The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Whoisguard Protected of Panama, Panama / ALB, AARSL KHAN of Karachi, Pakistan. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2013. On December 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 December 11, 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 December 11, 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 December 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2014. The Respondent was informed that if the response was not received by the due date, the Panel might draw appropriate inferences from that default. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2014.
The Center appointed Vinod K. Agarwal as the sole panelist in this matter on January 27, 2014. 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 a Denmark-based company. The Complainant is the owner of the trademark LEGO. The said trademark was registered for the first time in the United States in 1953. The Complainant has subsidiaries and branches throughout the world. Further, the Complainant has granted licenses to a number of other bodies, collectively they are known as “the LEGO Group of Companies” or “the LEGO Group”.
According to the Complaint, only the Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the United States and elsewhere. The Complainant and its licensees are engaged in the business of making and selling construction toys. The LEGO Group has expanded the use of the trademark LEGO to computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant’s products under the trademark LEGO are sold in more than 130 countries. Respondent’s Identity and Activities
The Respondent did not reply to the Complainant’s contentions. Hence, the Respondent’s activities are not known.
The disputed domain name was registered on July 19, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy are applicable to this dispute.
In relation to element (i), that is, that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Complainant contends that LEGO is its trademark. According to Superbrands UK, LEGO is ranked number 8 out of the most famous trademarks and brands in the world. LEGO is registered in a large number of countries, such as: Argentina, Australia, Austria, Bolivia, Brazil, Canada, Chile, China, Cuba, Denmark, Egypt, Ethiopia, Fiji, Finland, France, Germany, Ghana, Greece, Hong Kong, China, Hungary, India, Indonesia, Iran, Ireland, Italy, Japan, Kuwait, Liberia, Madagascar, Malawi, Mauritius, Mexico, New Zealand, Nigeria, Norway, Oman, Pakistan, Panama, Peru, Portugal, Philippines, Poland, Qatar, Romania, the Russian Federation, Saudi Arabia, Sierra Leone, Singapore, South Africa, Spain, Sweden, Switzerland, Taiwan Province of China, United Republic of Tanzania, Turkey, Uganda, United Arab Emirates, United Kingdom of Great Britain and Northern Ireland, United States of America, Venezuela, Viet Nam, Zambia, etc. In most of the countries the said trademark is registered in Class 28. However, in certain countries it is also registered in other Classes, including 3, 9, 14, 16, 20, 24, 25, 38, 41 and 42. A detailed list of the countries where the trademark LEGO is registered and the Classes in which it is registered is provided by the Complaint.
The Complainant has contended that the disputed domain name includes its trademark LEGO. Anyone who sees the disputed domain name may believe that it is the domain name of the Complainant or that it is associated with it or has some kind of commercial relationship with the Complainant. Therefore, the likelihood of confusion cannot be ruled out. Thus, the disputed domain name is identical or confusingly similar to the Complainant’s trademark LEGO.
The Complainant further contends that it is the owner of more than 2,400 domain names containing the word “lego” and it is the strict policy of the Complainant that all domain names containing the word “lego” should be owned by the Complainant.
In relation to element (ii), that is, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, the Complainant contends that the Respondent has never registered the LEGO trademark or any similar trademark. The Respondent (as an individual, business, or other organization) has not been commonly known by the domain name . The Respondent is known by the name of Mr. Aarsl Khan.
The Complainant has not given any license or authorization to use the trademark LEGO to the Respondent. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. Further, the Respondent is neither making a legitimate or fair use of the disputed domain name, nor is it using the disputed domain name in connection with a bona fide offering of goods or services. It is contended that the Respondent has no rights or legitimate interests in the disputed domain name.
Thus, the Respondent registered the disputed domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant.
Regarding the element (iii), that is, that the disputed domain name has been registered and is being used in bad faith, the Complainant contends that the Respondent’s object in registering was to earn profit by misleading the general public and the customers of the Complainant. The Respondent is not an authorized reseller of the Complainant’s goods. The Respondent’s use of the disputed domain name cannot be considered to be bona fide offering of goods and services.
On August 15, 2013 the Complainant alleges it sent a cease and desist letter to the Respondent. A reminder was also sent on October 7, 2013. However, the Respondent has failed to respond. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable” including the “WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy”, as “the Supplemental Rules”.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(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. A. Identical or Confusingly Similar
The present dispute pertains to the following domain name , which includes the word “lego”. The disputed domain name also contains the word “movie”. According to the Complainant, the addition of the words “movie” and “com” do not have any impact on the overall impression that the dominant part of the name-“lego”- is instantly recognizable as a world famous trademark. The Complainant is also the owner of the domain name which is similar to the disputed domain name.
It has been held in a number of UDRP decisions that the addition of the generic Top Level Domain “.com”, which is necessary for a domain name to be operational, is typically disregarded for the purposes of determining confusing similarity under the first element of the Policy. See Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493 and Société Générale and Fimat International Banque v Lebanon Index/La France DN and Elie Khouri,WIPO Case No. D2002-0760.
As has been mentioned above, the LEGO trademark of the Complainant is registered in many countries. The Complainant also owns 2,400 domain names incorporating the trademark LEGO. The disputed domain name contains the word “lego”. Thus, the Panel finds that the disputed domain name is confusingly similar to the registered trademark of the Complainant. B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the disputed domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed 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 disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not filed any response in this case. The Complainant has not given any license or authorization to use the trademark LEGO to the Respondent. There is no evidence to suggest that the Respondent has become known by the disputed domain names anywhere in the world. Based on the default and the evidence in the Complaint, it is presumed that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name. See Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, wherein it has been held that, “in the absence of any license or permission from the complainant to use any of its trademarks or to apply or to use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent.” See also Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221.
LEGO is the name and trademark of the Complainant. It is evident that the Respondent can have no legitimate interest in the domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its name or trademark or to apply for or use any domain name incorporating said name and that nobody could use the word “Lego” unless seeking to create an impression of association with the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The contention of the Complainant is that the present case is covered by the second, third and fourth circumstances. The disputed domain name was registered and is being used in bad faith. The Complainant has furnished evidence supporting its allegation that the disputed domain name is being used by the Respondent to exploit the consumer’s trust in the Complainant’s reputation and goodwill. The Respondent is not offering goods or services on the website. It only leads to a website that promotes videos and lists movies. The Respondent is misleading consumers and confusing them so as to lure them to other websites making them believe that the websites behind those links are associated with the Complainant.
In the Panel’s assessment, the available record leads to the conclusion that the disputed domain name was registered and is being used by the Respondent in bad faith. 7. Decision
In light of the foregoing findings, namely, that the disputed domain name is confusingly similar to a mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith, in accordance with Paragraphs 4(i) of the Policy and Rule 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Vinod K. Agarwal
Sole Panelist
Date: February 7, 2014
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