The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Travis Bliffen of Johnston City, Illinois, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Cool Breeze Domains, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 31, 2016, naming PERFECT PRIVACY, LLC as the Respondent.
The Center transmitted its request for registrar verification to the Registrar on June 1, 2016. The Registrar replied on the same date, confirming that the Domain Name was registered through it, that the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") applied, that the language used at the time of registration was English, and that the expiry date is October 1, 2016. The Registrar stated that the registrant of the Domain Name is Travis Bliffen and provided the full contact details held on its WhoIs database.
The Center informed the Complainant on June 6, 2016 that the Registrar had identified the registrant of the Domain Name as Travis Bliffen and invited the Complainant to amend the Complaint in the light of this information. The Center also notified the Complainant on the same date that the Complaint was deficient in that the details provided regarding the Registrar were not correct and required the Complainant to amend the Complaint to cure this deficiency. The Complainant submitted an amended Complaint and updated annexes on June 7, 2016, naming Travis Bliffen as the Respondent and correcting the details of the Registrar.
The Center verified that the amended Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2016.
The Center received an email from the Respondent on June 14, 2016, confirming that he had received notification of the Complaint, and asking to clarify the issue "so that we can work together to resolve it". The Center replied, copying in the Complainant, and pointing out that all communications should be copied to the other party. The Complainant replied to the Respondent on June 16, 2016, stating that the Complainant was willing to suspend the case if the Respondent was willing to transfer the Domain Name.
On June 29, 2016, the Center wrote to the Parties pointing out that the proceeding could be suspended to implement a settlement agreement and that if the Parties wished to explore settlement options, the Complainant should submit a request for suspension by July 6, 2016. The Responded replied on June 29, 2016, stating "I am willing to transfer to solve this issue", and the Complainant submitted a request for suspension of the proceeding on June 30, 2016. The Center suspended the proceeding on July 1, 2016 until July 31, 2016.
On July 27, 2016, the Complainant informed the Center that the dispute had not been settled since it had not received a signed settlement form from the Respondent. The Complainant therefore requested that this administrative proceeding be reinstated. The proceeding was reinstated on July 28, 2016 and the Center notified the Parties accordingly.
No Response to the Complaint was received from the Respondent.
The Center appointed Jonathan Turner as the sole panelist in this matter on August 8, 2016. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the amended Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant is a member of the Lego group of companies and the proprietor of registrations of the marks LEGO (registered in Denmark on May 1, 1954) and LEGOLAND (European Union trademark registered on October 5, 1998). These marks are used on a very extensive scale under licence from the Complainant. Use of the LEGOLAND mark includes use for theme parks and hotels.
The Domain Name was registered on October 1, 2015, and was directed to a web page promoting a transport service to a Legoland theme park.
The Complainant sent a cease-and-desist letter to the Respondent on October 28, 2015, with reminders on November 4 and November 11, 2015, but did not receive any reply. The web page located by the Domain Name was subsequently changed to feature various accessories for trucks. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the LEGO and LEGOLAND marks in which it has registered rights. The Complainant points out that these marks have substantial inherent and acquired distinctiveness. The Complainant adds that the word "shuttle" included in the Domain Name is generic.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has not given any licence or authorization to the Respondent to use its LEGO and LEGOLAND marks and that the Respondent is not an authorized dealer in its products. According to the Complainant, in the absence of permission, no bona fide or legitimate use of the Domain Name could be claimed by the Respondent. The Complainant contends that it is obvious that the fame of its marks motivated the Respondent to register the Domain Name and that the Respondent is simply trying to sponge off them. The Complainant denies that the Respondent is using the Domain Name in connection with a bona fide offering of goods or services.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant points out that the Domain Name was registered in October 2015, long after the Complainant registered its LEGO and LEGOLAND trademarks, and that the Respondent clearly knew of the Complainant's rights when he registered the Domain Name. The Complainant considers that the Respondent's failure to answer its cease-and-desist letter is evidence of bad faith. The Complainant points out that there was no disclaimer on the Respondent's web page making it clear that he was not authorized by the Complainant. The Complainant invokes paragraph 4(b)(iv) of the UDRP, claiming that the Respondent is using the Domain Name intentionally to attempt to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant's marks as to source, sponsorship, affiliation or endorsement.
The Complainant requests a decision that the Domain Name be transferred to it. B. Respondent
As stated above, the Respondent did not submit a Response but did state unequivocally that he was willing to transfer the Domain Name 6. Discussion and Findings
As recorded above, in his email of June 29, 2016, the Respondent gave his unambiguous consent to the transfer of the Domain Name, which is the remedy requested by the Complainant.
As noted in section 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), WIPO Panels have held in a number of cases that where the Respondent gives such consent, even if there has been no agreed settlement, the Panel has a discretion to order transfer of the Domain Name without further analysis.
In this case, the Panel sees no reason not to exercise its discretion to order transfer in accordance with the Respondent's consent, without the need to analyze further the merits of the case. 7. Decision
For the foregoing reason, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Jonathan Turner
Sole Panelist
Date: August 11, 2016
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