The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Park KyeongSook of GimHae, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Dainam, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2016. On June 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. After several reminders, on June 30, 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 of the Respondent.
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 July 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2016.
The Center appointed Matthew Kennedy as the sole panelist in this matter on July 29, 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. 4. Factual Background
The Complainant is the owner of LEGO trademarks used in connection with construction toys and other products, including the “LEGO City” range of products. The Complainant is the owner of multiple trademarks including European Union Trade Mark (“EUTM”) registration no. 39800 for LEGO, registered on October 5, 1998, and Republic of Korea trademark registration no. 4000666760000 for LEGO and device, registered on January 21, 1980. The Complainant’s trademark registrations specify goods in multiple classes including games and playthings in class 28. The Complainant is also the registrant of many domain names that contain the word “lego” including which resolves to a website providing information on Lego toys, games and other products.
The Respondent is the registrant of the disputed domain name, which was registered on October 30, 2015. The disputed domain name is parked at a webpage that displays links to other websites, many of which offer for sale toys and games unrelated to the Complainant. The webpage indicates that the owner of the disputed domain name “is offering it for sale for an asking price of 2880 USD!”. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s LEGO trademark. The dominant part of the disputed domain name is identical to that trademark. The disputed domain name also includes the suffix “-city” but neither the hyphen nor the suffix detracts from the overall impression.
The Respondent has no rights or legitimate interests in the disputed domain name. No license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. The Respondent has intentionally chosen the disputed domain name based on a registered trademark in order to generate traffic and income through a website that is commercial through sponsored links. The Complainant has found no evidence that the Respondent is using the name “Lego” as a company name or has any other legal rights in the name.
The disputed domain name was registered and is being used in bad faith. The Complainant’s LEGO trademark in respect of toys is a well-known and reputed trademark throughout the world. The disputed domain name was registered later than the Complainant’s trademark registrations. The Respondent is using the disputed domain name intentionally to attempt to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark 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
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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
Based on the evidence submitted, the Panel finds that the Complainant has rights in the LEGO trademark.
The disputed domain name incorporates the LEGO trademark in its entirety. The LEGO trademark is the initial and dominant element of the disputed domain name.
The disputed domain name also includes the additional element “-city”. The word “city” is merely a dictionary word. Dictionary words do not normally have the capacity to distinguish a domain name from a trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. In this case, the addition of the word “city” is actually likely to increase the confusing similarity to the Complainant’s LEGO trademark because it implies an association with the Complainant’s “LEGO City” range of products. Further, the hyphen between “lego” and “city” is a mere punctuation mark and has no capacity to distinguish the disputed domain name from the Complainant’s trademark.
Another additional element in the disputed domain name is the generic Top-Level Domain (“gTLD”) suffix “.com”, but a gTLD suffix generally has no capacity to distinguish a domain name from a trademark. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or 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; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate non-commercial 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 Panel has already found that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark. The Complainant informs the Panel that it has never licensed or authorized the Respondent to use its LEGO trademark.
As regards the first circumstance above, the disputed domain name is parked at a webpage displaying links to websites, many of which offer for sale toys and games unrelated to the Complainant. This indicates that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services for the purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Accordingly, the Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent’s name is “Park KyeongSook”, not “lego-city” nor “lego” nor “city”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance, the disputed domain name is parked at a website that displays links to commercial websites. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not respond to the Complaint and hence failed to rebut the Complainant’s case.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”
The Respondent registered the disputed domain name in 2015, many years after the Complainant obtained its trademark registrations, including in the Republic of Korea where the Respondent is located. The disputed domain name wholly incorporates the Complainant’s LEGO trademark. The choice to combine the Complainant’s LEGO trademark with the word “city” indicates an awareness of the Complainant’s “LEGO City” range of products. The Respondent offers no alternative explanation for its choice of the disputed domain name. This all gives the Panel reason to believe that the Respondent was aware of the Complainant’s LEGO trademark at the time that he registered the disputed domain name and deliberately chose to register it as part of the disputed domain name.
The Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s LEGO trademark, to park it at a webpage that generates links to other websites, many of which offer for sale toys and games unrelated to the Complainant. Customers searching for the Complainant’s “LEGO City” products are likely to be attracted to this webpage and potentially diverted to sites selling products of the Complainant’s competitors. This use is intentional and either for the Respondent’s own commercial gain, if he is paid to direct traffic to those websites, or for the commercial gain of the operators of those websites. In either scenario, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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.
Matthew Kennedy
Sole Panelist
Date: August 2, 2016
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