The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Jorge Robredo, Strand online of Madrid, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 7, 2015. On August 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2015, 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. In response to a notification by the Center, the Complainant filed an amendment to the Complaint on August 24, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 15, 2015.
The Center appointed Steven Auvil as the sole panelist in this matter on October 7, 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, based in Denmark, 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 word mark LEGO (Reg. No. 000039800) was registered in the European Union on May 10, 1998. The design mark LEGO (Reg. No 000039834) was registered in the European Union on September 11, 1998. The Complainant is also the owner of the DIMENSIONS trademark application in the European Union, filed on April 28, 2015.
The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in the European Union, where the Respondent is based.
The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries.
The Complainant is also the owner of close to 4,300 domain names containing LEGO.
The trademark LEGO is among the best-known trademarks in the world pertaining to toys, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.
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 disputed domain name was registered on April 11, 2015. 5. Parties' Contentions A. Complainant
The Complainant asserts the disputed domain name is identical or confusingly similar to its famous LEGO marks. The fame of LEGO has been confirmed in numerous previous UDRP decisions. The Complainant also asserts that the term "dimensions" is closely linked and associated with the Complainant's brand and trademark. The Complainant further contends that the addition of the generic Top-Level Domain (gTLD) ".website" does not detract from the overall impression which is confusingly similar to the Complainant's trademarks.
The Complainant claims that anyone who sees the disputed domain name is bound to mistake it for a name related to the Complaint, thereby establishing a likelihood of confusion by establishing an obvious association with the Complainant's trademarks.
The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not found any registered trademarks or trade names that belong to the Respondent corresponding to the disputed domain name. In addition, no details have been found that would give the Respondent any rights or legitimate interests in the disputed domain name.
The Complainant asserts that no license or authorization of any kind has been given to the Respondent to use the LEGO marks. The Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant. The Complainant furthermore claims that the disputed domain name is used to generate traffic and income through a website that is commercial through sponsored links.
Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant attempted to contact the Respondent by sending a cease and desist letter by email. No response was ever received. The Complainant claims that the Respondent was aware of the Complainant's rights to the famous LEGO marks and tried to use the value associated with the marks to divert consumers for a commercial gain. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a vast number of trademark registrations for LEGO. Moreover, as recognized in numerous prior panel decisions, the trademark LEGO is indisputably well-known worldwide particularly as it relates to toys.
The dominant part of the disputed domain name comprises the term LEGO, identical to the Complainant's registered trademark LEGO. By using the LEGO trademarks as a dominant part of the disputed domain name, the Respondent exploits the goodwill of the trademarks, which may cause confusion, dilute the distinctiveness of the mark and cause other damage to the Complainant's trademarks.
In addition to the registered trademark LEGO, the domain name also comprises the term "dimensions." In September 2015, the Complainant released "LEGO Dimensions," an action-adventure video game based on LEGO themes. The addition of terms that have an obvious relationship to the Complainant's business creates a confusing similarity between the disputed domain name and the registered mark. See Deutsche Lufthansa AG v. Nadeem Qadir,WIPO Case No. D2009-0003 (the addition of a word that "describes the goods or services of the Complainant [ ] contributes to the confusion").
The addition of the generic Top-Level Domain (gTLD) ".website" does not have any impact on the overall impression of the dominant portion of the disputed domain name and is typically irrelevant to determine the confusing similarity or identity between the trademark and the domain name. See Real Madrid Club de Futbol v. Manuel Mateo Peñalver,WIPO Case No. D2014-2037 ("The addition of the gTLD ".website" is insufficient to avert confusing similarity between the disputed domain name and the Complainant's [ ] trademark").
In view of the grounds above, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to the LEGO trademarks in which the Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has also established that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
According to the Complainant, no license or authorization of any other kind has been given by the Complainant to the Respondent. The Complainant has also not found nor is this Panel aware of anything that would suggest that the Respondent has been using the term "lego" in any other way that would give him any legitimate rights in the term.
It is highly unlikely that the Respondent would not have known of the Complainant's legal rights in the term "lego" at the time of the registration.
The Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services, but rather to generate traffic and income through an online shop of products produced by the Complainant and other unrelated products and to misleadingly divert consumers for its own commercial gain. For example, the landing page of the website shows links named "LEGO Games Free Online" and "LEGO Movie", among others.
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut. See LEGO Juris A/S v. Danaka Tarou,WIPO Case No. D2015-0315 ("Under the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name").
Under such circumstances and in the absence of a reply from the Respondent, the Panel finds that the Complainant has made an unrebutted prima facie case. As a result, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith.
In the Panel's view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the LEGO mark in mind as the LEGO mark had already been registered globally for decades, had acquired a high reputation and being a well-recognized trademark (LEGO Juris A/S v. M. Moench,WIPO Case No. DNL2009-0052).
The Respondent's knowledge of the LEGO mark is further enhanced by the fact that the Respondent uses the website under the disputed domain name to access links that directly relate to the Complainant's industry.
Like the panel in LEGO Juris A/S v. Danaka Tarou, supra,,the Panel in this case finds that the only credible explanation for the use of the disputed domain name is to take advantage of the similarity between it and the Complainant's distinctive and well-known LEGO trademark, for commercial advantage.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith, and that also the third and last element of paragraph 4(a) of the Policy is met. 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.
Steven Auvil
Sole Panelist
Date: October 23, 2015
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