The Complainant is LEGO Juris A/S, Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Privacy Service FBO of Burlington, United States of America / Jill Cottingham of Burlington, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 5, 2016. On August 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 8, 2016 providing the Registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 9, 2016 ("Amended Complaint").
The Center verified that 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 August 11, 2016. An email from the Respondent was received by the Center on August 15, 2016.
At the Complainant on August 17, 2016, the proceedings were suspended on August 18, 2016 for purposes of settlement discussions concerning the disputed domain name. As no settlement has been reached, the Complainant requested the reinstitution of the proceedings on September 14, 2016. The Center reinstituted the Proceedings on September 19, 2016.
In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2016. As no Response was filed, pursuant to paragraph 6 of the Rules, the Center notified the Parties the commencement of the Panel Appointment Process on October 6, 2016.
The Center appointed Alexander Duisberg as the sole panelist in this matter on October 18, 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 a limited company based in Denmark. Its business activities consist, inter alia, in holding and licensing out the trademark portfolio of the LEGO brand.
The Complainant is owner of several registered LEGO Trademarks worldwide, inter alia in the United States of America ("United States") for LEGO (Reg. No. 1,018,875, registered on August 26, 1975) and in the European Union for LEGO (European Union trade mark No. 000039,800, registered on October 5, 1998) ("LEGO Trademarks"). The Complainant has furthermore registered about 5,000 domain names containing the term "lego" in various countries ("LEGO Domains").
The disputed domain name was registered on March 16, 2016. All registrations of the LEGO Trademarks including the trademark registration in the United States where the Respondent resides took place before the date of registration of the disputed domain name.
The disputed domain name resolves to a parking page displaying sponsored pay-per-click ("PPC") links.
The Complainant sent a cease-and-desist letter to the Respondent dated April 26, 2016 in which the Complainant claimed a violation of its trademark rights and requested the Respondent to voluntarily transfer the disputed domain name. The Complainant offered to the Respondent compensation for the expenses for registration and transfer fees. Despite two subsequent reminding letters the Respondent did not reply to this. 5. Parties' Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant's protected well-known LEGO Trademarks.
Furthermore, the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no bona fide offering of goods or services under the disputed domain name or a respective company name which contains the element "lego". The Complainant has neither given an authorization nor a license to the Respondent to use the LEGO Trademarks. Instead, the Respondent attempts to mislead Internet users by incorporating the LEGO Trademarks into its disputed domain name and redirect Internet users to sponsored websites for the Respondent's commercial gain.
According to the Complainant, the disputed domain name has been registered and is being used in bad faith. The registration of the disputed domain name incorporating the Complainant's famous LEGO Trademarks is evidence of the registration of the disputed domain name in bad faith.
Against this background, the Complainant requests that the Panel orders the disputed domain name to be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. However, an email from the Respondent was received on August 15, 2016, with the following content:
"I'm sorry! What do we need to do to stop this? Cancel that domain name? We don't want it if it's a problem. I just saw all these emails!!!!" 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(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.
The Panel acknowledges the consensus view - as set forth in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview 2.0") - that the Respondents' default to respond to the Complaint does not automatically result in a decision in favor of the Complainant. The Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in the UDRP proceeding.
In line with previous UDRP decisions, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name, in order to shift the burden of producing evidence to the Respondent (see inter alia, Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's LEGO Trademarks, and thus finds the requirement of paragraph 4(a)(i) of the Policy to be met.
The disputed domain name contains the Complainant's well-known trademark LEGO and the generic term "kids".
The Panel holds that adding the generic term "kids" to the well-known trademark LEGO in the disputed domain name is 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 Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307). The Panel holds this rationale to apply in the given case. B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
The Complainant's LEGO Trademarks are famous and have been registered and used for many years preceding the date of the Respondent's registration of the disputed domain name. The Complainant has not authorized the Respondent to use the LEGO Trademarks. The disputed domain is rather intended to misleadingly divert consumers to the website of the Respondent in order to generate traffic through redirecting users to various websites, including through sponsored links.
Against this background, there are neither indications for a bona fide offering of goods and services of the Respondent nor for a noncommercial or fair use of the disputed domain name. This finding is further underlined by the fact that the PPC use of the disputed domain name containing a third-party mark cannot constitute a bona fide use of the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name has been registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy.
In view of the significant reputation of the Complainant's LEGO Trademarks, the Panel holds that the Respondent must have been certainly aware of the Complainant's LEGO Trademarks when registering the disputed domain name. The Respondent intended to create a likelihood of confusion with the Complainant's well-known LEGO Trademarks in order to divert Internet users who are searching for the universally well-known LEGO toys. This applies even the more, given that the Complainant has registered about 5,000 domain names that include the LEGO Trademarks. That, in and of itself further increases the likelihood that the average consumer wrongly believes that the disputed domain name is associated with the Complainant and/or an affiliated LEGO group company.
The addition of a generic term does not serve to distinguish the domain name from the trademark, but may reinforce the association of the complainant's trademark with the domain name (see Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755). The prevailing element in the disputed domain name is "lego", which is identical with the Complainant's LEGO Trademarks. The addition of the term "kids" does not rule out a confusing similarity with the LEGO Trademarks. It rather creates the unequivocal impression for the average consumer that the disputed domain name is associated with the Complainant and with the official LEGO products and that its contents relates to specific wishes and needs of children.
Accordingly, the Respondent has exploited the reputation of the Complainant's LEGO Trademarks by giving the misimpression of having a commercial relationship, affiliation, endorsement or other kind of authorization by the Complainant, which in fact does not exist. Moreover, according to previous UDRP decisions, the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568). This rationale applies also to the case at hand.
Pursuant to paragraph 4(b)(iv) of the Policy, such registration and use of the disputed domain has to be deemed in bad faith. 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.
Alexander Duisberg
Sole Panelist
Date: November 1, 2016
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