The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is PrivacyP Domain Admin of Nobby Beach, Queensland, Australia/ Shayna thornhill of Lakewood, Ohio, United States of America (the “USA”), self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with L Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2013. On June 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 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 June 21, 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 June 23, 2013.
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 June 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2013. The Center received several informal communications from the Respondent on June 28 and 29, 2013.
On July 1, 2013, the Center acknowledged receipt of those communications and informed the Complainant about the possibility of suspending the proceedings to explore a possible settlement between the parties. On July 2, 2013, the Complainant requested the suspension of the proceedings and the Center suspended the proceedings accordingly until July 23, 2013.
On July 22, 2013, the Complainant requested the re-institution of the proceedings. On July 23, 2013, the Center re-instituted the proceedings and informed the parties that the new Response due date was August 4, 2013. The Center did not receive any further communications from the Respondent and accordingly, on July 5, 2013, the Center informed the parties about the commencement of the Panel appointment process.
On August 6, 2013, the Respondent sent another communication to the Center and on August 7, 2013, the Center informed it that all its communications will be sent to the Panel for its attention.
The Center appointed Michel Vivant as the sole panelist in this matter on August 12, 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 the owner of the trademark LEGO, and other trademarks used in connection with the first one, among others in Australia (place where the Respondent seems presumably located). The Complainant and its licensees – the “LEGO Group” – through their predecessors commenced use of the trademark LEGO in the United States of America during 1953. The Complainant also owns more than 2400 domain names containing the name “Lego”.
The disputed domain name was registered on April 6, 2013. Through the use of a privacy service, the Respondent initially appeared as “PrivacyP Domain Admin of Nobby Beach, Queensland, Australia”. 5. Parties’ Contentions A. Complainant
The Complainant contends that it owns a very famous trademark, well-known in the sense of Paris Convention and TRIPS agreement.
The Complainant underlines that the dominant part of the disputed domain name comprises the LEGO trademark in its entirety and that the additions made “will not have any impact on the overall impression of the dominant part of the name”. It emphasizes that a domain name which incorporates a well-known trademark is confusingly similar to this trademark and, more precisely, that “confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes”.
The Complainant notes the Respondent has no registered trademarks or trade names corresponding to the disputed domain name and has not received any kind of authorization to use the LEGO trademark from the Complainant. The Complainant further states that, considering the well-known nature of the LEGO trademark, the Respondent cannot claim to have been using the name “Lego”, without being aware of the Complainant’s rights. Furthermore, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services as far as the Respondent chose the disputed domain name in order to generate traffic to a site with sponsored links.
Finally, the Complainant claims that the Respondent, who tried to divert the traffic to its own site, did not answer to the Complainant’s request and, after the sending of its “cease and desist letter”, it changed the content of the site “into a merely parked website with pay-per-click links on it”. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. The Center received several informal communications from the Respondent in which it stated that it no longer has any rights on the disputed domain name and how it could help to resolve the matter. 6. Discussion and Findings A. Identical or Confusingly Similar
As stated in previous UDRP cases, it is indisputable that “LEGO is clearly a well-known mark” (see for instance LEGO Juris A/S v. Domain Administrator,WIPO Case No. D2010-1260). A domain name such as obviously incorporates the Complainant’s LEGO trademark and creates a false association with it. The Complainant is right when it states that “anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant”. The addition of the words “city” and “review” suggest directly a relation between the trademark LEGO and the disputed domain name.
Furthermore, it is well established in UDRP cases that a domain name which incorporates a well-known trademark is confusingly similar to this trademark (see for instance LEGO Juris A/S v. WhoisGuard / Susan Bridges,WIPO Case No. D2011-1409).
So, in the view of the Panel, the disputed domain name is confusingly similar to the Complainant’s trademarks according to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent appears as not having registered trademarks and/or any trade names corresponding to the disputed domain name. As the Complainant states, the Respondent has not received any kind of authorization from the Complainant to use the LEGO trademark.
Furthermore, the disputed domain name has no real function, other than to attract Internet users to the Respondent’s own site which used to redirect Internet consumers to third party websites and on which the LEGO logo was used without authorization. Obviously, that cannot be considered as a bona fide or legitimate use of the disputed domain name, and this is further evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Of course the change of the site into a parked website with pay- per-click links cannot modify this analysis.
The Panel thus finds that the Respondent has no rights or legitimate interests in the disputed domain name according to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Respondent does not appear to have had any specific good faith reason to register the disputed domain name which must be understood as an attempt of parasitic practices against the trademark of the Complainant. The Respondent cannot claim to have been using the disputed domain name, without being aware of the Complainant’s rights. In fact, this practice partakes of a general phenomenon of undue registration of domain names built on the basis of the name “Lego” (the Complainant quotes 19 cases between 2010 and 2012).
In the present case, in the Panel’s view, the sole utility of the disputed domain name is to attract consumers, misled by the proximity of the trademark and the disputed domain name, to the Respondent’s website in order to generate profit by the mechanism of sponsored links.
Furthermore the emails sent by the Respondent do not contradict the Complainant’s allegations and, as the Complainant rightly observes, failure to positively respond to a complainant’s efforts to make contact provides "strong support for a determination of ‘bad faith’ registration and use" (see Encyclopaedia Britanica v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party WIPO Case No. D2000-0330; or Nike, Inc. v. Azumano TravelWIPO Case No. D2000-1598).
The Panel, therefore, finds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii). 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.
Michel Vivant
Sole Panelist
Date: August 15, 2013
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