Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Sean Li of Markham, Canada. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2012. On December 13, 2012, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed Domain Name. On December 17, 2012, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. A copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules, was sent to Respondent on December 14, 2012 by e-mail to the address as stated in the Registrar’s WhoIs database.
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 Respondent of the Complaint, and the proceedings commenced on December 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2013. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2013.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on January 21, 2013. The Panel finds that it was properly constituted. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
An individual named Landy sent an e-mail to the Center on February 1, 2013, and declared to have received notice of the Complaint by DHL on January 30, 2013. The mail of DHL had only arrived on January 24, 2013. Landy also conveyed to have called the Center and left a message on January 31, 2013, but had not been able to get in touch with the Center. In any case, Landy further informed the Center that he had no intention to keep the Domain Name and asked for the transmission of a “request to transfer” the Domain Name. 4. Factual Background
Complainant has registered the trademark LEGO (the “LEGO Trademark”) around the world in connection with a range of toy and related goods. Complainant has subsidiaries and branches around the world, and LEGO products are sold in more than 130 countries including Canada, where Respondent is located.
Complainant owns the domain name (registered on August 22, 1995). Furthermore, Complainant is the owner of more than 1000 domain names containing the term “LEGO”. Its vast portfolio of domain names is listed in 46 pages of Annex 8 of the Complaint.
The Domain Name was registered on June 19, 2012. 5. Parties’ Contentions A. Complainant
Complainant contends (in accordance with paragraph 4(a) of the Policy) that the disputed Domain Name is confusingly similar with the LEGO Trademark in which it has rights; that Respondent has no rights or legitimate interests in the disputed Domain Name; and that Respondent registered and uses the disputed Domain Name in bad faith.
Complainant states that the trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. For instance, in a list of the official Top 500 Consumer Super brands for 2012, provided by Super brands UK, LEGO appears as number 31 among the most famous trademarks and brands in the world. The LEGO group has expanded use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO group also maintains an extensive website under the domain name .
Complainant explains that the mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered to be significant. According to the provisions of Article 6 bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Articles 16.2 and 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the status of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the mark or a confusingly similar denomination in connection with any products or services, regardless of the list of the products and services for which the trademark is registered. Thus, the legal protection for the LEGO mark goes far beyond toys and goods similar to toys.
Complainant’s licensees are authorized to exploit Complainant’s intellectual property rights, including its trademark rights, in Canada and elsewhere. It is the strict policy of Complainant that all domain names containing the word “LEGO” must be owned by Complainant.
(i) Identical or confusingly similar to a trademark in which Complainant has rights
Complainant contends that the dominant part of the Domain Name comprises the word LEGO, which is identical to the registered trademark LEGO, which has been registered by Complainant in many trademarks and domain names in numerous countries around the world.
Complainant urges that the Domain Name is confusingly similar to Complainant’s world famous LEGO trademark. The fame of the trademark has been confirmed in numerous previous UDRP decisions. The addition of the suffix “green” is not relevant and will not have any impact on the overall impression of the dominant part of the Domain Name, LEGO, instantly recognizable as a world famous trademark. The addition of the generic top-level domain (gTLD) “.org” does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine the confusing similarity between the LEGO trademark and the Domain Name.
Anyone who sees the Domain Name is bound to mistake it for a name related to Complainant. The likelihood of confusion includes an obvious association with the trademark of Complainant. With reference to the reputation of the trademark LEGO there is a considerable risk that the trade public will perceive Respondent’s Domain Name either as a domain name owned by Complainant or that there is some kind of commercial relation with Complainant. The trademark also risks being tarnished by being connected to a website. By using the trademark as a dominant part of the Domain Name, Respondent exploits the goodwill and the image of the LEGO trademark, which may result in dilution and other damage for Complainant’s trademark. Persons seeing the Domain Name at issue, even without being aware of the content, are likely to think that the Domain Name is in some way connected to Complainant, (“initial interest confusion”).
(ii) No rights or legitimate interests in respect of the Domain Name
Complainant states it has not found that Respondent has any registered trademarks or trade names corresponding to the Domain Name. Complainant has also not found anything that would suggest that Respondent has been using the term LEGO in any other way that would give Respondent rights or legitimate interests in the Domain Name. Consequently, Respondent may not claim any rights established by common usage.
It is also clear that no license or authorization of any kind has been given by Complainant to Respondent to use the trademark LEGO. Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant.
Complainant states that it is highly unlikely that Respondent would not have known of Complainant’s legal rights in the mark LEGO at the time of the registration. It is rather obvious that the fame of the trademark that has motivated Respondent to register the Domain Name. This, among other facts, proves that Respondent’s interests cannot have been legitimate.
Complainant asserts that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead, Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic income through a parked pay-per-click website. By this, Respondent is then using the LEGO trademark and misleading Internet users to commercial websites and consequently, Respondent is tarnishing the trademark LEGO. No evidence has been found that Respondent uses the name as a company name or has any other legal right in the name LEGO. Respondent is trying to sponge off the Complainant’s world famous trademark. In Drexel University v. David Brouda,WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.”
Referring to the above mentioned, Respondent has no rights or legitimate interests in respect of the Domain Name.
(iii) The Domain Name was registered and used in bad faith
As noted above, Complainant states that in respect of toys the trademark LEGO has the status of a well-known mark with a substantial and widespread reputation throughout the world. The number of third party domain name registrations comprising the trade mark LEGO in combination with other words has skyrocketed the last years (as an indication, see e.g. Lego Juris A/S v. Hu Liang/DolegoWIPO Case No. D2009-0848, LEGO Juris A/S v. Whois Privacy Protection Service, Inc. /Stop2Stop, G VWIPO Case No.D2009-0784, LEGO Juris A/S v. Private, Registration/ Dohe DotWIPO Case No. D2009-0753, LEGO Juris A/S v. EcomMutualWIPO Case No. D2009-0685). The considerable value and goodwill of the mark LEGO is most likely a large contribution to this and what made Respondent register the Domain Name at issue.
Complainant first tried to contact Respondent on August 27, 2012, through a cease and desist letter sent by e-mail. In the letter Complainant advised Respondent that the unauthorized use of the LEGO trademark in the Domain Name violated Complainant’s rights. Complainant requested a voluntary transfer of the Domain Name and offered compensation for the expenses of registration and renewal fees not exceeding out of pocket expenses. Despite a reminder sent on December 3, 2012, no reply was received. Since the efforts of trying to solve the matter amicably were unsuccessful, Complainant chose to file a complaint according to the UDRP policy. It has been mentioned in earlier UDRP decisions that the failure of a respondent to respond to a cease and desist letter, or a similar attempt of contact, has been considered relevant in a finding of bad faith (see e.g. News Group Newspapers Limited and News Network Limited v. Momma med Ia,WIPO Case No. D2000-1623; Nike Inc. v. Azumano Travel,WIPO Case No. D2000-1598 and America Online Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460).
The Domain Name is currently connected to a parked pay-per-click website displaying links to other property websites. Consequently, Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant’s mark. Whether or not Respondent has influenced what links should be included on the site is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not Respondent is actually getting revenue from the page himself. The circumstances of Villeroy&Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912 apply in this case as well.
To summarize, LEGO is a famous trademark worldwide. It is highly unlikely that Respondent was unaware of the rights Complainant has in the trademark and the value of said trademark at the time of the registration. There is no connection between Respondent and Complainant. By using the Domain Name Respondent is not making a legitimate noncommercial or fair use but is misleadingly diverting consumers for its own commercial gain. Consequently, Respondent should be considered to have registered and to be using the Domain Name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions within the time period established by the Rules and is in default. However, on February 1, 2013, an individual named Landy sent an e-mail and informed the Center that no dispute was needed since he was prepared to release the Domain Name (and asked for transmission of a “request to transfer” the Domain Name. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
One fundamental requirement of due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules, and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings and that the failure of Respondent to furnish a Response to the Complaint within the time period established by the Rules is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center complied with its obligations under Rules, paragraph 2(a).
In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate”. Furthermore, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Under paragraph 17(a) of the Rules, the Panel shall terminate the administrative proceeding, if the Parties agree on a settlement. According to 17(b) of the Rules, the Panel shall terminate the administrative proceeding, if, before the Panel’s decision is made, it becomes unnecessary or impossible to continue proceeding for any reason, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel. B. Respondent's Name and Consent to Transfer
Before addressing the merits of this case, two points need to be addressed: What is the name of Respondent and whether or not it is necessary in light of the expressed consent to transfer of the Domain Name that the Panel should proceed to a decision.
Complainant based on Annex 12 to the Complaint alleges that Respondent may be contacted under the e-mail address “[…]@”. The Panel finds that there is at least a high likelihood that it is Respondent who is behind the sender of the email of February 1, 2013. It would be too much of a coincidence that Complainant refers to an address of Respondent at “[…] @” and, albeit too late, an individual different from Respondent with the name Landy refers to the service of the Complaint. The Panel therefore takes the e-mail of February 1, 2013, as additional evidence that the Complaint was served upon the right person. Because no Response was filed in due time there is no need to decide whether the true name of Respondent is the name appearing in the Whois Record or the name given in the e-mail of February 1, 2013. The Panel finds the information in the Whois Record to be more reliable and therefore decides to proceed with that name.
The panel in Bharat Sanchar Nigam Limited (BNSL) v. Domain Hostmaster,WIPO Case No. D2007-1800 reviews the position as follows:
“As analyzed by the Panel in The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132, panels, when faced with a “unilateral consent to transfer,” have taken three different approaches. Some panels have granted the relief requested on the basis of Respondent's consent without a review and analysis of the facts supporting the claim. Williams Sonoma, Inc. v. EZ Port,WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri,WIPO Case No. D2000-0195. Others have held that the consent to transfer is effectively a concession that the three elements of the Policy have been satisfied, and ordered transfer on this basis. Qosina Corporation v. Qosmedix Group,WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB,WIPO Case No. D2000-1398. Still other panels have proceeded to analyze whether the evidence submitted satisfies the three elements of the Policy. Société Française du Radiotéléphone-SFR v. Karen,WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co,WIPO Case No. D2003-0745”.
How panels have approached the issue depended in most cases on the circumstances under which the respondent came to acquire the domain name in issue and how the respondent was using it. If there was a reason to suspect the respondent's motives and/or a reason to ensure that the respondent's bad faith conduct is not swept under the carpet, some panels felt it appropriate to proceed to a decision (President and Fellows of Harvard College v. Texas International Property Associates, NA NA,WIPO Case No. D2008-0597).
In the present case, an individual claiming to have received notice of the Complaint by courier – after expiry of the time period established under the Rules – offered to transfer the Domain Name voluntarily. However, this person did not rebut Complainant’s allegations contained in the Complaint. For the reasons set forth above the Panel thinks that there is a high likelihood that the consent stems from Respondent. Moreover, since the Domain Name is connected to a parked pay-per-click website, the Panel finds that there is reason to suspect Respondent’s motives in regard to the Domain Name.
Therefore, the Panel elects to follow the reasoning of those panels which found it appropriate to proceed to a decision in accordance of the provisions set forth under the Rules.
Having reviewed these decisions, the Policy and the Rules, the Panel is of the view that it is not open to him to order transfer without consideration of the merits.
Paragraph 10 of the Rules sets out the General Powers of the Panel as follows:
“(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.”
Paragraph 15(a) of the Rules provides that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy, having set out the three elements of a compliant complaint concludes:
“In the administrative proceeding, the complainant must prove that each of these three elements is present.”
Taking those provisions together, the Panel believes that in this case it must satisfy itself that those three elements are in fact present.
Additionally, the Panel agrees with those panelists who have taken the view that once a complainant has invoked the Policy and paid the fee, it is entitled to have to benefit of a decision on the merits of the case (Sanofi-aventis v. Standard Tactics LLC,WIPO Case No. D2007-1909; Davis + Henderson, Limited Partnership v. Whois Privacy Protection Service, Inc./Demand Domains Inc.,WIPO Case No. D2008-1162).
Finally, proceeding to a proper consideration of the three elements of paragraph 4(a) of the Policy reduces the risk of injustice (e.g., the transfer of a domain name to a complainant with no relevant trade mark rights). C. Identical or Confusingly Similar
Complainant contends that it has rights in the LEGO Trademark and that the Domain Name is confusingly similar thereto.
In particular, Complainant contends that the LEGO Trademark is famous, being “…among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials”. Indeed, the LEGO trademark and brand have been recognized as being famous. For instance, a list of the official top 500 Superbrands for 2012, provided by Superbrands UK, showing LEGO as number 31 of the most famous trademarks and brands in the world.
The Panel finds that Complainant has established rights in the LEGO trademark, just as previous UDRP panels have found that Complainant has established rights in this mark and that it is distinctive and well known. The fame of the trademark has been confirmed in numerous previous UDRP decisions: LEGO Juris A/S v. Rampe Purda,WIPO Case No. 2010-0840 (“LEGO is clearly a well-known mark”); LEGO Juris A/S v. Domain Administrator,WIPO Case No. 2010-1260 (“In the present case, the disputed domain names incorporate the Complainant’s well-known registered trademark LEGO”); and LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680 (“[…]LEGO is a mark enjoying high reputation as construction toys popular with children”). Moreover, the Panel finds that the Domain Name is confusingly similar to Complainant’s trademark, incorporating Complainant’s mark in its entirety while adding only the word “green”. The suffix “green” does not have enough impact on the overall impression of the dominant part of the Domain Name, LEGO, to lead away from confusing similarity. Due to the reputation of the trademark LEGO there is a considerable risk that the trade public will perceive Respondent’s Domain Name either as a domain name owned by Complainant or that there is some kind of commercial relation with Complainant.
Because the Domain Name is confusingly similar to the LEGO trademark of Complainant, the Panel considers that Complainant has satisfied paragraph 4(a)(i) of the Policy. D. Rights or Legitimate Interests
The Panel finds that Complainant provided powerful prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Complainant has alleged that Respondent is not commonly known by the Domain Name, nor made legitimate noncommercial or fair use of it. The Panel observes that Respondent is not affiliated or related to Complainant in any way, nor from the available record is Respondent generally known by the Domain Name or authorized by Complainant to use Complainant’s trademarks. Moreover, the evidence shows that the Domain Name is linked to a website displaying links to other property websites. In this case this use of the Domain Name, which is confusingly similar to Complainant’s well-known mark, does not provide a legitimate interest in it under the Policy.
Respondent has not made any effort in the proceedings to demonstrate rights or legitimate interests. In the absence of any plausible explanation, the addition of the mark LEGO to the word “green” appears to play deliberately on the Complainant’s trademark.
For all these reasons, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Name under paragraph 4(a)(ii) of the Policy. E. Registered and Used in Bad Faith
Regarding the registration and the use of the Domain Name in bad faith according to paragraph 4(a)(iii) of the Policy, the Panel considers the following:
Under paragraph 4(b)(iv) of the Policy it shall be considered evidence of registration and use in bad faith, when, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark.
The website is connected to a parked pay-per-click website. The Panel therefore is confident that in this case Respondent’s registration of the Domain Name was done with a view to illegitimately taking advantage thereof and Respondent’s intention was to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s LEGO mark. Based on the evidence submitted by the Complainant, the Panel finds that the Domain Name was registered and is being used in bad faith.
In the absence of evidence to the contrary, the Panel is persuaded that Respondent knew of, or should have known of Complainant’s trademark and services at the time Respondent registered the Domain Name. The fame of Complainant’s mark is doubtless.
As a result, the Panel finds that the Domain Name was registered and is being used by Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled. 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 Domain Name be transferred to Complainant.
Christian Gassauer-Fleissner
Sole Panelist
Date: February 18, 2013
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