The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB of Stockholm, Sweden.
The Respondent is Kenan Yazici of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name (the “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 November 13, 2013. On November 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain name. On November 14, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant.
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 November 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2013.
The Center appointed Olga Zalomiy as the sole panelist in this matter on December 19, 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 well known for its construction toys, which it sells throughout the world under the trademark LEGO since 1953. The Complainant owns numerous trademark registrations for LEGO, including Turkish Trademark Registration No. 129710, registered on November 21, 1991. The Complainant is also the registered owner of over 2400 domain names which incorporate the LEGO trademark.
The Respondent registered the Domain Name on July 24, 2013. The Domain Name consists of: 1) the word “lego”; 2) the word “app”; and 3) the generic Top-Level domain gTLD “.com” The Domain Name directs to a pay-per-click (“PPC”) website displaying sponsored links to various online shops offering among others, the Complainant’s products.
On August 16, 2013, the Complainant’s representative sent the Respondent a cease and desist letter, advising the Respondent about tis unauthorized use of the LEGO trademark and seeking transfer of the Domain Name to the Complainant. The Complainant followed up on the cease and desist letter with two reminders on September 2, 2013, and October 7, 2013. When Respondent failed to respond to the cease and desist letter, the Complainant commenced this administrative proceeding. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it is the owner of the well-known trademark LEGO. In the Complainant’s view, the Domain Name is identical and confusingly similar to its LEGO trademark. Because the dominant part of the Domain Name is LEGO, the addition of the word “app” does not mitigate the confusion and will have no impact on the overall impression of the Domain Name. Moreover, the Complainant claims to own an application named “LEGO®App4+”, so addition of the word “app” to the word “lego” in the Domain Name exacerbates the confusion between the Complainant’s trademark and the Domain Name. The Complainant claims that the addition of the gTLD “.com” has no impact on the overall impression of the Domain Name and is, therefore, irrelevant for the purpose of determining confusing similarity.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant further claims that it has not found that the Respondent has registered any trademarks or trade names corresponding to the Domain Name. The Complainant alleges that it has given no license or authorization of any kind to the Respondent to use the LEGO trademark.
Further, the Complainant argues that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services and instead, intentionally chose a domain name based on a registered trademark in order to generate traffic to a website displaying sponsored links to various online stores selling, among others, Complainant’s products. According to the Complainant, such use is not considered to be bona fide offering of goods and services.
Finally, the Complainant claims that the Domain Name was registered and is being used in bad faith. The Complainant claims that its LEGO trademark has status as a well-known mark. In the Complainant’s view, the increasing number of infringing domain name registrations indicates that the LEGO trademark has a widespread reputation throughout the Community1 and around the world. Further, the Complainant alleges that in its August 16, 2013, cease and desist letter it advised the Respondent that the Respondent’s unauthorized use of the Complainant’s LEGO trademark in the Domain Name violated the Complainant’s rights in the trademark. According to the Complainant, it requested that the Respondent voluntarily transfer the Domain Name to the Complainant and offered to compensate the Respondent for his expenses associated with the registration and the transfer. The Complainant claims that it followed up on its cease and desist letter on September 2, 2013, and October 7, 2013, but it received no response from the Respondent. According to the Complainant, even if the Respondent had not known about existence of its LEGO trademark, the Respondent was sufficiently appraised of the Complainant’s rights and he either turned a “blind eye” to his unauthorized use or intentionally decided not to disable the website connected to the Domain Name.
The Complainant alleges that the Respondent, who is using the Domain Name to link to a PPC website displaying sponsored links to various online shops offering, among others, the Complainant’s products, is using the Domain Name in bad faith because he is not using the Domain Name for noncommercial purposes. Instead, the Complainant claims that the Respondent uses the Domain Name to misleadingly divert consumers from the Complainant for commercial gain.
The Complainant requests that the Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences flowing from the Complaint as true. (See Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437, and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
To succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the 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 with respect to the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s trademark LEGO, the word “app” and the gTLD “.com”. The Panel finds that the Complainant has established rights in the LEGO trademark by virtue of its Turkish registrations and its long-standing and widespread use of the trademark.
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”2 The LEGO trademark is recognizable as such within the Domain Name. The addition of the term “app” is not sufficient to prevent Internet user confusion. Moreover, addition of the term “app” to the Domain Name exacerbates the confusion because, based on the evidence on record, the Complainant owns an application named “LEGO®App4+”. Finally, the applicable top-level suffix in the domain name, such as ".com" “would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration).”3
For the foregoing reasons, the Panel finds that the Complainant has established that the Domain Name is confusingly similar to its LEGO trademark in which Complainant has rights. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, a complainant must prove that respondent has no rights or legitimate interest in the domain name. Тo satisfy this requirement, the complainant must make out a prima facie case that the respondent lacks rights or legitimate interest in the domain name.4 Once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name.5 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.6
The Panel accepts the Complainant’s uncontroverted contention that the Respondent has no license or authorization to use the LEGO trademark in the Domain Name. The Panel also accepts that the Respondent has failed to demonstrate any registration of the LEGO trademark anywhere in the world, or to provide any evidence that he has become commonly known by the Domain Name.
Based on the evidence on record, the Panel finds that the Respondent uses the Domain Name to direct consumers to a PPC website displaying sponsored links to various online shops offering, among others, the Complainant’s LEGO products. By itself such use would not confer on the Respondent rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the Domain name.7 The evidence on record also suggests that links displayed on the Respondent’s website linked to the Domain Name are based on the LEGO trademark value. Such links may lead to misleading diversion of consumers to the Respondent’s website.
The Complainant’s reasonable and supported assertions, without contrary evidence from the Respondent, are sufficient to permit a finding in the Complainant’s favor on the issue of Respondent’s lack of rights or legitimate interest in the Domain Name. (See Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437).
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith.
Pursuant to paragraph 4(a) of the Policy, “a positive finding that both the registration and use were in bad faith”8 is required.
The Complainant relies on the concept of willful blindness as a basis for finding bad faith. However, this concept is not applicable in the present case. Previous UDRP panels limited application of this concept to situations where “the respondent is a professional domain name registrant, or has been found to have engaged in a pattern of abusive registration and use of domain names identical or confusingly similar to trademarks.”9 In the present case, the Complainant introduced no evidence of such pattern of abusive registration and use of the Domain Name.
The Panel, however, finds that the Respondent registered and used the Domain Name in bad faith. Based on the Superbrands’ Official top 500 report for 2009/2010 submitted into record by the Complainant, the Panel accepts that the LEGO trademark is well known. The Panel finds that it is likely the Respondent knew about the Complainant’s trademark based on the following: (a) the Domain Name was registered on June 24, 2013, twenty two years after the Complainant registered the LEGO trademark in Turkey and many years after the Complainant started using the LEGO trademark in its home country; and (b) the Domain Name incorporates the LEGO trademark, which is not a generic term, in its entirety. Given the Complainant’s long-term use of the LEGO trademark, the distinctiveness and fame of the LEGO trademark, and the fact that the Respondent incorporated the entirety of the LEGO trademark in the Domain Name, the Panel finds it is highly unlikely that the Respondent was unaware of the Complainant’s trademark.
The Respondent uses the Domain Name for commercial gain by creating Internet user confusion through suggesting source, sponsorship, affiliation or endorsement by Complainant of the Respondent’s website. This constitutes bad faith use of the Domain Name according 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 Domain Name be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: January 2, 2014
1 In the Panel’s view, the word “Community” refers to the European Community.
2 Paragraph 1.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
3 Paragraph 1.2, WIPO Overview 2.0.
4 See paragraph 2. 1, WIPO Overview 2.0.
5 Paragraph 2.1, WIPO Overview 2.0.
6 Id.
7 Paragraph 2.6, WIPO Overview 2.0.
8 Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
9 Paragraph 3.4, WIPO Overview 2.0.
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