The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Domainvault Corp of Toronto, Ontario, Canada, represented by M. Amirzada, Canada. 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 November 28, 2012. On November 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 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 December 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2012. The Response was filed with the Center on December 23, 2012.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 10, 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.
It has been necessary for this Panel to extend the period for issuing a decision in this case to the date indicated under section 7 below. 4. Factual Background
The Complainant is part of the LEGO Group, the maker of construction toys, which has subsidiaries and branches throughout the world. LEGO products are sold in more than 130 countries.
The Complainant is the owner of registrations for the trademark LEGO for the territories of numerous jurisdictions around the world, including the trademark LEGO with registration No.1018875, registered on August 26, 1975 in the United States of America for goods in International Class 28 (the “LEGO trademark”).
The disputed domain name was registered on August 9, 2012. 5. Parties’ Contentions A. Complainant
The Complainant contends that after decades of extensive use and advertising the LEGO trademark is now among the best known trademarks in the world. The LEGO trademark has a substantial inherent and acquired distinctiveness, and was listed as number 31 in the list of the most famous trademarks and brands in the world in the official Top 500 Superbrands for 2012, prepared by Superbrands UK. According to the provisions of Article 6bis of the Paris Convention for Protection of Industrial Property, confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the same trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO goes beyond toys and goods similar to toys.
According to the Complainant, the disputed domain name is confusingly similar to the LEGO trademark of the Complainant. The dominant part of the disputed domain name comprises the word ”lego”, which is identical to the LEGO trademark. The addition of the element “idea” is not relevant and will have no impact on the overall impression of the dominant part of the domain name, which is instantly recognizable as the Complainant’s LEGO trademark. The addition of the “.com” top level domain does not have any impact on the overall impression of the dominant portion of the disputed domain name and does not eliminate the confusing similarity between the LEGO trademark and the disputed domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent has no registered trademarks or trade names corresponding to the disputed domain name, and is not using it in any other way that would give him any rights in it. The Respondent has not received any license or authorization by the Complainant to use the LEGO trademark, and the parties have never had a business relationship with each other. The Complainant further submits that it is highly unlikely that the Respondent would not have known of the Complainant’s LEGO trademark at the time of the registration of the disputed domain name, and consequently it was the fame of this trademark that motivated the Respondent to register it. As stated in Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.,WIPO Case No. D2001-1314, "… given the notoriety of the Complainant's Deutsche Bank Mark, any use which the Respondent would make of any domain name, as here, that incorporated the Complainant's Deutsche Bank Mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the Complainant has long held in its mark". The Complainant submits 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 containing pay-per-click links. By doing this, the Respondent is misleading Internet users to third party commercial Websites and tarnishing the LEGO trademark.
According to the Complainant, the disputed domain name was registered and is being used in bad faith. Given the status of the LEGO trademark as a well-known and reputed trademark with a substantial and widespread reputation throughout the world, it is highly unlikely that the Respondent was not aware of the rights of the Complainant in this trademark and of its value at the time of the registration of the disputed domain name. By using the disputed domain name the Respondent is not making a legitimate non-commercial or fair use, but is misleadingly diverting consumers for his own commercial gain. The Website associated to the disputed domain name contains pay-per-click advertising links. Whether or not the Respondent has influenced what links should be included on the Website is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not the Respondent is itself actually getting revenue from the Website. Paragraph 4(b)(iv) of the Policy requires the Respondent to intend to attract Internet users 'for commercial gain', but this gain does not need to be derived by the Respondent itself. The Respondent cannot infringe the Complainant's rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct because the Respondent has at all times been in contractual control of the content of the Website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page. B. Respondent
The Respondent submits that it is a company incorporated in the Province of Ontario, Canada. Since registration of the disputed domain name the Respondent has not yet taken any steps for commercializing it and is not using it for commercial purposes. The Respondent is in the process of establishing a commercial business using the disputed domain name as its corporate Website and is performing a variety of due diligence measures prior to launching its Website including but not limited to market research, raising capital, and advertising. The Respondent does not intend to use the disputed domain name for any purpose within the scope of the Complainant’s business. Without limiting the possible uses of the domain name as a business idea, it is the Respondents intent to use the disputed domain name in relation to a travel Website with “legoidea” being pronounced “lego”, ”le” being the French word for “the”.
The Respondent admits that while it is aware of the Complainant's registered trademark LEGO, it is in no way attempting to commercially exploit the goodwill of the Complainant by confusing the public that it is associated with the Complainant's registered trademark. The Complainant may have the right to prevent the use of its trademark in connection with any product or service, but it must demonstrate that the domain name is identical or confusingly similar in the context of the industry or service the trademark is associated with. In the present case, the disputed domain name is being used in relation to an industry well outside the scope of the Complainant's registered trademark, and it is premature for the Complainant to bring this Complaint without knowing the details of the Respondent's intended use. Thus, the Respondent asserts that the Complainant is clearly acting as an overzealous guardian of its registered trademark by attempting to monopolize the use of the word “lego” in any form and in connection with any other word, without regard for very important contextual factors. According to the Respondent, the Complainant’s position that the goodwill and distinctiveness of its trademark encompasses all products, industries and services has not been adopted by WIPO and is not supported in Canadian Law.
The Respondent agrees that the Complainant has a registered trademark in the word ”lego”, but alleges that the Complainant does not however have any rights in the entirety of the disputed domain name, as its trademark is in the word “lego” containing capital letters. Anything other than the exact replication of LEGO cannot be regarded as identical to the trademark. Therefore, the Complainant cannot claim that the disputed domain name is identical to its trademark.
The Respondent submits that the Complainant asserts that its trademark LEGO is world famous and that any use of the word “lego”, whether in conjunction with a suffix or prefix, and regardless of the industry the word is being associated, is by default confusingly similar. However, in the Respondent’s view the goodwill and inherent distinctiveness of a trademark are inextricably linked to the type of industry, service or product associated with the subject trademark. For a domain name to be confusingly similar to a registered trademark, it must be within the sphere of the industry or service in which the trademark is associated with or at the very least, the domain name must give the general public the impression it is associated with the trademark. There is nothing in the disputed domain name to suggest that it is associated with construction toys popular with children or anything related to construction or toys in general. The Complainant argues that anyone is bound to mistake the disputed domain name for a name related to the Complainant without providing any evidence to support this allegation. Without anything more than the words “”, any presumptions of the words must be based on a plain reading. The plain reading of the disputed domain name shows no association with any products or services that are remotely related to the goodwill of the Complainant. The Respondent intends to use the domain for the purpose of its business in the travel industry. The term “lego” will be advertised as “le go” with the word “le” being the French translation of the English word “the”. When considering the use of the word “lego” in this way it becomes clear that the disputed domain name will not be confusingly similar to the Complainant's trademark.
According to the Respondent, it makes commercial sense to secure a domain name prior to actually having a business idea put into operation, because otherwise an entrepreneur would put himself at risk of being unable to purchase a domain name identical to its business name. The Respondent intends to use the disputed domain name in relation to its business idea of providing online travel destinations in Europe and elsewhere. A thought out, developed and reasonable business idea should be viewed as a legitimate interest in respect of the use of a domain name and the onus should be on the Complainant to convincingly show evidence to the contrary, which onus the Complainant has failed to meet.
The Respondent denies the Complainant's allegation that it ought to have obtained a license or authorization from the Complainant to purchase and use the disputed domain name. The Respondent is not attempting to sponge off the Complainant or use any of its goodwill in its registered trademark to assist with its business and the Complainant has not been able to show how the registered trademark LEGO would be of any assistance to the Respondent's business idea of a travel Website. The Complainant has been unable to do so because its Complaint was premature and peremptory, and because the goodwill of the Complainant's LEGO trademark does not transcend every industry or service.
The Respondent denies the Complainant's allegation that the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a parked pay per click Website is untrue. The Respondent does not profit off the Website and is willing to take any and all steps to ensure that no party is profiting off the Website. The disputed domain name was not registered or acquired primarily for the selling, renting, or otherwise transferring the domain name registration to the Complainant, as the owner of the LEGO trademark. It notes that the Complainant argues that notwithstanding that the Respondent may not in fact personally profit from the pay-per-click site it is still responsible for a third party profiting off the pay-per-click site. During its e-mail correspondence with the Respondent the Complainant did not once raise this concern, nor did it inquire as to the intended purpose of the Respondent's use of the domain name. The Complainant only desired to overzealously safeguard its trademark and assert a non-existent right over any and all uses of the word “lego”. While it is true that the Complainant did offer to pay for the transfer of the domain name, the Respondent refused the offer and at no point did it suggest that the Complainant purchases the disputed domain name at a profit for the Respondent. If the Complainant's allegation that the Respondent is using the domain name in bad faith is true, the Respondent would have attempted to sell the domain name at a profit, which has not been the case.
The Respondent also submits that the disputed domain name was not registered in order to prevent the Complainant from reflecting its registered trademark in a corresponding domain name, and, the Respondent has not engaged in a pattern of such conduct. The Complainant has not indicated how in fact the domain name relates to the goodwill inherent in its trademark, and has not indicated how it could potentially be used in relation to its products or services. Lastly, the Complainant and the Respondent are not competitors and the disputed domain name was not registered by the Respondent primarily to disrupt the Complainant's business. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, each of the following three elements must be satisfied:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy further states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
The Panel has reviewed the evidence submitted by the Complainant and is satisfied that it has rights in the LEGO trademark.
The disputed domain name contains two elements – “lego” and “idea”. The first of them coincides entirely the Complainant’s LEGO trademark, which was found to be distinctive and well-known globally in a number of previous decisions under the Policy (see, e.g., LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator,WIPO Case No. D2010-1260; and LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680). The second element - “idea” - is generic and non-distinctive, so the attention of the Internet users will be drawn mainly to the “lego” element of the disputed domain name, which they are likely to identify as the LEGO trademark. In the Panel’s view, the argument of the Respondent that the disputed domain name was not confusingly similar to the LEGO trademark because the element “lego” was actually a combination between “le” and “go”, where the word “le” represented the French translation of the English word “the”, appears artificial and unconvincing. The Respondent has provided no reasons why Internet users would regard the element “lego” as a combination between two simple and non-distinctive words that do not usually go together and that are in two different languages, rather than associating it to the LEGO trademark. The other argument of the Respondent - that the disputed domain name is not confusingly similar to the LEGO trademark because the Respondent has used the former for services for which the LEGO trademark is not registered, is not accepted by the Panel either. When an Internet user gets his or her first impression of a domain name, he or she does not have any information about its use, and any associations that the Internet user may make will only be based on what is apparent from the domain name itself, and the Panel’s conclusions as to what these associations are likely to be related with are mentioned above in this paragraph.
As to the gTLD top level domain suffix “.com”, it is widely acknowledged that in appropriate circumstances it can be ignored for the purpose of assessing identity or confusing similarity under the Policy, paragraph 4(a)(i).
On the basis of the above, the Panel is of the opinion that the impression of the Internet users will be that the disputed domain name is associated to the Complainant. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark. B. Rights or Legitimate Interests
The Policy requires the Complainant to make at least a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent has to provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish by a preponderance of the evidence that the Respondent lacks rights or legitimate interests in the disputed domain name (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0.”)).
The Complainant has asserted that no permission to use LEGO trademark in the disputed domain name has been granted to the Respondent. The Complainant has also pointed out that the Respondent is not commonly known by the disputed domain name and that the Respondent has intentionally chosen the disputed domain name in order to generate traffic to its Website containing sponsored links and is thus misleading Internet users to third party commercial Websites. Thus, the Complainant has made a prima facie case showing the Respondent has no rights or legitimate interests in the disputed domain name.
In this proceeding, the Respondent has not submitted any evidence of rights or legitimate interests in the disputed domain name. As discussed above, the Respondent’s allegation that the disputed domain name consists of a combination between the French word “le” and the English word “go” is not convincing, and in the Panel’s view cannot establish any rights or legitimate interests of the Respondent in the disputed domain name. Indeed, as the Respondent states, a well prepared, developed and reasonable business idea may establish a legitimate interest in respect of of a domain name. However, the allegation of the Respondent that it plans to commence the use of the disputed domain name in connection with travel services is not substantiated by any evidence whatsoever for the preparation for its use such as business plans, advertisements, a dedicated Website, etc., or by any explanation by the Respondent why it has chosen the disputed domain name for such services. In this Panel’s view, the Respondent has not shown to have made “demonstrable preparations” to such use. At the same time, the case file contains evidence that the Website associated to the disputed domain name contains pay-per-click links to commercial Websites of third parties, which is not denied by the Respondent. In this regard, the Panel accepts the argument of the Complainant that the Respondent has contractual control over the Website at the disputed domain name and its content, which means that the Respondent approves or at least does not object to the existence of the above mentioned pay-per-click links.
The undisputed wide popularity of the LEGO trademark and the Respondent’s own confession confirm that it was aware of the trademark and of its goodwill when it registered the disputed domain name. In the absence of any evidence supporting the Respondent’s allegations for good faith preparations for use of the disputed domain name, the Panel is prepared to accept the Complainant’s position that the use of the disputed domain name for a Website containing pay-per-click links that mention “lego” and forward Internet users to third party Websites is more likely than not to have been made with an intention to derive certain commercial advantage by the exploitation of the goodwill of the LEGO trademark, and it is undisputed that the Complainant has not given its consent for this use. The Panel does not regard such use of the disputed domain name as a legitimate noncommercial or fair use which may confer any rights in favor of the Respondent, regardless of whether this use brings or may bring a financial benefit not to the Respondent, but to someone else.
In the light of what is stated above, the Panel finds that the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name has not been rebutted by the Respondent. Therefore, the Panel finds that the Complainant has established the second element of Paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 your Website or location or of a product or service on the holder’s Website or location.
In the present case, the disputed domain name is confusingly similar to the Complainant’s well-known LEGO trademark, and Internet users may mistakenly believe that it is somehow connected to or endorsed by the Complainant. The Respondent has not been found to have any rights or legitimate interests in the disputed domain name or to have obtained the permission of the Complainant to register and use it. It is not disputed that the Website associated to the disputed domain name contains pay-per-click links that mention LEGO and direct Internet users to third party Websites. It is also undisputed that at the time of the registration of the disputed domain name the Respondent had been aware of the Complainant and of its goodwill. In these circumstances, the registration and use of the disputed domain name are more likely than not to have been made in an attempt to achieve a commercial gain through the exploitation of the fame of the LEGO trademark. The Respondent’s simple denial of the above, without submission of any contrary evidence of any actual or contemplated good faith use of the disputed domain name, is insufficient for the reaching of a different conclusion. The Respondent’s allegation that the disputed domain name does not concern the business of the Complainant and consequently does not infringe the LEGO trademark is not convincing and cannot be regarded as an argument in favor of the Respondent either, because the disputed domain name is confusingly similar to the LEGO trademark, and because this allegation is contradicted by the content of the Website associated to the disputed domain name, which contains pay-per-click links to third parties some of which offer LEGO products. As discussed under the issue of rights and legitimate interests above, the Respondent has contractual control over the Website at the disputed domain name and its content. As a consequence, the Respondent bears the responsibility for the existence of the above mentioned pay-per-click links, regardless of whether they bring a financial gain to it or to a third party.
Taking all the above into account, the Panel is prepared to accept that Respondent has registered and is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to the Website linked to the disputed domain name by creating a likelihood of confusion with Complainant’s LEGO trademark as to the source, sponsorship, affiliation, or endorsement of this Website as per paragraph 4(b)(iv). 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.
Assen Alexiev
Sole Panelist
Date: February 1, 2013
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