The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Administracion, Dominios of Colonia Villa Coyoacan, Distrito Federal, Mexico. 2. The Domain Name & Registrar
The disputed domain name is registered with BigRock Solutions Pvt Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration & Mediation Center (the “Center”) on February 7, 2013. On February 8, 2013, the Center transmitted by email to Acens Technologies S.L.U (“Acens”) a request for registrar verification in connection with the disputed domain name. On February 15, 2013, Acens replied to the Center stating that Acens was not the accredited registrar for the disputed domain name, but BigRock Solutions Ltd (“BigRock”).
After an exchange of email communications between the Center, Acens and BigRock, BigRock confirmed that the Registrar of the disputed domain name was RANK USA INC and that BigRock (the “Registrar”) was acting on behalf of RANK USA INC.
In such communication, the Registrar disclosed registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on March 4, 2013, informing the Complainant of the Registrar and registrant identity and 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 March 12, 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 amendment to the Complaint), and the proceedings commenced on March 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2013. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on April 4, 2013.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on April 16, 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.
In the body of the Complaint, the Complainant invited the former registrant (Airai Holdings) to submit its Response, in Spanish should it so desire, because the case file reveals that correspondence from Acens was in Spanish. However, neither it nor the Respondent has submitted any response and, in the circumstances, it is unnecessary for the Panel to exercise any discretion under the Rules to declare English as the language of the administrative proceedings. The Panel is satisfied that no prejudice has been caused to the Respondent (Prime Image Delaware Inc v. Jungsuk Lee,WIPO Case No. D2008-0992). 4. Factual Background
The following facts and circumstances are to be found in the Complaint and its Annexures and, in the absence of challenge, can be accepted as background.
The Complainant is the owner of LEGO trademark and all other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products.
The Complainant's licencees are authorised to exploit the Complainant's intellectual property rights, including its trademark rights, in Mexico and elsewhere.
Over the years, the business of making and selling LEGO branded toys has grown remarkably.
The revenue for the Lego group in 2009 was more than USD 2,8 billion and the global market share rose from 4.8% at the close of 2009 to approximately 5.9% at the end of 2010.
The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in particular Mexico. Not only does this appear from the schedule of trademarks registered throughout the world but notably the earliest trademark in Denmark was registered with effect from May 1, 1954, that in Mexico was registered on October 18, 1979, and that in Spain on January 11, 1961.
The Complainant is also the owner of more than 2,400 domain names containing the term LEGO and it is the strict policy of the Complainant that all domain names containing the word LEGO should be owned by it.
The LEGO trademark and brand are said to have been recognised as being famous, as appears from the list of the official top 500 super brands for 2012, provided by Super Brands UK, which shows that LEGO is No. 8 of the most famous trademarks and brands in the world. Apart from having built up its business with extensive advertising and promotional materials which prominently depict the LEGO trademark on all products, packaging, displays, advertising and materials, the Complainant has expanded its use of the trademark to computer hardware and software, books, videos and computer-controlled robotic instruction sets. It also maintains an extensive website under the domain name .
The disputed domain name was registered by Airai Holdings with Acens Technologies on December 2, 2012, and registered with the Registrar on January 27, 2013. 5 Parties' Contentions A Complainant
The Complainant contends as follows:
As appears from the factual background, the Complainant's LEGO trademark is known throughout the world. The fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions.
The addition of the prefix “logo” is not relevant and would accordingly not have any impact on the overall impression of the dominant part of the disputed domain name, being that of LEGO.
Furthermore, the addition of the Generic Top-Level domain “com” does not have any impact on the overall impression of the dominant portion of the disputed domain name. Accordingly, anyone seeing it would be bound to mistake it for a domain name relating to the Complainant.
It follows, so the Complainant contends, that the disputed domain name is clearly confusingly similar to the Complainant's registered trademark LEGO.
A search by the Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, nor anything which suggests that it has been using LEGO in any other way which would give it any right or legitimate interest in the disputed domain name.
The Complainant wrote a “cease and desist” letter dated December 13, 2012, and followed it up with two reminders on January 7 and 15, 2013, but there was no response.
It is clear that no licence or authorisation of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO. LEGO is a famous trademark worldwide and any such user would violate the Complainant's rights and not be legitimate.
It is highly unlikely that the Respondent would not have been aware of the Complainant's legal rights in the disputed domain name LEGO at the time of registration.
The Respondent is also not using the disputed domain name for a bona fide purpose but has intentionally chosen the disputed domain name based on the registered trademark to generate traffic and income from Internet users.
The fact that the disputed domain name is connected to the parked pay per click websites clearly demonstrates an intention to attract, for commercial gain, Internet users to websites, and creates a likelihood of confusion for the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its websites. Therefore it must follow that it is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and its value. Since there is no connection between the Respondent and the Complainant, the use of the disputed domain name by the Respondent cannot be a legitimate noncommercial fair use but must obviously mislead and divert customers for its own commercial gain.
During the filing of the Complaint, the disputed domain name was either deleted or re-registered in the name of the present Respondent, or transferred by Airai Holdings to it, which the Complainant points out would be evidence of the so-called cyberflight. B. Respondent
By its failure to respond, the Respondent is in default in terms of paragraphs 5(e) and 14 of the Rules and paragraph 8(c) of the Supplemental Rules, with the result that the Panel must now deal with the matter on the Complaint. 6. Discussion & Findings A. Identity of Respondent
Before addressing the requirements of the Policy, the Panel considers that it should deal with the identity of the Respondent. It is the formal Respondent and has been verified as such by the Registrar. Clearly, therefore, it is the party against whom the Complaint should be initiated and pursued and upon whom service should be effected. The Panel accepts that this proposition is applicable (i-onlinesoftware v. Magnolia Associates,WIPO Case No. D2001-0422; Antonio de Felipe v R,WIPO Case No. D2005-0969; Playboy Enterprises International Inc v. Globalmedia Domain Trust,WIPO Case No. D2006-1543).
Examination of the case file reveals that, after the dispute commenced and the Center sought to verify details of the registrant from Acens, BigRock advised the Center that it was the Registrar and that the registrant details of the disputed domain name were modified on February 11, 2013, before it received the verification e-mail. It also confirmed that, before the modification, Airai Holdings was listed as the registrant, whereas the current registrant details reflect the Respondent.
As the Complaint, before the amendment was effected, was finalised and submitted on February 7, 2013, the Panel had regard to paragraph 8 of the Policy which deals with “Transfers During a Dispute” which prohibits transfers “during a pending administrative proceeding” which in turn raises the question of when such proceeding commences. The question arises as to whether or not this is at the stage that the Complaint is initiated (i.e. February 7, 2013) or whether it is the date upon which the Center completes its responsibilities with regard to forwarding the Complaint to the Respondent, which followed later. There appears to be uncertainty on this question, having regard to both the wording of the Policy and the Rules (see Mark Alan Pearson & Markco Media Ltd v. Domains by Proxy Inc & China Snake Media,WIPO Case No. D2009-0253).
In view not only of the unchallenged allegation made by the Complainant in the Complaint but also the circumstances which appear from the case file, it is not entirely clear to the Panel whether or not the change of registrant was such that the Respondent has a business relationship with the previous registrant and whether there is any basis for considering that the transaction may have been at arm's length, bearing in mind that there is nothing forthcoming from the Respondent in this regard.
In the circumstances, the Panel accepts the Complainant's contention in this respect, particularly in the absence of any evidence to the contrary, and that this is most probably cyberflight in that it was brought about in order to avoid or delay UDRP proceedings by changing the disputed domain name registration details after learning of the Complaint (see Playboy Enterprises International Inc, Supra).
In the circumstances, the Panel considers it appropriate to have regard to the actions of the previous registrant (Airai Holdings) as relevant to the enquiry against the Respondent for the purposes of paragraph 4 of the Policy (see Antonio de Felipe, Supra; Chippendales USA LLC v. R,WIPO Case No. D2006-0488; Playboy Enterprises International Inc, Supra). B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) That the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name.
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)iii) above, be evidence of the registration of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the Respondent's rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)ii). C. Effect of Default
Notwithstanding the fact that a respondent may be in default, a complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy. Such default does not, per se, entitle a complainant to a finding in its favor by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the Complaint being denied (M Corentin Benoit Thiercelin v. CyberDeal Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, aka Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with a requirement of the Rules (Allianz Compañia de Seguros y Reaseguros S A v. John Michael, WIPO Case No. D2009-0942).
In the present instance, the Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response, particularly in the light of the fact that the Complainant wrote on occasions to the Respondent, as did the Center when dealing with procedural matters and advising the Respondent of time limits, as against the Respondent's failure to respond to any further correspondence after its initial response to the Complainant’s “cease and desist” letter.
From this, the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Ltd v. Global Net 2000 Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons Inc v. Domain.Contact, WIPO Case No. D2003-0994; Standard Innovation Corporation v. Shop Intimates USA, Supra; VR Holding A/S v. A Domain Privacy/Host Master, Transure Enterprise Ltd, WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters LTD., v. Global Net 2000 Inc, Supra; RX America LLC v. Matthew Smith WIPO Case No. D2005-0540; Allianz Compañia de Seguros y Reaseguros v. John Michae, Supra; Standard Innovation Corporation, Supra; VKR Holdings A/S, Supra; Groupe Auchan v. Anirban Mitra WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213). D. Domain Name is Identical or Confusingly Similar
The Complainant put up an extensive list of its registered trade marks and the domain names which it owns in many countries.
The Complainant has cited several previous URDP decisions which it contends confirm that the LEGO trademark is world famous. Especially, as the Respondent was not party to any of these UDRP decisions, the Panel considers that a doctrine such as res judicata or issue estoppel does not apply, and what may have been found proven in those UDRP decisions is not evidence in this matter or binding on the Panel.
On the basis of its evidence and contentions in this matter, however, this Panel considers that on the factual background relied upon by it, particularly as it is unchallenged by the Respondent, for the purposes of this proceeding the Complainant has rights which fall within the provisions of Article 6 bis of the Paris Convention for the Protection of Industrial Property of March 20, 1893, as revised, and as confirmed and extended by Articles 6.2 and 6.3 of the GATT Agreement of Trade-Related Aspects of Intellectual Property Rights (commonly referred to as the “TRIPS Agreement”). These treaties enable the owner of a well-known trademark to seek protection not only in respect of products which might be marketed under an offending trademark in the same class, but outside that class as well (V&S Vin & Spirit v. Young Nah, WIPO Case No. D2004-0961; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412). For the purposes of the Policy, the Panel finds the Complainant has rights in the trademark LEGO.
The fact that the word mark LEGO has been incorporated entirely into the Domain Name is sufficient to establish that it is identical or confusingly similar to the Complainant's registered mark (Quixtar Investments Inc v. Dennis Hoffmann, WIPO Case No. D2000-0253; Universal City Studios Inc v. David Burns & Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopkin/NeoNet Ltd, WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services, WIPO Case No. D2008-0016).
The addition of the Generic Top-Level domain “.com” is not an element of distinctiveness that generally would be taken into consideration when evaluating the identity and similarity of the Complainant's trade mark and the domain name (Magnum Piering Inc v The Mudjackers and Garwood S. Wilson Sr., WIPO Case No. D2000-1525; Rollerblade Inc v Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v Meta Verzeichnis Com, WIPO Case No. D2001-0374; Qantas Airways Limited v Minh Huynh, WIPO Case No. D2008-1382).
In these circumstances, the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)i) of the Policy. E. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the domain name for the purposes of Paragraph 4(a)ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the Domain Name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.
Although paragraph 4(a)ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the domain name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the domain name, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies Inc v. International Electronic Communications Inc., WIPO Case No. D2000-0270; University City Studios Inc v. David Burns & Adam – 12 Dot Com, Supra).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is evidenced by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the sole proprietor of the trade mark LEGO and the associated domain name in question and that the Respondent has not been given any permission to register or use any domain name incorporating the trade mark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the domain name originating from the Complainant and that any unauthorized use for commercial purposes would violate the exclusive trade mark rights enjoyed by the Complainant. (Guerlain S A v. Peikang,WIPO Case No. D2000-0055; Caesar's World Inc & Park Place Entertain Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online Inc v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase Inc v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, Supra).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by licence or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase Inc v. Analytical Systems, supra).
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy. F. Registration & Use in Bad Faith
Paragraph 4(b) of the Policy provides that 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 you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial again, Internet users to your website or other on-line 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 produce or service on your website or location.”
The disputed domain name is connected to parked pay per click links, including links to the Complainant’s and other websites, with the result that the Respondent is using the disputed domain name intentionally to attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's make as to the source, sponsorship, affiliation or endorsement of its websites. Whether or not the Respondent is personally the beneficiary or whether the revenue accrues elsewhere does not, in the view of the Panel, detract from the notion that any gain so sought to be derived need not be derived by a respondent himself in that it is sufficient if a third party stands to reap the profits of wrongful conduct (Villeroy & Bosch A G v. Mario Pingerna,WIPO Case No. D2007-1912).
The implication arising from the disputed domain name, in the mind of a would-be customer, is therefore clearly that it is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with either the Complainant itself or someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)iv) of the Policy, constitute bad faith registration and use. (Media 24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, Supra).
The selection of a disputed domain name that is the same as, or confusingly similar to, the Complainant’s trade mark and the Complainant’s domain name, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the Domain Name in circumstances where it was very well aware of the Complainant’s reputation and intended to benefit therefrom (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC v. Miami Investment Brokers Inc, Supra), particularly where it is so widely known globally.
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Archibald Findlay SC
Sole Panelist
Date: April 30, 2013
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