The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Jared Burnup of Wausau, Wisconsin, United States of America (“US”). 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 September 27, 2013. On September 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 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 October 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2013. In reply to the notification of the Respondent’s default, the Respondent sent an email communication to the Center on the same date.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 1, 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 is the owner of the US Patent and Trademark Office Registration No.73032295 for the LEGO trademark dated August 26, 1975 (Annex 6 to the Complaint).
The Complainant and its predecessors commenced use of the LEGO trademark in the US in 1953 to identify construction toys. Currently, the Complainant has subsidiaries and branches throughout the world, and the LEGO products are sold in more than 130 countries, including the US, being LEGO one of the most famous trademarks in the world (Annex 9 to the Complaint).
The disputed domain name was registered on April 21, 2013 and the website to which it resolves displays sponsored links and informs that the disputed domain name is listed for sale. 5. Parties’ Contentions A. Complainant
The Complainant owns one of the best-known trademarks in the world, having been ranked number 8 at the top 500 Superbrands for 2009/2013 by Superbrands UK (Annex 9 to the Complaint). The Complainant’s group has had a revenue of more than USD 2,8 billion in 2009 and currently sells LEGO products in more than 130 countries.
According to the Complainant, the dominant part of the disputed domain name comprises the registered trademark LEGO, the addition of the word “coupon” does not detract from the overall impression, and the disputed domain name must be considered confusingly similar with the Complainant’s trademark.
As to the absence of rights or legitimate interests, the Complainant argues that:
i. it has not found any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, nor has it found anything that would suggest the Respondent’s legitimate interests or rights in the disputed domain name;
ii. no license or authorization of any kind has been given by the Complainant to the Respondent to register the disputed domain name, not ever having the Respondent been in a business relationship with the Complainant; and
iii. the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services given that it has intentionally chosen such domain name based on the Complainant’s trademark in order to generate traffic in a website with sponsored links, what can furthermore tarnish the Complainant’s trademark.
Moreover, the Complainant has attempted to solve the matter amicably by sending a warning letter and two reminders to the Respondent (Annex 12 to the Complaint) advising the Respondent of the unauthorized use of the LEGO trademark and requesting a voluntary transfer of the disputed domain name, also offering to compensate for the expenses of registration and transfer fees. No reply was received to these letters.
Lastly, the Complainant points out that given the existence of pay-per-click advertising links that related at least in part to the LEGO trademark, the Respondent cannot claim good faith or “no actual knowledge” of the Complainant’s trademark and, on the contrary, is misleadingly diverting consumers for this own commercial gain. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. The Respondent sent an email, stating that “I did email back and you never responded.” The Center acknowledged receipt of the email communication, indicating that it had not received any previous email communication from the Respondent. Although, the Respondent was asked to forward such email communication to the Center, no reply has been received from the Respondent. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint A. Identical or Confusingly Similar
The Complainant has established its rights in the trademark LEGO (Annex 6 to the Complaint).
The Complainant’s mark is entirely reproduced in the disputed domain name and the addition of the term “coupon”, in this Panel’s point of view, does not sufficiently distinguish the disputed domain name from the trademark. On the contrary, the disputed domain name possibly leads a certain portion of Internet users into thinking that the website relating to it might refer to the Complainant.
Previous UDRP cases have already concluded that “[t]he incorporation of the word ‘coupon’ adds confusion. That is because Internet users are likely to surmise that the disputed domain name indicates a site belonging to, or authorized by, the Complainant where the Complainant’s coupons can be obtained or exchanged” (Inter Ikea Systems B.V. v. Daniel Woodson,WIPO Case No. D2011-1933).
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is 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.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. B Private Registrant, A Happy DreamHost Customer,WIPO Case No. D2010-2108). Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that no authorization, license, permission or consent was granted for the use of LEGO in the disputed domain name.
Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the indication of the absence of a right or legitimate interest.
Another element to be taken into account is the absence of any reply to the warning letter and respective reminder sent to the Respondent. Previous UDRP panels have already recognized that “[t]he fact that the Respondent was requested to transfer domain names consisting of famous brands at several occasions last year in other UDRP proceedings further suggests the absence of legitimate interests (see in particular Deutsche Telekom AG v. Spiral Matrix,WIPO Case No. D2005-1145; Dr Ing. h.c. F. Porsche AG v. Spiral Matrix et al.,WIPO Case No. D2005-0890; Societe des Hotel Meridiens v. Spiral Matrix et al.,WIPO Case No. D2005-1196).” PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith can be found in the use of the domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, the use of the disputed domain name in connection with a parked pay-per-click website characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely earning revenues from the advertisements and links that solely exist in view of the association with the Complainant’s trademark.
Such use, in this Panel’s view, constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s notorious trademark, thus capitalizing on the fame of the Complainant’s LEGO mark by creating a likelihood of confusion in Internet users who likely believe that the disputed domain name is either connected, endorsed or authorized by the Complainant.
Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(b)(iv) 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: November 11, 2013
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