The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is El-abda3 Company of Cairo, Egypt. 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 December 17, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2013, 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 January 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2013.
The Center appointed Richard Hill as the sole panelist in this matter on February 8, 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 Complainant has rights in the registered trademark LEGO. This mark is registered in many countries around the world, including Egypt. The mark is famous.
The disputed domain name was registered on October 28, 2012, well after the Complainant registered its mark.
The Complainant has not licensed or otherwise authorized the Respondent to use its mark.
The Respondent is using the disputed domain name to resolve to a web site that contains sponsored advertising links to a variety of products, including products that compete with the Complainant’s products. 5. Parties’ Contentions A. Complainant
The Complainant states that it is the owner of LEGO, and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products. The Complainant’s revenue for 2009, was more than USD 2,8 billion; it has subsidiaries and branches throughout the world, and its products are sold in more than 130 countries, including in Egypt.
The Complainant alleges that its trademark LEGO is among the best-known trademarks in the world and has been recognized as being famous. The Complainant owns numerous registered trademarks for its mark, including in Egypt and it operates numerous web sites at domain names that include its trademark LEGO.
The Complainant states that the disputed domain name is confusingly similar to its mark, because it includes the Complainant’s mark and merely adds a hyphen and the common word “labs.
The Complainant states that it has not licensed or otherwise authorized the Respondent to use its mark. The Respondent is not commonly known by the mark or by the disputed domain name.
According to the Complainant, the Respondent is using the disputed domain name to resolve to a web site that contains sponsored advertising links for various products, including products that compete with the Complainant’s products. Such use is not a bona fide use under the Policy. On the contrary, it is a clear attempt to use the Complainant’s famous mark to misleadingly direct Internet users to his commercial web sites for his own commercial gain. This tarnishes the Complainant’s mark and constitutes bad faith registration and use in the sense of the Policy. The Complainant cites UDRP precedents to support its position.
The Complainant states that it is rather obvious that it is the fame of the Complainant’s mark that motivated the Respondent to register the disputed domain name.
The Complainant states that, in response to a letter, the Respondent offered to sell the disputed domain name for USD 1000. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has trademark rights in the term LEGO. It is clear to the Panel that the disputed domain name, consisting of the Complainant’s trademark with the addition of a hyphen and the generic term “labs”, is confusingly similar to the Complainant’s trademark. See for example F. Hoffmann-La Roche AG v. Bobik Marley,WIPO Case No. D2007-0694 (“confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant’s mark and only adds a generic word along with, in this case, the number ‘1’”). B. Rights or Legitimate Interests
The Respondent is using the disputed domain name to point to a website that offers products that compete with the Complainant’s products.
The Panel finds that the Respondent is redirecting Internet users interested in the Complainant’s products and services to its own website for commercial gain and that such use does not fall within the parameters of a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. See for example F. Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814 (“Respondent’s use of the disputed domain name to redirect Internet users to an on-line pharmacy demonstrates Respondent’s lack of a legitimate interest in the domain name”); see also Pfizer Inc v. Juan Gonzales,WIPO Case No. D2004-0589 (“no good faith can be assumed in Respondent’s conduct, in view of the fact that the Domain Name is confusingly similar with Complainant’s trademark and is used in connection with the promotion and sale of competing products”). C. Registered and Used in Bad Faith
It is clear to the Panel that the Respondent was aware of the Complainant’s marks when it registered and started using the disputed domain name, because the disputed domain name contains the Complainant’s famous mark LEGO, and the sponsored links at the website are referring to products competing with the Complainant’s products.
The Respondent (who did not reply to the Complainant’s contentions) has not presented any plausible explanation for his use of the Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that the Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, in the Panel’s view, the Respondent’s actual use of the disputed domain name (as noted above) is clearly not bona fide because the Respondent operates a website that promotes products that compete with the Complainant’s products. This indicates that the Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and Complainant’s marks in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See for example The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057 (“The record further reflects the Respondent's use of the disputed Domain Names to attract Internet users to the Respondent's website in order to generate pay-per-click advertising revenues. The Panel concludes for the foregoing reasons that the Respondent registered and is using the disputed Domain Names in bad faith.”); see also Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946 (“It follows from what has been said about legitimacy that the Panel is satisfied that Respondent is using the disputed Domain Names intentionally to attempt to attract, for commercial gain, Internauts to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of 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.
Richard Hill
Sole Panelist
Date: February 17, 2013
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