The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Domains By Proxy, LLC, DomainsByP of Scottsdale, Arizona, United States of America / Human Health Network of Santa Barbara, California, United States of America (“United States”). 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 April 5, 2013. On April 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 2013, the Registrar transmitted by email to the Center its verification response disclosing 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 April 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 the same date.
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 April 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2013.
The Center appointed Madeleine De Cock Buning as the sole panelist in this matter on June 5, 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 facts stated in the Complaint are as follows:
(i) The Complainant is the LEGO Juris A/S, a limited company, incorporated in Denmark with a principal place of business in Billund, Denmark;
(ii) The Complainant is a corporation which owns the LEGO trademark throughout the world and licenses this trademark throughout the world;
(iii) The LEGO trademark and its variations are registered as a trademark and service mark in numerous jurisdictions. In particular and for the purposes of this administrative proceeding, the Complainant relies upon United States trademark registration No. 1018875, dated August 26, 1975;
(iv) The disputed domain name was created on February 3, 2013. 5. Parties’ Contentions A. Complainant
The Complainant requests the Panel to issue a decision transferring the disputed domain name to the Complainant on the following grounds:
i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
The Complainant alleges that the dominant part of the disputed domain name comprises the word “lego”, which is identical to the registered trademark LEGO. The disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO. The fame of the LEGO trademark has been confirmed in previous UDRP decisions (LEGO Juris A/S v. Level 5 Corp.,WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680).
The Complainant furthermore alleges that the addition of the suffix “hero” is irrelevant in this respect and will not have any impact on the overall impression of the dominant part of the disputed domain name with LEGO, recognizable as a world-famous trademark. With reference to Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, the Complainant states that it is a long-established practice that confusing similarity is recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. Considering that “lego hero factory” is a concept used by the Complainant, the addition of “hero” even further strengthens the impression of association with the Complainant.
ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name;
The Complainant states that the Respondent has no registered trademarks or trade names corresponding to the disputed domain name and that it has not licensed or otherwise permitted the Respondent to use its trademark. There is no relationship between the parties which would justify the registration of the disputed domain name by the Respondent. Also no record suggests that the Respondent is commonly known by the disputed domain name. It is furthermore unlikely that the Respondent would not have known of the Complainant’s legal rights in the name “LEGO” at the time of the registration. According to the Complainant the Respondent is trying to sponge off its world-famous trademark (Drexel University v. David Brouda,WIPO Case No. D2001-0067).
The Complainant furthermore alleges that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a parked pay-per-click site. By this, the Respondent is then using the LEGO trademark and misleading Internet users to commercial websites and consequently, the Respondent is tarnishing the trademark LEGO.
iii. The disputed domain name was registered and is being used in bad faith.
According to the Complainant the considerable value and goodwill of the mark LEGO largely contributes to the fact that the number of third party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed the last years. It states that this is also what made the Respondent register the disputed domain name. Although the Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses) it did not receive any reaction.
The disputed domain name is currently connected to a parked pay-per-click website. The Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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.
Under paragraph 15(a) of the Rules, “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.” A. Identical or Confusingly Similar
The Complainant indisputably has rights in the registered LEGO trademark. The disputed domain name incorporates the mark in its entirety and adds the generic word “hero”. This addition does not suffice to distinguish the disputed domain name from the LEGO mark, particularly as it is undisputed that that “lego hero factory” is a concept used by the Complainant. Thus, the addition of the word “hero” serves to increase rather than decrease the likelihood of confusion.
The Panel finds, therefore, that the disputed domain name is confusingly similar to the Complainant’s LEGO mark. B. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is undisputed that the Complainant has not authorized the Respondent to use the LEGO mark. There is no evidence in the record that the Respondent has been known by a name corresponding to the disputed domain name or has used it for legitimate noncommercial purposes. The Respondent has not come forward with evidence of preparations to use the disputed domain name in connection with a legitimate business enterprise.
The use of the disputed domain name cannot be considered a use in connection with a “bona fide offering of goods or services”, where the disputed domain name incorporates a well-known and distinctive trademark (not, for example, a dictionary word or descriptive phrase) and is being used for generating traffic and income through a “domain name parking” or “pay-per-click” service or at least some other form of third party advertising. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see, for example, Owens Corning v. NA,WIPO Case No. D2007-1143). The owner of the disputed domain name is using it in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark, therefore this use would not provide the Respondent with a right or legitimate interest in the disputed domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
The Panel finds, therefore, that the second element of the Policy has been established. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the disputed domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
There is an unambiguous and uncontested assertion by the Complainant that the Respondent is “using the LEGO trademark and misleading Internet users to commercial web sites” through a “domain name parking” or “pay-per-click” service.”
Although the generation of revenue from domain name parking or other advertising activities is not necessarily activity in bad faith (Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364), it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the respondent is using the disputed domain name in this manner because of its similarity to a in famous trademark, such as LEGO, in the expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page (Express Scripts, Inc. v. Windgather Investments Ltd / Mr. Cartwright, supra). The confusion that is relevant here is the confusion that draws the Internet user to the website in the first place. It does not matter that when the Internet user arrives at the pay–per-click site that it then becomes clear that the website is unconnected with the trademark holder.
That it was to take such unfair advantage of the disputed domain name’s similarity with the Complainant’s LEGO trademarks in this case is reasonably clear. In the Panel’s view, the Respondent was obviously aware of the trademark of the Complainant and its “lego hero factory” concept at the time of registration. It is without relevance whether or not the Respondent is actually getting revenue from the page itself or not. In Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912, the respondent claimed that the website was created by the registrar, that he had no knowledge of the content and that he had actually not received any money from the website. The panel then stated that “these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.”
Sufficient evidence was given in this case by the Complainant that the disputed domain name has been registered and is being used in bad faith. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 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.
Madeleine De Cock Buning
Sole Panelist
Date: July 1, 2013
Full & Egal Universal Law Academy