The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Rubin Davies of Gloucester, Gloucestershire, United Kingdom of Great Britain and Northern Ireland. 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 May 23, 2013. On May 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 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 May 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2013.
The Center appointed Keita Sato as the sole panelist in this matter on June 27, 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, LEGO Juris A/S, is a limited company incorporated in Billund, Denmark. The Complainant has registered trademarks in many countries, such as LEGO word mark, which was registered for class 28 in Denmark on May 1, 1954 with the registration number 604-1954, also in United Kingdom on July 30, 1957 with the registration number A 754,628, and so on.
The Respondent is Rubin Davies, located in Gloucester, United Kingdom, according to the WhoIs record at the concerned Registrar.
The disputed domain name was registered on March 10, 2013. 5. Parties’ Contentions A. Complainant
The Complainant stated that it has registered LEGO trademark in many countries and over 2,400 domain names containing the term “lego”, the strict policy that all domain names containing the word “lego” should be owned by the Complainant. Also it alleged that LEGO is among the best-known trademarks in the world, since it sells products more than 130 countries and LEGO brand is ranked as number 8 by Superbrands’ official top 500 Superbrands for 2009/10. After the Complainant explained its contention, then it argued that the disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO, since “It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, an obvious contraction of a descriptive word.” (citing LEGO Juris A/S v. Whoisguard / Susan Bridges,WIPO Case No. D2011-1409). The Complainant also argued that no license or authorization to use the trademark LEGO has been given to the Respondent. And it contends that the Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services. Therefore the Complainant insists that the Respondent has no rights and no legitimate interests. Further, the Complainant contends that the Respondent registered and used the disputed domain name in bad faith, since it is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration, and by using the disputed domain name the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain.
For these reasons, the Complainant requests the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. Identical or Confusingly Similar
The Complainant has registered trademark LEGO as explained Section 4. above. Although the second-level portion of the disputed domain name “legobricklego” and the trademark LEGO registered by the Complainant is not identical, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.
A prior UDRP decision stated, “The domain names and incorporate the LEGO mark in its entirety. Previous WIPO UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy.[…] In the instant case, the combination of the suffixes “brick” and “set” with the word “lego” does not affect the overall impression of the dominant part of the disputed domain names because the resulting word has a significant meaning: “legobrick” and “legoset” are words related to the toy building blocks identified by the LEGO trademark. Therefore, in these combinations the word “lego” stands out and may lead the public to believe that there is an association with the well-known LEGO trademark.” (see LEGO Juris A/S v. Trent Clark/Darry Lowe,WIPO Case No. D2010-0482). In the Panel’s opinion, this logic could also be applied to the current case. The difference between these two cases is only “legobrick” and “legobricklego”, which means the second-level portion of the disputed domain name has a repeated word “lego”. A prior UDRP decision also found the domain name is similar to the trademark ADIDAS ). This decision suggested that, for the purpose of the first element of the policy, repetition of the word trademark gave no influence. (see adidas-Salomon AG v. Stipo,WIPO Case No. D2001-0372). In the Panel’s opinion, addition of descriptive terms “brick” and repetition of the Complainant’s trademark does not mitigate the confusingly similarity between the disputed domain name and the Complainant’s trademark.
The Panel thus finds that the first requisite element of the Policy is made out. B. Rights or Legitimate Interests
The Complainant states that “no license or authorization of any other kinds has been given by the Complainant to the Respondent to use the trademark”. Under these circumstances, where the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the Respondent has the burden of production to provide appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name (see, paragraph 4(c)(i) of the Policy, and also see, paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ["WIPO Overview 2.0"]). Since the Respondent did not submit any argument, the Panel will analyze how the Complainant has established prima facie case.
The Respondent’s website looks like an online shop for LEGO toy products (see, Annex 11 of the Complaint), however, Internet users could not do actual purchase directly through the Respondent’s website, since cricking on a LEGO product on the screen leads to A site. In the Panel’s opinion, the Respondent seems to pretend its website as a special LEGO section of the A online shop, in order to get commercial gain by diverting visitors to its website into the third party’s online shop website. It is true that prior UDRP panels recognized in some case that the respondent has, for the purpose of paragraph 4 of the Policy, legitimate interests even if the respondent has not been authorized to use trademark for the domain name related matter since it uses the disputed domain name in connection with bona fide offering goods or services (see, e.g. Oki data America, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). However, in the Panel’s opinion, the Oki data formula could not be applied to this current case, since the Respondent seems not to sell LEGO toy products by itself. In addition, the Respondent failed to submit the Response before deadline. Taking into consideration the Respondent's default and these circumstances, the Panel can infer that the Complainant's allegations are true where appropriate to do so (see, Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). The Panel concludes the Respondent has no rights and no legitimate interests in respect of the disputed domain name, since the use of the disputed domain name by the Respondent is not in connection with bona fide offering goods or services.
Accordingly, the Panel finds the second element of the Policy is made out. C. Registered and Used in Bad Faith
First, the Panel will analyze the nature of the Respondent’s registration of the disputed domain name. As the Complainant stated, the LEGO trademark has been registered by the Complainant long before the date of the registration of the disputed domain name. The trademark registration covered world-wide, including United Kingdom which is the location of the Respondent. And the Respondent’s website is full of information of LEGO toy products. Under these circumstances, the Respondent should have known the existence of LEGO trademark registration. The Panel thus concludes the Respondent has registered the disputed domain name in bad faith.
Secondly, the Panel also analyzes whether the Respondent uses the disputed domain name in bad faith. The Respondent operated its website, which has a title (top area of the website) as “Lego Brick Lego” in large capital and “just Lego” in a small capital. In addition, there are several descriptions “associated with A” (with Amazon’s trademark logo) found on the Respondent’s webpages. Under these circumstances, it seems the website pretends LEGO special selection of A online shop or the website is an online shop with assisting website management and accounting system by A, however, actually, the Respondent just diverted visitors of the site to A cite, and it may obtain revenue from a click-through advertising. Prior UDRP panel stated, “the use of the disputed domain name in connection with a website providing information on [the Complainants’] toy products and linking to third party’s websites where consumers can purchase [the Complainants’] products clearly indicates that the Respondent's intent to redirect Internet users to his website and thus tries to capitalize on the goodwill of the Complainant's trademark. This qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondent's use of the domain name attempts to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.” (see P&G Prestige Products, Inc. v. Ryogo Sugai,WIPO Case No. D2009-1098). The Panel follows this decision, since the present case is in a similar factual situation. The Panel thus concludes the Respondent uses the disputed domain name in bad faith.
Accordingly, the Panel finds the third element of the Policy is also made out, since the disputed 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 disputed domain name be transferred to the Complainant.
Keita Sato
Sole Panelist
Date: July 11, 2013
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