The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Martin Schwaller of Vienna, Austria. 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 May 13, 2014. On May 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2014, 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 May 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2014.
The Center appointed Emmanuelle Ragot as the sole panelist in this matter on July 9, 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 based in Denmark (Annex 7 of the Complaint) and is the owner of LEGO, and all other trademarks used in connection with the famous Lego brands of construction toys and other Lego branded products.
The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in India, Australia and elsewhere.
The Complainant has subsidiairies and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Austria.
The Complainant is also the owner of more than 2,400 domain names containing the word “lego” (Annex 8 of the Complaint).
It is the strict policy of the Complainant that all domain names containing the word LEGO should be owned by the Complainant.
The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising and promotional materials. Indeed, the LEGO trademark and brand have been recognized as being famous.
The LEGO trademark is registered in favor of the Complainant in numerous countries around the world and still in use. The Complainant has submitted evidence that it holds said trademark (Annex 6 of the Complaint) and associated domain names (Annex 8 of the Complaint).
The Complainant provided a list (Annex 9 of the Complaint) of the official top 500 Superbrands for 2014, provided by Superbrands UK, showing LEGO as winner in the category “Child Products - Toys and Education”.
The Complainant has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.
The Complainant also maintains an extensive website under the domain name (see Annex 10 of the Complaint).
The Respondent was informed that the disputed domain name was, according to the Complainant, infringing the trademark rights of the Complainant and was requested to transfer the disputed domain name to the Complainant on April 4, 2014 (Annex 12 of the Complaint) and also on April 11 and 23, 2014 (Annex 13 of the Complaint).
The disputed domain name was created on March 19, 2014 (Annex 2 of the Complaint) prior to the filing of the Complaint, the disputed domain name directed to a website which was still under construction to some extent but was already commercial through sponsored ads (Annex 11 and 14 of the Complaint).
The Complainant requests the disputed domain name be transferred to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant has rights in its registered trademark LEGO, which is a famous mark.
The Complainant is using its mark and is entitled to prevent any third parties from infringing its rights.
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s famous mark LEGO because (1) the disputed domain name incorporates the trademark in its entirety and (2) the addition of the term “-” does not sufficiently distinguish the disputed domain name from that trademark.
The Complainant points to the fact that its registration and use of LEGO trademarks predates the Respondent’s registration and use of the disputed domain name.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) the Complainant has exclusive rights in the LEGO trademark and has granted the Respondent neither a license / permission / authorization nor any other consent to such use of the trademark in the disputed domain name and (2) the Respondent obviously uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s LEGO trademark and (3) the disputed domain name clearly alludes to the Complainant.
Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith since, at the time of registration of the disputed domain name on March 19, 2014, the Respondent had knowledge of the Complainant’s LEGO mark, and the disputed domain name has been used for commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Respondent’s default in the case at hand does not automatically result in a decision in favor of the Complainant. However, paragraph 5(e) of the Rules provides that if a respondent does not submit a response, in the absence of special circumstances, the panel is to decide the dispute based upon the complaint. A. Identical or Confusingly Similar
Numerous UDRP panels have established that the addition of words, letters or numbers to a mark in a domain name does not alter the fact that the domain name is confusingly similar to the mark.
In the case at hand, the additional language added namely “-com” and the generic Top-Level Domain “.com” does not prevent a finding of confusing similarity.
The disputed domain name incorporates the whole LEGO mark of the Complainant and adds “.-”.
The Panel concludes that the disputed domain name is confusingly similar to the trademark LEGO in which the Complainant has shown to have rights.
Therefore the first element under the Policy as set forth in paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name.
LEGO is not a dictionary word and is used by the Complainant in connection with its products.
The Complainant or its affiliate companies have not authorized the Respondent to use the mark LEGO in any domain name.
The Complainant or its affiliate companies have not granted the Respondent with a licence to use the mark LEGO in any manner.
The use of the disputed domain name does not allow the Panel to conclude that the Respondent has rights or legitimate interests in relation to the disputed domain name.
Therefore the second element under the Policy as set forth in paragraph 4(a)(ii) in the case at hand is fulfilled. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by the Respondent in bad faith.
The Panel takes the view that the direction of the disputed domain name, which is confusingly similar to the Complainant’s trademark LEGO, is a clear indication that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with the Complainant’s LEGO trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or a product thereon (Annex 11 and 13 of the Complaint).
Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, the Respondent failed to respond to the Complainant’s cease and desist letter and failed to respond to the Complaint.
Therefore, the Panel finds that also the third element under the Policy as set forth in paragraph 4(a)(iii) is fulfilled and that, accordingly the Complainant has satisfied all of the three requirements of paragraph 4(a) 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.
Emmanuelle Ragot
Sole Panelist
Date: July 31, 2014
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