The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is PDAWerks of Overland Park, Kansas, United States of America. 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 24, 2013. On May 24, 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 Complainant filed a request for suspension on May 28, 2013. The Center suspended the proceedings before commencement on May 28, 2013. On June 27, 2013, the Respondent sent an e-mail, mentioning that he was no longer interested in the disputed domain name. Accordingly, the Complainant requested an extension of suspension on June 28, 2013, on which day, the Center notified the extension of suspension for one more month. On July 12, 2013, the Complainant requested to re-instate and commence the proceedings.
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 July 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2013. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on August 7, 2013.
The Center appointed Keiji Kondo as the sole panelist in this matter on August 14, 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.
According to Paragraph 11(a) of the Rules the language of the proceedings shall be the language of in the registration agreement. In this case, the language of the registration agreement of the disputed domain name is English. The Complainant submitted the complaint in English. Therefore, the Panel concludes that, according to the Paragraph 11(a) of the Rules, the language of the proceedings is English. 4. Factual Background
The Complainant is the owner of LEGO.
Currently, the Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States of America.
The Complainant had registered trademark LEGO and domain names containing the word “lego” in numerous countries all over the world at the time of the registration of the disputed domain name.
The disputed domain name was registered on January 16, 2013. 5. Parties’ Contentions A. Complainant
(1) Complainant's Trademark
The Complainant's trademark LEGO is among the best-known in the world. Indeed, the LEGO trademark and brand have been recognized as being famous.
For instance, as annex 9 indicates, is a list of the official top 500 superbrands for 2012, provided by Superbrands UK, showing LEGO as number 31 of the most famous trademarks and brands in the world.
(2) Identical or Confusingly Similar
The disputed domain name comprises the word “lego”, which is identical to the Complainant's registered trademark LEGO.
The addition of the top-level domain (ctld) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant in determining the confusing similarity between the trademark and the disputed domain name.
The suffix does not detract from the overall impression. Anyone who sees the disputed domain name is bound to mistake it for a domain name related to the Complainant.
Therefore, the disputed domain name must be considered to be confusingly similar with the Complainant's trademark.
(3) Rights or Legitimate Interests
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any rights in the name. Consequently, the Respondent may not claim any rights established by common usage.
Furthermore, there is no license or authorization of any other kind, which has been given by the Complainant to the Respondent, to use the trademark LEGO.
The Respondent is today 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 (Annex 11). By this, the Respondent is using the LEGO trademark and misleading Internet users to commercial web sites and consequently, the Respondent is tarnishing the trademark LEGO.
Referring to the above mentioned the Respondent has no rights or legitimate interests in respect of the disputed domain name.
(4) Registered and Used in Bad Faith
The Complainant first tried to contact the Respondent on February 6, 2013, through a cease and desist letter. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the disputed domain name violated the Complainant's rights in said trademark. 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).
The Respondent first agreed to transfer the disputed domain name. However, despite several reminders sent, no transfer ever took place. Therefore, the efforts of trying to solve the matter amicably were unsuccessful.
The disputed domain name is currently connected to a parked pay-per-click web site. Consequently, 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.
Whether or not the Respondent has directly influenced what links should be included on the website is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not the Respondent is actually getting revenue from the page himself.
LEGO is a famous trademark worldwide. 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. There is no connection between the Respondent and the Complainant. By using the disputed domain name the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain.
Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has registered trademarks under, for instance, number1018875 in United States. The trademark includes LEGO as principal part and was registered in 1975.
The Complainant’s trademark LEGO has been well known worldwide before the disputed domain name was registered on January 16, 2013.
The disputed domain name consists of the word LEGO, the word “olympics” and the top-level domain (ctld) “.com”. The word “lego” is identical to the Complainant’s trademark. The word “olympics” is well known to mean the world famous athletic meetings held every four years. It is also used generally to refer to a competition relating to a specific subject, for example mathematics. Accordingly, combined with the word “lego”, the disputed domain name suggests a competition of works of LEGO. Therefore, addition of the word “olympics” does not detract the similarity. And the addition of the top-level domain (ctld) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name.
Therefore, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark because the disputed domain name incorporates the Complainant’s trademark in its entirety and said suffix does not detract the similarity. B. Rights or Legitimate Interests
No license or authorization of any kind has been given by the Complainant to the Respondent, to use the trademark LEGO.
The Respondent has no trademark or trade name in connection with the disputed domain name and does not use the disputed domain name to offer goods or services. The Respondent uses the disputed domain name as a parked pay per click site. The Panel finds that the Respondent's use, in these circumstances, is tarnishing the trademark LEGO and the Respondent try to sponge off the Complainant's trademark.
Therefore, the Panel concludes that the Respondent has no rights and legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant's trademark LEGO had been well known in United States of America before the disputed domain name was registered.
Under the circumstances, it is unconceivable that the Respondent obtained the registration of the disputed domain name without knowledge of the Complainant's trademark LEGO.
In addition, the way how the Respondent uses the disputed domain name shows that the Respondent attempts to attract Internet users taking advantage of the famousness of LEGO. The fact that the use of the disputed domain name as a parked pay-per-click website shows the Respondent's intention to make commercial gain by creating a likelihood of confusion with the Complainant's mark.
Therefore, the Panel concludes that the disputed domain name was registered and has been 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.
Keiji Kondo
Sole Panelist
Date: August 28, 2013
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