The Complainant is LEGO Juris A/S, Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Alex Newton, London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) / Identity Protection Service, Identity Protect Limited, Surrey, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Mesh Digital Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2015. On January 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 26, 2015 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 January 27, 2015 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 January 27, 2015.
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 January 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2015.
The Center appointed Theda König Horowicz as the sole panelist in this matter on March 13, 2015. 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 part of the LEGO Group which commercializes worldwide child products, in particular the famous LEGO building bricks.
The Complainant owns a large number of registrations for the well-known LEGO trademark including but not limited to:
- CTM Registration for the word mark LEGO No. 000039800, in international classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42, of October 5, 1998.
- CTM Registration for the figurative mark LEGO No. 000039834, in international classes 3, 9, 16, 20, 24, 25, 28 and 42 of November 9, 1998.
- UK Registration for the word mark LEGO No. UK00000754628, in international class 28, of June 11, 1956.
The Complainant also holds a huge range of domain names comprising the trademark LEGO, notably and which are linked to the official Lego website.
The Respondent registered the domain name on October 12, 2014 and linked it to a website displaying sponsored links.
The Complainant sent a cease and desist letter to the Respondent on November 17, 2014 asking for the voluntary transfer of the disputed domain name. No answer was given by the Respondent to the said warning letter despite some reminders sent by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name comprises the term “lego” which has been registered for many years by the Complainant and which has been considered in several UDRP decisions as being well-recognized and world famous. The disputed domain name is clearly confusingly similar to the Complainant’s LEGO mark as it reproduces the latter in its entirety.
The Complainant is of the opinion that considering the fame of the LEGO mark, the Respondent cannot claim to have been using the said mark without being aware of the Complainant’s rights to it. The Respondent can neither claim any rights established by common usage and no authorization was ever provided to him by the Complainant to use the trademark LEGO. As a matter of fact, the Respondent is using the LEGO trademark in order to mislead Internet users to a commercial website. For these reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant underlines that the disputed domain name was registered subsequently to when the Complainant registered the trademark LEGO in the United Kingdom where the Respondent resides. Considering that LEGO is a world famous trademark it is clear that the Respondent knew of the Complainant’s rights in the trademark LEGO at the time of registration. The use of the disputed domain name to direct traffic to the Respondent’s commercial website with sponsored links and the fact that the Respondent did not react to the Complainant’s warning letter constitutes bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
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 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 Complainant has shown itself to have rights in the trademark LEGO in several countries, including in the United Kingdom where the Respondent is based.
It is obvious that the disputed domain name, which comprises “lego” in its entirety, is identical or confusingly similar to the Complainant’s mark.
The first condition of the Policy is therefore fulfilled. B. Rights or Legitimate Interests
The Complainant has made a prima facie case showing that the Respondent has no rights to or legitimate interests in the disputed domain name.
Indeed, the Complainant very clearly stated that it never authorized the Respondent to use its well-known trademark LEGO by any means whatsoever.
The burden of production thus shifts to the Respondent to show by concrete evidence that he does have rights or legitimate interests in the disputed domain name (See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.WIPO Case No. D2004-0110).
No submission was filed by the Respondent.
In this context, the Panel notes that there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name.
Furthermore, the Respondent linked the disputed domain name to a webpage containing sponsored links leading to third-party websites thus misleading Internet users.
In the circumstances, such conduct cannot constitute a bona fide offering of goods or services.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has thus established this second condition of the Policy. C. Registered and Used in Bad Faith
It is undisputed that LEGO has acquired worldwide throughout the years the status of a well-known trademark, particularly in the United Kingdom where the Respondent is based.
Considering this status, the Panel is of the opinion that the Respondent could not have been ignorant of the Complainant’s mark at the time of registration and thus registered the disputed domain name in bad faith.
The fact that the Respondent linked the disputed domain name to a webpage providing sponsored links, thus attracting Internet users to websites which are not related to the Complainant, likely for commercial gain, constitutes use in bad faith.
Considering the above, the Panel finds that the third condition of the Policy is also fulfilled. 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.
Theda König Horowicz
Sole Panelist
Date: April 1, 2015
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