311).
Finally, also in the Panel’s view, according to previous UDRP decisions, “the failure of the Respondent to respond to the letter of demand from the Complainant further supports an inference of bad faith” (see Bayerische Motoren Werke AG v. This Domain is For Sale/Joshuathan Investments Inc,WIPO Case No. D2002-0787, cited by the Complainant) and such silence, ongoing cybersquatting, and dilution are further evidence of Respondent’s bad faith (see Compiere Inc. v. James Zhong, WIPO Case No. D2007-0130; Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022; and RRI Financial, Inc. v. Ray Chen,WIPO Case No. D2001-1242).
In light of all the above circumstances, the Panel is satisfied that the third element is met and that the disputed domain names and were registered and are 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 names and be transferred to the Complainant.
Alessandra Ferreri
Sole Panelist
Date: January 23, 2013
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