The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is PPA Media Services of Santiago, Chile / Fundacion Private Whois of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2013. On September 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 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 October 9, 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 October 9, 2013.
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 October 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2013.
The Center appointed David Williams as the sole panelist in this matter on November 22, 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 in this proceeding is LEGO Juris A/S, a limited company incorporated in Denmark that operates worldwide in the fields of construction toys and other products. The Complainant owns more than 1000 domain names containing the term “Lego”, and operates several websites incorporating “Lego” in the domain names.
The disputed domain name was registered on April 13, 2009. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is the owner of more than 1000 domain names containing the term “Lego” and that it has a policy of owning all domain names containing the word “Lego””. It contends that the word “Lego” is a ‘famous’ trademark and brand, as evidenced, for example, by its inclusion in a 2012 list of 500 Superbrands worldwide by Superbrands UK, as number 31. It contends that the mark LEGO has substantial inherent and acquired distinctiveness which extends past toys and goods similar to toys.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights:
The Complainant alleges that the disputed domain name is identical and confusingly similar to the registered mark LEGO, which the Complainant contends is a world famous trademark. It cites the comments of the Panels in LEGO Juris A/S v. Level 5 CorpWIPO Case No. D2008-1692, LEGO Juris A/S v Michael Longo,WIPO Case No. D2009-1715 and LEGO Juris A/S v Reginald Hastings Jr, WIPO Case No. D2009-0680 for this proposition. The Complainant contends that there is an obvious association between and LEGO, and a considerable risk of an association with the Complainant through the domain name. With regard to the addition of the word “city” to the trademark LEGO, the Complainant cites Dr. Ing. h. c. F. Porsche AG v Rojeen Rayaneh, WIPO Case No. D2004-0488 for the proposition that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. Moreover, the Complainant suggests that as it uses the concept “Lego City” itself in its product lines, the use of the word “city” can only add to, and not detract from, any confusing similarity.
The Respondent has no rights or legitimate interests in respect of the disputed domain name:
The Complainant contends that the Respondent does not possess any registered trademarks, tradenames or any legitimate use of LEGO that would give it legitimate rights in the name. Further, the Complainant contends that the Respondent is not a licencee or authorized in any other way that would allow it to use the trademark. It cites Guerlain S.A v Peikang, WIPO Case No. D2000-0055, for the proposition that in the absence of license or permission from the Complainant to use any of its trademarks, there could be no actual or contemplated bona fide use of the domain name. The Complainant suggests that the Respondent was motivated by the fame of the LEGO trademark to register the disputed domain name, and cannot claim that it was not aware of the Complainant’s rights to it. Instead, the Respondent is alleged to have intentionally used the LEGO mark to generate traffic and income through a parked pay per click site.
The disputed domain name was registered and is being used in bad faith:
The Complainant contends that there is significant and substantial reputational awareness of LEGO throughout the world. As such, the Complainant contends that the Respondent is most likely taking advantage of the value and goodwill of the mark. The Complainant details its various efforts to contact the Respondent, through cease and desist letters and an offer to voluntarily transfer the disputed domain name in exchange for compensation paid for the registration and transfer fees. The Complainant contends that the absence of the Respondent’s contact in response to these efforts evidences bad faith. The Complainant contends that the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for its own commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 5(e) and 14 of the Rules, in the event that a respondent defaults in its response, the panel shall proceed to a decision on the complaint and shall draw such inferences therefrom as it considers appropriate. However, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s failure to reply to the Complainant’s contentions (See Cortefield, S.A. v. Miguel Garcia Quitas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations, on balance of the probabilities, have merit.
Further, although the Panel notes that the Respondent has created a pay-per-click landing page in association with the disputed domain name, a type of website that was described in mVisible Technologies, Inc. v. Navigation Catalyst Systems, WIPO Case No. D2007-1141, as providing little societal benefit, the Panel stresses that a pay-per-click page does not automatically violate the Policy (as discussed in Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). Under paragraph 4 of the Policy, the complainant must still prove each of the following three elements. Firstly, that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Secondly, the complainant must prove that the respondent has no rights or legitimate interests in respect of the domain name. Thirdly, the domain name must be registered and being used in bad faith. A. Identical or Confusingly Similar
In order to transfer the disputed domain name to the Complainant, the Panel must be satisfied that with regard to this element: (a) the Complainant has rights in a trade mark or service mark; and (b) that the disputed domain name is identical or confusingly similar to that trade mark or service mark.
The Panel accepts the Complainant’s evidence that it has rights in the trademark LEGO, from its extensive evidence that it owns a number of trademarks worldwide that incorporate the term “Lego”, and finds that this is sufficient to establish rights in that trademark.
The disputed domain name comprises the word “lego”, which is, for all purposes, identical to the registered trademark LEGO. The Panel accepts that LEGO is a famous mark (as the Complainant referred to in a number of UDRP cases) and accepts that the disputed domain name contains the instantly recognizable LEGO brand.
It is well established that the addition of generic terms to a domain name does not distinguish the domain name from a trademark (see for example, Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chair Larbthanasub,WIPO Case No. D2003-0709; America Online, Inc v. Dolphin@Heart,WIPO Case No. D2000-0713). It is also established that a generic top-level domain suffix (in this case, “.com”) can be ignored when assessing the similarity between a trademark and a domain name (See for example, LEGO Juris A/S v. 4ex-invest/Umbo, WIPO Case No. D2012-2059). The Panel finds that neither the addition of the prefix “city”, nor the addition of the suffix “.com” sufficiently distinguishes the disputed domain name from the Complaint’s registered trademark LEGO.
The Panel thus finds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark. B. Rights or Legitimate Interests
Per paragraph 4(c) of the Policy, the Respondent can demonstrate a right or a legitimate interest to the domain name by demonstrating the use of a name in connection with bona fide offerings of goods or services, by demonstrating that it is commonly known by the domain name or by demonstrating that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trademark at issue. In this case, the Respondent has not filed a response.
As discussed above, the burden of proving that the Respondent lacks rights or legitimate interests in the d disputed domain name rests with the Complainant. However, if the Complainant establishes a prima facie case that this is so, and the Respondent fails to rebut it, the Complainant is usually deemed to have satisfied its burden: See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1; Cornell Trading Inc v. Web-I Inc, WIPO Case No. D2000-0887; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. As the Respondent has failed to invoke any circumstances in relation to its rights or legitimate interests in the disputed domain name, the Panel must rely on the evidence provided by the Complaint and the evidence which is self-evident from the website itself.
Considering each of the factors in paragraph 4(c) in turn, the Panel must establish, whether the Respondent has either used or was preparing to use the disputed domain name in connection with a bona fide offering of goods or services, b) was commonly known by the disputed domain name or c) was making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark.
There is no evidence that the Respondent was commonly known by the disputed domain name and no legitimate inference from the evidence that it was so known. It is plainly evident from the nature of the website that the Respondent was making a commercial use of the domain name. The Complainant contends that the Respondent was operating a pay-per-click site and received revenue each time a visitor to the website clicked on one of the links listed there and provided screenshots to establish this. The Panel finds that the use of such a website associated with a domain name confusingly similar to the LEGO mark must necessarily have been to misleadingly divert customers in the hope that they would click on of the links on the Respondent’s website and accrue revenue for the Respondent in the process.
With regard to whether the Respondent was using the disputed domain name in connection to a bona fide offering of goods or services, the nature of the website must be further examined. As discussed above, the Panel accepts that the website associated with the disputed domain name was operating on the basis of a pay-per-click site. The Panel finds that the offering of such links on the Respondent’s website does not amount to a bona fide offering of goods or services. As discussed in Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. BestinfoWIPO Case No. D2004-0990:
The sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the disputed domain name in connection with a bona fide offering of goods and services. Rather, the conduct of Respondent serves the purpose of generating revenues, for example from advertised pay-per-click products.
In conclusion, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests. Accordingly,the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the policy includes a non-exhaustive list of factors that evidence registration and use of a domain name in bad faith. The relevant factor in this case is paragraph 4(b)(iv) of the Rules, which states that it shall be evidence of the registration and use of a domain name in bad faith if by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. As discussed above, in this case, the Respondent was using a pay-per-click webpage associated with the disputed domain name. As discussed in L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623, and Mpire Corportation v. Michael Frey,WIPO Case No. D2009-0258, while the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is confusingly similar to a trademark to obtain click-through-revenue is bad faith use.
The Panel finds that it is unlikely that the Respondent would have registered the disputed domain name unaware of the Complainant’s trademark, as LEGO is not a common word and has direct associations to the toy company. The Panel concludes that the Respondent set up the site in the hope that individuals searching for the Lego website, indeed even the Complainant’s ‘City’ merchandise, be confused by the disputed domain name, visit its website, and generate revenue by clicking on the provided links.
The Panel accordingly finds that the disputed domain name has been 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 names be transferred to the Complainant.
David Williams
Sole Panelist
Date: December 6, 2013
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