The Complainant is Lego Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Russell Grodack of Winter Springs, Florida, United States of America. 2. The Domain Name And Registrar
The Domain Name (the “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 January 14, 2013. On January 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 15, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 17, 2013 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 January 17, 2013.
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 January 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2013.
The Center appointed Steven A. Maier as the sole panelist in this matter on February 18, 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 is a limited company incorporated in Denmark and is a manufacturer of construction toys and other products under the brand name and mark LEGO.
The Complainant is the owner of numerous trademark registrations throughout the world for the mark LEGO in International Class 28 and otherwise.
The Respondent registered the Domain Name on October 18, 2012.
The Domain Name has been used for the purposes of a “parking page” providing links to retailers of goods and services including toys and LEGO branded merchandise. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant relies on its trademark registrations for the mark LEGO and provides evidence of several hundred such marks that are registered in jurisdictions throughout the world. The registrations date from as early as 1954 and include, for example, Community Trade Mark number 39800 registered on October 5, 1998 for numerous classes of goods and services including games and playthings in International Class 28, and United States trademark number 1018875 registered on August 26, 1975 for toy building blocks and related products in International Class 28.
The Complainant also claims wide public recognition of the LEGO name and brand throughout the world. It states that it has made and sold goods under that mark since 1953, that it sells products in more than 130 countries throughout the world and that its group revenue in 2009 was in excess of USD 2.8 billion. It states that it owns over 1,000 domain names which include the term “lego” and that the LEGO name and mark enjoy a high degree of recognition throughout the world. It provides evidence that it was the 8th most famous brand in the world according to a survey conducted by Superbrands UK in 2009/10. It submits in the circumstances that the mark LEGO has the status of a “well-known” mark (for the purposes of the TRIPS Agreement 1995 and otherwise) and therefore enjoys protection from the use of confusingly similar marks, including protection that extends beyond the scope of the goods and services for which it is specifically registered.
The Complainant submits that (ignoring the top level domain “.com”) the Domain Name comprises its LEGO mark together with the prefix “geek”, which is irrelevant and can have no impact on the impression given by the dominant and instantly recognizable part of the name, i.e. LEGO. The Domain Name is confusingly similar to the Complainant’s mark and the prefix “geek” does not detract from that similarity.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy).
The Complainant submits that it has never licensed or authorised the Respondent to use its LEGO mark and that the Respondent is not an authorised dealer of the Complainant’s products. Nor has the Complainant found any evidence of any similar trademark registered by the Respondent or any other legitimate use of the LEGO name by the Respondent in the course of trade. The mere fact of registration of the Domain Name does not give rise to any rights or legitimate interests in it.
The Complainant submits that, given the fame of the Complainant’s mark, it is highly unlikely that the Respondent was unaware of it at the date of registration of the Domain Name. On the contrary, the likelihood is that the Respondent was aware of the LEGO mark and was motivated to register the Domain Name precisely because of its fame. In the circumstances, the Respondent is using the Domain Name in order to “sponge” off the Complainant’s trademark. The Respondent is using the Domain Name to create an impression of association with the Complainant and to mislead Internet users into visiting a website which contains sponsored links from which the Respondent derives revenue. This is not a bona fide use of the Domain Name and does not give rise to any rights or legitimate interests in it.
The Complainant submits that the Domain Name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainant relies on the same factual background as in the case of “rights or legitimate interests”.
In the circumstances described, the Complainant alleges that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.
The Complainant also relies on the fact that the “pay-per-click” links that are included on the Respondent’s website include those that refer to the LEGO mark. The Complainant submits that, even if those references are automatically generated, the Respondent is responsible for them whether it failed to disable the links or was willfully blind to them.
The Complainant states that it sent a “cease and desist” letter to the Respondent on November 30, 2012, relating to the Domain Name and another name, but the Respondent did not reply to the letter.
The Complainant requests a transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has failed to reply to the Complaint, it is still necessary for the Complainant to prove its case in respect of each of the above elements. A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of numerous registered trademarks for the name LEGO throughout the world. These include Community and United States trademarks for construction toys and related products in Class 28. The Complainant has also provided evidence of the significant worldwide recognition of the LEGO brand dating back to the 1950s. The Panel finds this sufficient to establish that the Complainant also enjoys significant unregistered rights in the name and mark LEGO in numerous territories worldwide and, further, that the mark LEGO has the status of a “well-known” trademark.
The Domain Name consists of the components “geek” and “lego” in addition to the suffix “.com”, which may be disregarded for the purposes of considering confusing similarity under the first element of paragraph 4(a) of the Policy. The term “geek” is a generic and/or descriptive term and the Panel accepts the Complainant’s contention that its inclusion does not serve to distinguish the Domain Name from the term “lego”, which is the distinctive component of the Domain Name.
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel accepts the Complainant’s evidence that it has never licensed or authorised the Respondent to use its LEGO mark and that the Respondent is not an authorised dealer of the Complainant’s products.
The Respondent has failed to reply to the Complaint and has not therefore provided any evidence of rights or legitimate interests in the Domain Name, whether in accordance with the circumstances mentioned in paragraph 4(c) of the Policy or otherwise. Nor does any other evidence of rights or legitimate interests on the part of the Respondent appear from the material available to the Panel.
On the basis of the evidence submitted by the Complainant, which the Respondent has not contradicted, the Panel finds that the Respondent has used the Domain Name for the purposes of a “parking page” website which provides links to suppliers of various goods and services. It is to be inferred that these links produce revenue for the Respondent on a “pay-per-click” basis. The links include those which contain or refer to the Complainant’s LEGO mark. In these circumstances, the Panel is of the view that the Respondent has used the Domain Name in a manner which falsely suggests an association with the Complainant or its goods unfairly to profit from the Complainant’s goodwill. The use of the Domain Name in this manner does not establish any rights or legitimate interests in the Domain Name on the part of the Respondent.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Panel’s findings in connection with “rights or legitimate interests” are also relevant to the consideration of bad faith.
Under paragraph 4(b) of the Policy, it shall be evidence of registration and use in bad faith if the Complainant can show that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. The Panel finds that the Respondent has done so in the case. The Respondent has offered no explanation for its choice of the Domain Name, nor did it respond to the Complainant’s “cease and desist” letter. The Panel therefore infers from the Respondent’s choice and use of the Domain Name that the Respondent has registered and is using the Domain Name with the intention of unfairly profiting from the Complainant’s goodwill. This conduct constitutes registration and use of the Domain Name in bad faith for the purpose of the Policy.
Accordingly, the Panel finds that the Domain Name was registered and is 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 Domain Name be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: March 4, 2013
Full & Egal Universal Law Academy