The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Edward Neville of Wokingham, Berkshire, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with 123-Reg Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2016. On April 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2016.
The Center appointed Leticia Caminero as the sole panelist in this matter on May 31, 2016. 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.
The language of the Registration Agreements in respect of the disputed domain name is English and the Complaint was filed in English. 4. Factual Background
The Complainant is a corporation based in Denmark, which owns the well-known trademark LEGO and other related trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products.
The Complainant has provided a list of trademarks that declares registration in over 150 jurisdictions and some of which date back several decades. This list includes the United Kingdom with a trademark registration since 1957. Furthermore, in a separated document there is a Community trademark certificate of registration issued by the Office for Harmonization in the Internal Market (OHIM), currently European Union Intellectual Property Office (EUIPO), confirming registration since 1999. The Respondent is based in both of the mentioned jurisdictions.
LEGO has been recognized as worldwide famous trademark by the Superbrands UK in their list of the official top 500 Superbrands for 2015, the Reputation Institute which nominated LEGO Group as number 5 on their list of The World’s Most Reputable Companies, the TIME as the Most Influential Toy of All Time, and the Brand Finance as the most powerful brand in the world.
For numerous years the Complainant has been offering tours to its LEGO factory.
The Complainant states ownership of over 4,300 domain names containing the trademark LEGO.
The Respondent registered the disputed domain name on September 12, 2010. It is used in connection to a website that sponsors links, many of which are unrelated to the Complainant. However, the use of the trademark LEGO can be found throughout the website. 5. Parties’ Contentions A. Complainant
First, the Complainant argues that the disputed domain name is identical on its dominant part to the registered trademark LEGO.
Likewise, the Complainant asserts that the disputed domain name is confusingly similar to the registered trademark LEGO, as the disputed domain name consist of its well-known trademark LEGO, followed by a generic term “tour” and the generic Top-Level Domain (gTLD) “.com”.
The Complainant cites earlier UDRP panel decisions where the worldwide fame of the trademark LEGO has been asserted. LEGO Juris A/S v. Level 5 Corp,WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715; LEGO Juris A/S v. Reginald Hastings Jr.,WIPO Case No. D2009-0680.
Furthermore, supported by other previous UDRP panel decisions, the Complainant claims the irrelevance of the generic term “tour” and its incapacity to detract from the overall impression made by the well-known trademark LEGO.
Correspondingly, the Complainant states an equal lack of impact on the overall impression concerning the addition of the gTLD “.com”. Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488.
Second, the Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name . Given that the Respondent has not received a license or authorization of any other sort from the Complainant, neither is an authorized dealer of its products and has never had a business relationship with the Complainant.
Based on a previous UDRP panel decision, the Complainant argues that any use of its famous trademark LEGO in a domain name violates the granted exclusive rights. Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.,WIPO Case No. D2001-1314.
Moreover, the Complainant states that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but with the intention to generate traffic and income through a sponsored links website unrelated to the Complainant.
Additionally, the Complainant asserts the absence of evidence that the Respondent is using the name LEGO as a company name or has any other legal rights over the name. The Complainant quoting Drexel University v. David Brouda,WIPO Case No. D2001-0067, declares that the Respondent would not have chosen the name LEGO if not for creating an impression of association with the Complainant.
Third, the Complainant states that the Respondent registered and uses the disputed domain name in bad faith. Since the Respondent registered the disputed domain name decades after the Complainant’s trademark registration in the United Kingdom and the European Union. Therefore, the Respondent was aware of the Complainant’s trademark rights and the trademark value. In addition, the Complainant referring to the Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273 and other related decisions, states that the incorporation of a well-known trademark into a domain name may be in and of itself an indication of bad faith.
The disputed domain name is connected to a website that is commercial through sponsored links, of which many are not related to the Complainant in any away. Likewise, most of those links direct users to websites offering for sale products other than LEGO, and without a disclaimer. The Complainant claims that is irrelevant for the finding of bad faith, whether or not the Respondent influences over the sponsored links or receives revenue from this website. Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912.
The Complainant declares that the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to its website for commercial advantage, by producing a likelihood of confusion with the LEGO trademark as to the source, sponsorship, affiliation or endorsement of its website. 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 must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark LEGO 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.
The Complainant bears the burden of proof on each of these elements. Since the Respondent did not present a response to the Complaint, the Panel may draw appropriate inferences from such a default. However, the Complainant must still support its allegations with actual evidence to succeed in a UDRP proceeding. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name entirely consists of the Complainant trademark LEGO, followed by the generic term “tour” and the gTLD “.com”. These generic elements are not sufficient to distinguish the disputed domain name from the trademark, since the disputed domain name’s first and dominant part is the trademark LEGO. Consequently, the disputed domain name is confusingly similar to the trademark LEGO.
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by the Complainant. B. Rights or Legitimate Interests
There is no evidence that the Respondent before any notice of the present dispute, used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is used in connection to a website that sponsors links, many of which are unrelated to the Complainant or its products. Additionally, the trademark LEGO can be found throughout the website without any disclaimer.
There is no evidence that the Respondent has been commonly known by the disputed domain name.
There is no evidence that 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’s commercial use of the disputed domain name has been established by the presence of sponsored links.
The Panel concludes that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name .
The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by the Complainant. C. Registered and Used in Bad Faith
The Panel concludes that there is evidence of the registration and use of the disputed domain name in bad faith. Since the Complainant has worldwide trademark and domain name registrations, as well as an extensive use of LEGO, which includes the United Kingdom and the European Union, it could be determined that the Respondent knew about the fame of the Complainant’s trademark at the time of the registration and chose the disputed domain name with the purpose of intentionally attempting to attract, for commercial gain, Internet users to the disputed domain name’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement.
The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant. 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.
Leticia Caminero
Sole Panelist
Date: June 12, 2016
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