The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Jhon Rockefellers, who is listed as residing at Gold Coast, Queensland, Pakistan. 2. The Domain Name and Registrar
The disputed domain name is registered with Crazy Domains FZ-LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2016. On July 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 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 for 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 August 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2016.
The Center appointed David H. Bernstein as the sole panelist in this matter on September 2, 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, LEGO Juris A/S, is a manufacturer of toys. The Complainant holds numerous registrations for the LEGO mark around the world, including in Australia (since 1960) and Pakistan (since1979), two countries that are potentially connected to the Respondent. The vast majority of the Complainant’s LEGO trademarks were registered prior to the registration of the disputed domain name in 2016. The Complainant also owns “close to 5,000 domain names containing the term ‘lego,’” including , , , , , , and .
The disputed domain name was registered with the Registrar on January 19, 2016. The disputed domain name resolves to a website titled “Lego Constructions,” which contains “posts” concerning the construction industry and hyperlinks to topics such as “Home Renovations,” “Building Inspectors” and “DIY Flooring.” These hyperlinks appear to re-direct Internet users to other third-party websites; it is not clear whether these are pay-per-click links or not. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is identical or confusingly similar to the LEGO mark in which it has rights. The Complainant has provided evidence that it owns registrations for the trademark LEGO in multiple jurisdictions. The Complainant contends that the trademark LEGO is well known due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising and promotional materials. It supports its contention that the trademark is recognized as famous by annexing a report of the “Top 500 Superbrands for 2015,” recognizing LEGO as among the top 20 brands in the world. The Complainant also cites numerous past UDRP panel decisions in support of the notoriety of its LEGO mark worldwide. See, e.g., LEGO Juris A/S v. Dios Oft,WIPO Case No. D2014-0726 (observing that “previous decisions have consistently found that the Complainant’s LEGO trademark is highly renowned and carries a significant commercial presence worldwide”).
The Complainant contends that the disputed domain name is similar to its LEGO mark and that the differences between this mark and the disputed domain name are not sufficient to mitigate the confusion. In particular, the Complainant stresses that the disputed domain name (i) entirely comprises the trademark LEGO; (ii) that the generic Top-Level Domain (“gTLD”) suffix “.com” is not distinctive and should not be taken into account in the analysis; and (iii) that the descriptive word “constructions” contained in the disputed domain name is either irrelevant because it is not distinctive or relevant only in the sense that it aggravates the risk of confusion with LEGO construction toys.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant alleges that the Respondent is not known under the name “lego”, because the Respondent has not registered any trademark in this term. Additionally, the Complainant states that there is no business connection between the parties, and that the Complainant at no time granted the Respondent any right to use the disputed domain name. The Complainant also contends that there is a considerable risk that anyone who sees the disputed domain name will perceive it as a domain name owned by the Complainant, or mistake the website as having a commercial relationship with the Complainant. In this way, the Complainant alleges that the disputed domain name exploits the goodwill of the LEGO trademark and may cause it damage.
Finally, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith because it must have known of the trademark LEGO at the time it registered the disputed domain name. The Complainant further contends that the Respondent is likely profiting from consumers’ confusion by re-directing Internet users, for commercial gain, to goods or services unrelated to the Complainant. The Complainant also alleges as an indication of bad faith that the Respondent did not respond to its cease and desist letter and follow up correspondence. B. Respondent
The Respondent did not reply to the Complainant’s contentions.1 In view of the Respondent’s failure to submit a Response, the Panel shall decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, and shall draw any inferences that it considers appropriate pursuant to paragraph 14(b) of the Rules. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove, by a preponderance of evidence, the following elements:
(i) that the disputed domain name 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 interest in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) addresses the potential impact of the Respondent’s default:
A respondent's default does not automatically result in a decision in favor of the complainant. Subject to the principles described in paragraph 2.1 above with regard to the second UDRP element, the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
Thus, notwithstanding the Respondent’s failure to respond to the Complaint, the burden remains on the Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
The Complainant has submitted evidence of its ownership of registrations for the LEGO mark in Australia and Pakistan, among other countries. As such, the Complainant has clearly established that it has rights in the LEGO trademark. See paragraph 1.1 of WIPO Overview 2.0 (“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.”).
The Complainant has also established that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark in that the disputed domain name incorporates the LEGO trademark in its entirety. The addition of the dictionary term “constructions” and the gTLD “.com” does nothing to undermine the confusing similarity between the disputed domain name and the LEGO trademark. Paragraph 1.9 of WIPO Overview 2.0 (“[t]he 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”).
The Panel therefore concludes that the disputed domain name is confusingly similar to the Complainant’s LEGO mark. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant has the burden of making a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Once this burden is met, the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name (though the burden of proof remains on the Complainant at all times). See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. If the Respondent does not satisfy its burden of coming forward with some evidence to rebut the Complainant’s prima facie showing, or if the Respondent fails to file a response at all, the Complainant’s prima facie showing will be sufficient to meet its burden of demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name. Moroccan Financial Board v. Abdullah Riahi,WIPO Case No. D2011-0751.
The Complainant has made the requisite prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has demonstrated that it owns the LEGO trademark worldwide and that it has not granted the Respondent any right to use that mark. The Complainant further alleges that the Respondent has not been commonly known by, nor acquired trademark rights in, the LEGO mark. And the Complainant alleges that the Respondent did not use the disputed domain name for legitimate noncommercial or fair use purposes; to the contrary, the website to which the disputed domain name resolves purports to offer links to construction-related services that are only tangentially related to the Complainant’s goods (which could be described as construction toys).
For these reasons, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Bad faith use and registration may be established under paragraph 4(b)(iv) of the Policy if the Complainant can show that the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.” That appears to be the case here given that the Respondent is using the disputed domain name to promote construction-related services under the LEGO trademark, which likely would confuse consumers. By using the Complainant’s famous trademark as the distinctive element of the disputed domain name, the Respondent creates a risk of confusion that the visitors to the website will initially expect to access a website operated by the Complainant (or by one of its retailers). It is also possible that the Internet user will believe that the linked websites are associated with or endorsed by the Complainant.
The Panel therefore concludes that the Complainant has satisfied the requirements of 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 disputed domain name be transferred to the Complainant.
David H. Bernstein
Sole Panel
Date: September 17, 2016
1 Because the Respondent did not submit a Response, the Panel has carefully reviewed the record to ensure that the Center discharged its obligation to notify the Respondent of the Complaint pursuant to paragraphs 2(a) and 4(a) of the Rules. See Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415.
On August 3, 2016, the Center sent written notice of the Complaint via DHL to the address provided in the Registrar’s records (at the address [ ] Gold Coast, 4219 Queensland), except that the Center changed the country of delivery to Australia instead of Pakistan since Gold Coast Queensland is in Australia, not Pakistan. On August 8, 2016, the Center received email notification from DHL that the address was not valid (which showed that the Respondent provided inaccurate contact details when it registered the disputed domain name), and the Center therefore requested that DHL destroy the documents in its possession. On August 3, 2016, the Center also attempted to provide the Respondent with notice by email. The Center forwarded a copy of the Complaint, including all annexes, to the email address [ ]@ provided by the Registrar, and to the email address postmaster@. The email address postmaster@ returned an error, and the Center received no responses from the email address [ ]@. No fax number was provided in the Registrar’s records or the Respondent’s WhoIs records.
The Panel concludes that the Center has employed “reasonably available means calculated to achieve actual notice to Respondent” and that any failure of receipt of actual notice is the fault of the Respondent for failing to provide valid contact information in its WhoIs records. Accordingly, the Panel concludes that the Center has discharged its obligation to notify the Respondent of the Complaint pursuant to paragraphs 2(a) and 4(a) of the Rules.
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