The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, the Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Service BS Corp (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 17, 2016. On August 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 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.
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 September 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 26, 2016.
The Center appointed Alexander Duisberg as the sole panelist in this matter on October 5, 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 trademarks LEGO and DIMENSIONS 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. 000039800, registered on October 5, 1998) and DIMENSIONS (European Union trade mark No. 014003842, registered on February 19, 2016) ("LEGO Trademarks"). The Complainant has furthermore registered about 5,000 domain names containing the term "LEGO" in various countries, including the domain name , registered on April 9, 2015 ("LEGO Domains"). The Complainant's licensees sell LEGO construction toys and other LEGO branded products in more than 130 countries.
The disputed domain name was registered on January 26, 2016. Except for the Complainant's European Union trade mark DIMENSIONS which the Complainant filed on April 28, 2015 and which was registered on February 19, 2016, all registrations of the LEGO Trademarks 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 1, 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 famous LEGO Trademarks. The intentional misspelling "dimesions" does not alter this assessment, but rather constitutes an unlawful act of "typosquatting".
Furthermore, the Respondent has no rights or legitimate interests in respect of the disputed domain name. No authorization has been granted by the Complainant for the Respondent to use the Complainant's trademarks. There is no bona fide offering of goods or services under the disputed domain name, or a respective company name which contains the elements "lego" or "dimesions". Instead, the Respondent attempts to mislead Internet users by incorporating the LEGO Trademarks into the disputed domain name and redirect Internet users to sponsored websites for the Respondent's commercial gain.
According to the Complainant, the disputed domain name was registered and is being used in bad faith. The registration of the disputed domain name incorporating the Complainant's famous LEGO Trademarks in combination with "typosquatting" elements of such a famous is evidence of the registration of the disputed domain name in bad faith. Moreover, the disputed domain name is being used in bad faith to generate unjust revenue through PPC links.
Against this background, the Complainant requests that the Panel order the disputed domain name to be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 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 Respondent's failure 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 production of 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 the trademark DIMENSIONS, and thus finds the requirement of paragraph 4(a)(i) of the Policy to be met.
The disputed domain name contains the Complainant's trademark LEGO in its entirety. Furthermore, the disputed domain name contains the element "dimesions" which merely differs from the Complainant's trademark DIMENSIONS in the absence of the fifth letter "n".
In the Panel's view, the deletion of the letter "n" does not rule out the overall confusing similarity between the disputed domain name and the Complainant's additional trademark DIMENSIONS as it constitutes only a minor aural and visual difference. The Panel holds, in line with previous UDRP panel decisions, that "typosquatting" is characterized as providing "essential" or "virtual" identity, the domain names respectively being confusingly similar to the trademarks that have been "squatted" (see, inter alia, E, Inc v. Yingkun Guo,WIPO Case No. D2006-0694; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol WIPO Case No. D2001-0489).
The Complainant's European Union trade mark DIMENSIONS may be taken into account in this comparison, irrespective of the fact that its registration postdates the registration of the disputed domain name. Paragraph 4(a)(i) does not require the trademark to be registered prior to the domain name (see paragraph 1.4, WIPO Overview 2.0).
The combination of "lego" and "demesions" does not distinguish the disputed domain name from the Complainant's Trademarks LEGO and DIMENSIONS (see Citigroup, Inc., MasterCard International Incorporated v. Domain Proxies, LLC,WIPO Case No. D2008-0951). 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 well known 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 trademarks LEGO and/or DIMENSIONS or to register any domain name containing such marks. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has failed to show any rights or legitimate interests in the disputed domain name according to paragraph 4(c) of the Policy. The Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name 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, the Panel finds that there is no indication of a bona fide offering of goods and services at the disputed domain name. In light of the above, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. 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 aware of the Complainant's LEGO Trademarks when registering the disputed domain name. The Respondent appears to have intended to create a likelihood of confusion with the Complainant's trademarks in order to divert Internet users who are searching for the Complainant's website and who accidently misspell the Complainant's DIMENSIONS trademark. By doing so, the Respondent exploits the reputation of the Complainant's trademarks for commercial gain by way of PPC links and pretends to have a commercial relationship, affiliation, endorsement or other kind of authorization from the Complainant, which in fact has never existed. Pursuant to paragraph 4(b)(iv) of the Policy, such registration and use of the disputed domain name must be deemed in bad faith.
The Panel further finds that the "typosquatting" at hand is to be regarded per se as evidence of bad faith registration and use of the disputed domain name. The Panel's conclusions are supported by various similar UDRP panel decisions (see Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol,WIPO Case No. D2001-0302; Longs Drug Stores California, Inc. v. Shep Dog,WIPO Case No. D2004-1069; Lexar Media, Inc. v. Huang,WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo,WIPO Case No. D2004-0816).
The fact that the Complainant's DIMENSIONS trademark has been registered after the disputed domain name does not rule out such bad faith element, given that the official LEGO domain was already registered upon registration of the disputed domain name. Without any reasonable doubt, the Respondent must have been certainly aware of this domain name and the respective website, as it was obviously the target of its "typosquatting" activity. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders the disputed domain name to be transferred to the Complainant.
Alexander Duisberg
Sole Panelist
Date: October 19, 2016
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