The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondents are Miguel Angel Villen of Madrid Spain; and PrivacyG of Phoenix, Arizona, United States of America (collectively, “Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2013. The amendment to the Complaint was filed with the Center on March 7, 2013. On March 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 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 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 March 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2013. The Center received an informal e-mail communication apparently from the Respondent from the e-mail address on record at the Registrar for the registrant under the name “Dise Mecan” on March 15, 2013. The Respondent did not submit any further formal response. Accordingly, the Center notified the commencement of panel appointment process on April 5, 2013.
The Center appointed Felipe Claro as the sole panelist in this matter on April 15, 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 accordance with the Rules, language of these proceedings will be the same of the Registration Agreement, in this case: English. 4. Factual Background
The Complainant, LEGO Juris A/S, is a company organized under the laws of Denmark, with its main place of business in Koldingvej, pertaining to the LEGO Group.
The LEGO Group has a license agreement with Lucasfilm Ltd., to develop, manufacture and sell LEGO-Star Wars products.
The Complainant is the owner of the trademark LEGO, which mainly identifies toys and other related products. The LEGO trademark was used and/or registered in several countries around the world, as early as in 1953. The LEGO trademark is well-known and easily recognizable around the world with clear distinctiveness.
The Complainant also owns approximately 2,400 domain names, containing its trademark LEGO, including:
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The Respondent’s domain name incorporates the trademark LEGO in its entirety as well as the Lucasfilm’s trademark STAR WARS.
The Respondent is not apparently commonly known by the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
The Complainant states that the use of the totality of its trademark in the disputed domain name makes the latter confusingly similar to its trademark. The Complainant further asserts that this circumstance creates a strong likelihood where anyone reviewing the disputed domain name will mistake its origin and relate it to the Complainant and its trademark, thus, exploiting the goodwill and image of the trademark.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name because at no point did the Complainant authorize the Respondent to use its trademark LEGO, nor ever granted the Respondent a license to use the LEGO trademark.
The Complainant submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because the Respondent uses the disputed domain name to divert Internet users seeking the Complainant’s websites or the LEGO products to unrelated commercial websites.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
It is the responsibility of the Panel to consider whether the Policy’s requirements have been met, regardless of the fact that the Respondent failed to submit a reply.
Per paragraph 4(a) of the Policy, in order to prevail on its claim, the Complainant must prove that:
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. A. Respondent’s Default
Because the Respondent has failed to file a reply as required by paragraph 5 of the Rules, this proceeding has taken place by way of default. Therefore, under paragraphs 5(e), 14(a), 14(b) and 15(a) of the Rules, the Panel shall decide this administrative action based on the Complainant’s undisputed representations, and may accept all reasonable and supported allegations and inferences made in the Complaint as true. Teleperformance v. Venkateshwara Distributor Private Limited and PrivacyP,WIPO Case No. D2010-0685 (citing Rules, paragraphs 5(e) and 14(a) (“Where there is no response to the complaint, the panel must decide the dispute based on the complaint.”), Rules, paragraph 15(a) (“The panel is to decide the complaint on the basis of the statements and documents submitted, and in accordance with the Policy, the Rules and any principles of law the panel deems to be applicable.”), and Rules, paragraph 14(b) (“Respondent’s failure to answer entitles the panel ‘to draw such inferences therefrom as it considers appropriate.’”)). See Allianz SE v. Venkateshwara Distributor Private Limited/PrivacyP,WIPO Case No. D2010-0951 (citing Charles Jourdan v. Holding AG v. AAIM,WIPO Case No. D2000-0403 (stating that the panel may draw adverse inferences from Respondent’s failure to reply to the complaint) and Vertical Solutions Mgmt., Inc. v. webnet-marketing, Inc., NAF Claim No. 905095 (holding that Respondent’s default permits all reasonable inferences of fact in the allegations of the complaint to be deemed true)). B. Identical or Confusingly Similar
The Complainant demonstrates that it owns the registrations of the trademarks LEGO; therefore, the Complainant has established legal rights in the marks.
The question presented here, under paragraph 4(a) of the Policy, is whether, from an objective standpoint, the disputed domain name is identical or confusingly similar to the Complainant’s trademarks and domain names. Allianz SE v. Venkateshwara Distributor Private Limited/Privacy P,WIPO Case No. D2010-0951; see also The Vanguard Group, Inc. v. John Zuccarini,WIPO Case No. D2002-0834 (holding that Complainant need not establish actual confusion because the test is objective).
Upon review of the disputed domain name , it is noticeable that the Complainant’s trademark, LEGO, is entirely contained in the disputed domain name. Moreover, the subsequent words “star wars” and “21” are incorporated in the disputed domain name. In the case of the “star wars” word, third party rights could be infringed as well since the Respondent has employed a trademark for which the Complainant has a license agreement with Lucasfilm Ltd., and has several domain names containing the “star wars” portion as licensee of said trademark. If a domain name incorporates a distinctive mark, such as the Complainant’s, in its entirety, UDRP panels have previously found “it is confusingly similar to that mark despite the addition of other words” or, in this case, of other distinctive trademarks, owned by third parties. Nationwide Mutual Insurance Company v. Great Wall Domains,WIPO Case No. D2005-1251, citing Dell Inc. v. George Dell and Dell Net Solutions,WIPO Case No. D2004-0512 (citing Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662 (holding that the first element of the Policy was satisfied where a domain name wholly incorporates complainant’s mark)).
In addition, domain names such as the Respondent’s have repeatedly been found to be confusingly similar to the owners’ trademarks in UDRP proceedings. Reuters Limited v. Global Net 2000 Inc.,WIPO Case No. D2000-0441 (holding that “given that the Complainant’s trademark is distinctive of the Complainant’s business of providing news services, the inclusion of the word “news” with the word “reuters” in domain name (5) makes the compound phrase “reutersnews” confusingly similar to the Complainant’s trademark REUTERS”). In short, adding the “star wars” and “21” subsequent words is insufficient to distinguish the Complainant’s mark from the disputed domain name to prevent confusion between it and LEGO.
Therefore, the Complainant has established that the disputed domain name is confusingly similar to the LEGO mark to satisfy the first element of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
The Complainant represents and warrants that it has never licensed, authorized, or otherwise consented to the use of its LEGO trademark by the Respondent. The Complainant further asserts that the Respondent’s association of the disputed domain name to a website that profits from the Complainant’s fame, goodwill and reputation and its trademark LEGO cannot give rise to any right or legitimate interest in said domain name to Respondent’s benefit.
It is the Complainant’s burden to prove that the Respondent has no rights or legitimate interests in the disputed domain name. See Carol House Furniture, Inc. v. PrivacyP/Venkateshwara Distributor Private Limited,WIPO Case No. D2010-0961 and H Samuel Limited v. PrivacyP/Venkateshwara Distributor Private Limited,WIPO Case No. D2009-0973, the latter holding that “once Complainant makes a prima facie showing that Respondent has no rights or legitimate interests in the domain name, the burden to rebut then shifts to Respondent. However, the burden of proof remains with Complainant”.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights in or legitimate interests to a domain name for purposes of paragraph 4(a)(ii):
i.) Before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
ii.) The Respondent (as an individual, business, or other organization) has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Given the evidence presented by the Complainant, the WhoIs data does not support the conclusion that the Respondent is commonly known by the disputed domain name . The Respondent is apparently not a licensee of, nor has been, nor currently is affiliated with the Complainant.
The evidence further shows that the Respondent does not appear to be using, nor has the Respondent produced any evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. Instead, the Respondent uses the disputed domain name to divert Internet users away from the Complainant’s website. It is well settled by former UDRP decisions that this sort of “re-routing” of Internet users is neither a bona fide offer of goods and services, nor is a legitimate, noncommercial or fair use of the domain name involved. Carol House Furniture, Inc. v. PrivacyP/Venkateshwara Distributor Private Limited,WIPO Case No. D2010-0961. See also Nationwide Mutual Insurance Company v. Great Wall Domains,WIPO Case No. D2005-1251.
Based on the uncontested evidence by the Complainant, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name . Because the Respondent failed to formally reply, it also failed to rebut the Complainant’s assertions, and the Panel may deem the Complainant’s assertions as true, which it does.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name, and thus satisfied the requirements under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Complainant must also prove that the Respondent registered and is using the disputed domain name in bad faith. Paragraph 4(b)(iv) of the Policy provides that the following, among other criteria, constitutes evidence of the registration and use of the disputed domain name in bad faith:
“By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location of a product or service on the Respondent’s web site or location.”
Teleperformance v. Venkateshwara Distributor Private Limited and PrivacyP,WIPO Case No. D2010-0685.
Here, the evidence shows that the Complainant’s trademark LEGO is an invented and coined mark with a strong worldwide reputation, and that no relationship exists between the Complainant and the Respondent because at no point has the Complainant licensed, authorized, or otherwise consented to the Respondent’s use of the mark in any manner. The Panel finds that the Respondent was aware of the LEGO trademark at the time the disputed domain name was registered and converted that trademark to its own benefit. This circumstance becomes obvious due to the fact that the Respondent tries to commercialize products bearing the Complainant’s trademark LEGO.
The evidence also shows that the Respondent has intentionally attempted to attract for financial gain Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s name does not include the word LEGO. All of the content currently on the Respondent’s website is misleading and confusing to consumers. The Respondent did not answer to a cease and desist letter sent by the Complainant, which could be considered as an act of bad faith. Without question, the Respondent is intentionally exploiting Internet users’ confusion between Complainant’s trademark and the disputed domain name in order to obtain financial benefit for itself; this conduct constitutes sufficient evidence of bad faith registration and use within the meaning of the Policy. See Nationwide Mutual Insurance Company v. Great Wall Domains,WIPO Case No. D2005-1251, citing Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492 (when a domain name is obviously connected with a Complainant and its products, its very use by a Registrant with no connection to the Complainant suggests “opportunistic bad faith”). Thus, the Complainant has satisfied the third and final element of the Policy.
Therefore, the Panel finds that the disputed domain name was registered and 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 disputed domain name be transferred to the Complainant.
Felipe Claro
Sole Panelist
Date: April 29, 2013.
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