The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Sinisa Paler of Belica, Croatia. 2. The Domain Name and Registrar
The disputed Domain Name (the “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 July 20, 2016. On July 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 22, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on the same date providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on July 25, 2016.
The Center verified that the Complaint together with the amended 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 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2016. The Center received two email communications from the Respondent on July 28, 2016.
The Center appointed Ellen B Shankman as the sole panelist in this matter on August 26, 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 date of the Domain Name registration was confirmed by the Registrar to be December 21, 2015. The Complainant provided evidence of multiple trademark registrations for the mark LEGO including, inter alia, European Union Trademark No. 39800 (registered on October 5, 1998) that predates the date of the Domain Name registration for a wide variety of goods and services including toys and games.
The Panel also conducted an independent search to determine that the Domain Name is currently active, and resolves to Registrar “parking” pages with links providing click-through advertising with the LEGO brand.
Apart from two (2) brief communications by the Respondent to the Center the Respondent did not file any formal response. Since the Respondent did not respond beyond the identified emails, the facts regarding the use and fame of the Complainant’s mark, as well as other statements regarding correspondence between the parties including the non-response from the Respondent to the Complainant’s cease-and-desist letters, are taken from the Complaint and are generally accepted as true in the circumstances of this case. 5. Parties’ Contentions A. Complainant
The Complainant alleges it is one of the world’s most successful toy manufacturers and that its mark has not only been declared “well-known”, but has been declared “famous” and has been identified as one of the Consumer SuperBrands of 2015. The trademark LEGO is among the best-known trademarks in the world, 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 provides ample evidence of the fame of its brand as well as numerous trademark and domain name registrations worldwide. The Complainant showed that recently, TIME also announced LEGO to be the “Most Influential Toy of All Time”.
The Complainant alleges that LEGO Juris A/S, 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 Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights. Over the years, the business of making and selling LEGO-branded toys has grown remarkably. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries.
Moreover, the Complainant is the owner of close to 5,000 domain names containing the term “LEGO”. The Complainant states that is the strict policy of the Complainant that all domain names taking an unfair commercial advantage of the LEGO trademark should be recovered by the Complainant.
The Complainant also alleges that the mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered in the whole Community to be significant. According to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO goes far beyond toys and goods similar to toys.
The Complainant states that the Respondent is not an authorized user of the mark, nor is there any disclaimer on the website regarding the lack of connection between the Respondent and the Complainant. The Complainant alleges that the Respondent used the Domain Name to create a ‘parking page’ of paid advertisements. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a website that is commercial through sponsored links. Consequently, the Domain Name is being used for a commercial purpose.
The Complainant also alleges that the Domain Name was filed by the Respondent originally under a proxy registration in Panama, and was later determined to be resident in Croatia, where the Complainant has trademark protection as well. The Complainant sent the Respondent three cease-and-desist letters complaining of the infringing action and asking for transfer of the Domain Name, to which the Respondent did not reply. The Complainant says that due to the non-response, it chose to file this UDRP Complaint.
To summarize the Complaint, the Complainant is the owner of numerous registrations for the trademark LEGO, in respect of broad goods and services including toys and games. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the generic or descriptive word “games” and the generic Top Level Domain (“gTLD”) “.online” does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent was aware of the rights of the Complainant in the trademark and the value of the trademark at the point of registration of the Domain Name. The Respondent has used the Domain Name to attract individuals/users for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions and did not file a formal response.
The Center received two email communications from the Respondent on July 28, 2016 with the following content:
“i get complain about domain
i register this like newbie and i didnt never use
i will delete domain or take steps to resolve problem
dont want trouble
thank you”
The Center responded to the Respondent reiterating Respondent’s right to file a response. The Panel has considered the Respondent’s communication, but considers it to be more likely than not merely a tactic to delay the procedure. 6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has more than satisfactorily proven that it has registered trademark rights for and a well-established reputation in the LEGO brand and that, even though not a prerequisite under the first element of the Policy, these rights precede the date of the Respondent’s obtaining the Domain Name. This finding is consistent with the fact that the fame of the trademark has been confirmed in numerous previous UDRP decisions. For an example, in LEGO Juris A/S v. Level 5 Corp,WIPO Case No. D2008-1692, the panel held: “The Panel finds that the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive”. The Complainant also refers to LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715: “The Panel finds, as numerous panels have found before, that the Complainant has established that LEGO is a well-known trademark and that the trademark is distinctive and famous”, and LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680: “LEGO is a mark enjoying high reputation as construction toys popular with children”.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the generic and/or descriptive term “games” to the Domain Name does not change the overall impression of the designation as being connected to and underscores an attempted connection by the Respondent in the Domain Name to the trademark of the Complainant. The same is true for the gTLD “.online”, which does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark and its associated domain names - and if anything, enhances it. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the Complainant’s trademark”. In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488, it was stated that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. In this case, said term does not detract from the overall impression.
“The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name”. See: paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its mark.
The Panel finds that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO, and agrees with the Complainant’s argument and the finding in case Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055 in which the Panel stated that : “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”. Further, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. This was stated by the panel as a factor in the finding of nonlegitimate interests with the respondent in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds compelling factual and circumstantial evidence in the record that the Respondent knew of the Complainant’s mark when it registered the Domain Name. Given the distinctiveness of the Complainant’s widespread reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark and that the continued holding of the Domain Name is in bad faith. This is consistent with the holding in Pfizer Inc. v. Legal Dept, Barry McMahon and Pzifer ltd.,WIPO Case No. D2013-2046.
In addition, it has been held in previous UDRP cases that knowledge of a corresponding mark at the time of the domain name’s registration suggests bad faith. See e.g. LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464) and see, e.g., Bartercard Ltd & Bartercard International Pty Ltd. V. Ashton-Hall Computer Services,WIPO Case No. D2000-0177.
Furthermore, the Panel notes that the Domain Name is parked with the Registrar and contains sponsored links to other LEGO toys, from which the Respondent presumably earns click-through revenues attempting to attract consumers looking for the Complainant. There is no indication that the Respondent is making a legitimate use of the Domain Name or is using the Domain Name in connection with a bona fide offering of goods or services. The Panel finds such use satisfies bad faith under paragraph 4(b)(iv) of the Policy.
Even without evidence of actual revenues, some UDRP panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere “parking” by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals). See WIPO Overview 2.0, paragraph 3.2, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574.
Yet more, the Respondent has taken active steps to conceal its identity, by registering the Domain Name using the privacy registration service, which taken together with the circumstances of the case further indicates bad faith by the Respondent. See, e.g. Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services,WIPO Case No. D2007-1743.
Given the evidence of the Complainant’s prior rights in the mark, the timing of the registration of the Domain Name by the Respondent, the Respondent’s use of a proxy registration, together with evidence that the Domain Name resolves to parked pages with sponsored ads related to LEGO-branded products, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) 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 Domain Name, , be transferred to the Complainant.
Ellen B Shankman
Sole Panelist
Date: September 9, 2016
Full & Egal Universal Law Academy