The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent And The Grenadines Kingstown / Domain Admin, Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2014. On July 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2014, 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 July 29, 2014, 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 July 29, 2014.
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 July 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2014.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 29, 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 the owner of the trademarks LEGO and LEGOLAND around the world, including the following registrations:
Australian
Registration No. A 360.433
for LEGOLAND
Canadian
Registration No. TMA 328,486
for LEGOLAND
United States of America
Registration No. 1,344,008
for LEGOLAND
United Kingdom of Great Britain and Northern Ireland
Registration No. 950,465
for LEGOLAND
New Zealand
Registration No. 104,424
for LEGOLAND
Austrian
Registration No. 96.339
for LEGOLAND
Chinese
Registration No. 257.147
for LEGOLAND
German
Registration No. CTM 54205
for LEGOLAND
Hong Kong, China
Registration No. 492/1974
for LEGOLAND
Japanese
Registration No. 1.155.550
for LEGOLAND
The Complainant is in the business of manufacturing and selling LEGO branded toys. The Complainant has subsidiaries and branches throughout the world, and LEGO branded products are sold in more than 130 countries, including Australia. The Complainant owns over 2,400 domain names containing the term “lego”. The Complainant has extensively advertised and promoted the LEGO trademark on all products, packaging, displays, advertising and promotional materials.
The Complainant has licensed Merlin Entertainment to use the trademark LEGOLAND in association with theme parks, hotels, entertainment, sporting and cultural activities. The Complainant’s licensee’s LEGOLAND parks have approximately 1.4 million visitors per year.
The disputed domain name was registered on January 7, 2010, and at the time the Complaint was filed reverted to a website that provide links to third party websites. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant submits that it owns many trademark registrations for the trademark LEGO around the world, including the following Registrations:
Australian
Registration No. A 360.433
for LEGOLAND
Canadian
Registration No. TMA 328,486
for LEGOLAND
United States of America
Registration No. 1,344,008
for LEGOLAND
United Kingdom of Great Britain and Northern Ireland
Registration No. 950,465
for LEGOLAND
New Zealand
Registration No. 104,424
for LEGOLAND
Austrian
Registration No. 96.339
for LEGOLAND
Chinese
Registration No. 257.147
for LEGOLAND
German
Registration No. CTM 54205
for LEGOLAND
Hong Kong, China
Registration No. 492/1974
for LEGOLAND
Japanese
Registration No. 1.155.550
for LEGOLAND
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered trademarks LEGO and LEGOLAND. The addition of the term “waterpark” does not distinguish the disputed domain name from the Complainant’s famous LEGO and LEGOLAND trademarks. In fact, the descriptive term “waterpark” add to the confusion between the disputed domain name and the Complainant’s trademarks. Rights and Legitimate interests
The Complainant contends that the Respondent was never authorized or licensed to use the Complainant’s LEGO and LEGOLAND trademarks. The Respondent is not commonly known by the “lego” name. The Complainant submits that the use of a famous confusingly similar trademark in association with a website that provides links to third party websites for the purposes of monetary gain does not demonstrate a bona fide offering of goods and services. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because the Respondent must have been aware of the Complainant’s famous LEGO and LEGOLAND trademarks. The Respondent registered and is using the disputed domain name to interfere with the Complainant’s business and is attempting to trade on the goodwill of the Complainant’s reputation. The Respondent is using the disputed domain name in association with a website that provides links to third party websites for purposes of monetary gain. The Respondent did not respond to the Complainant’s offer to compensate the Respondent for out-of-pocket expenses for the registration and transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(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 Panel finds that the Complainant owns registered trademark rights in the LEGO and LEGOLAND trademarks by virtue of the trademark registrations listed in section 4 above.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks LEGO and LEGOLAND. The disputed domain name contains as a first and dominant element the Complainants’ trademark LEGOLAND, combined with the descriptive term “waterpark”. The addition of the term “waterpark” does not serve to distinguish the disputed domain name, rather it suggests the type of services or products provided.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds, on the evidence filed, that the Complainant’s trademarks have a substantial reputation worldwide, and as such the Respondent must have been aware of the Complainant’s trademark rights in the LEGO and LEGOLAND trademarks. The Respondent was never authorized or licensed to use the Complainant’s trademark. The disputed domain name reverts to a website that provides links to third party websites for purposes of monetary gain, and in the absence of any response, the Panel concludes that the Respondent does not hold any rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel concludes that due to the worldwide reputation of the LEGO trademark and products, the Respondent must have been aware of the Complainant’s trademarks when it registered and used the disputed domain name. The Respondent clearly intended to attract users to its website through the unauthorized use of the famous LEGO and LEGOLAND trademarks as the primary element of its domain name. The Respondent is using the disputed domain name in associated with a website which provides links to third party sites in what is commonly called a “click through site”, for purposes of monetary gain. In the absence of any evidence to the contrary, the Panel finds that the disputed domain name was registered and used in bad faith as per paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iIi) 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.
Christopher J. Pibus
Sole Panelist
Date: September 10, 2014
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