The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Melissa Martinez of Clarksville, Tennessee, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2016. On January 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 3, 2017, 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 January 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2017.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on February 3, 2017. 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 Danish company that owns the famous LEGO brand of construction toys.
The Complainant has subsidiaries and branches throughout the world. LEGO products are sold in more than 130 countries, including in the United States.
The Complainant owns several LEGO trademark registrations in multiple countries, including in the United States, which were filed as long as 1975. The Complainant is also the owner of numerous domain names containing the term “lego”.
The Respondent registered the disputed domain name on August 10, 2016.
The Panel accessed the disputed domain name on February 13, 2017, when it was linked to a toy store website. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The dominant part of the disputed domain name comprises the term “lego”, which is identical to the Complainant’s registered trademark LEGO. The fame of the trademark LEGO has been confirmed in numerous previous UDRP decisions. In addition to the trademark LEGO, the disputed domain name also comprises the suffix “toyss”. In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2009-0488, 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, neither the hyphen nor the suffix “toyss” detract from the overall impression. Instead, with regard to the fact that the Complainant is offering toys, the use of said term implies a connection to the Complainant and its products. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the trademark and the disputed domain name. There is a considerable risk that the trade public will perceive the disputed domain name either as a domain name owned by the Complainant, or that there is some kind of commercial relation with the Complainant. By using the trademark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the Complainant’s trademark, which may result in dilution and other damage for the trademark.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Neither has the Complainant found anything, including the WhoIs details, that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by common usage. No license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO. Furthermore, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. LEGO is a famous trademark worldwide. There is no disclaimer on the website to explain the lack of relationship to the Complainant. As no evidence has been found that the Respondent is using the name LEGO as a company name or has any other legal rights in the name, it is quite clear that the Respondent is simply trying to sponge off the Complainant’s world famous trademark. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen the disputed domain name based on a registered trademark in order to generate traffic and income through an unauthorized website offering LEGO products as well as those of its competitors. The Respondent is not an authorized reseller, nevertheless, the criteria laid down in the Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 and described in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (the Oki Data Test) has been widely adopted by Panels and cited even if it refers to a non-authorized reseller. The Oki Data Test requires that the website accurately discloses the Respondent’s relationship with the Complainant. In the present case, the Respondent does not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant, and does therefore convey the false impression that the Respondent is authorized to use the Complainant’s trademark. There is no visible disclaimer stating that the website is not endorsed or sponsored by the Complainant to explain the non-existing relationship with the trademark holder.
- The disputed domain name was registered and is being used in bad faith. The trademark LEGO has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world. The Respondent registered the disputed domain name on August 10, 2016. This date is subsequent to when the Complainant registered the trademark LEGO in the United States where the Respondent resides, and elsewhere, by decades. It is obvious that it is the fame of the trademark that has motivated the Respondent to register the disputed domain name. That is, the Respondent cannot claim to have been using the trademark LEGO, without being aware of the Complainant’s rights to it. The Complainant first tried to contact the Respondent on September 12, 2016, through a cease and desist letter sent by email, to which no reply was ever received. Moreover, the Panel in Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273 stated that, “[t]he 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”. The disputed domain name is currently connected to an unauthorized commercial website offering LEGO products and the products of competitors of LEGO. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to a 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 in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three 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
The Panel has no doubt that “lego” is a term directly connected with the Complainant’s construction toys worldwide.
Annex 6 to the Complaint shows registrations of LEGO trademarks obtained by the Complainant, including in the United States, since 1975.
The trademark LEGO is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainant’s trademark basically by the addition of the suffix “toyss”, as well as of the gTLD denominator “.com”.
Previous UDRP decisions have demonstrated that descriptive additions (such as “toys” or its misspelled variation “toyss”) do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B. V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc.,WIPO Case No. D2000-0927).
It is also well established that the addition of a gTLD extension such as “.com” is irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The disputed domain name is currently linked to a toy store website. According to WIPO Overview 2.0, paragraph 2.3, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include, inter alia, the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder (see Oki Data Americas, Inc. v. ASD, Inc., supra).
The present case does not fit into these requirements: the Respondent is not an authorized reseller of LEGO toys; the website at the disputed domain name offers for sale LEGO products, but also other brands such as MEGA BLOCKS, PLAYMOBIL, K’NEXT, MECCANO, etc.; and there is no disclosure concerning the Respondent’s relationship with the Complainant or the LEGO trademark.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has 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.
When the disputed domain name was registered by the Respondent (in 2016) the trademark LEGO was already well-known worldwide and directly connected to the Complainant’s construction toys.
The disputed domain name encompasses the trademark LEGO, together with a misspelling of a descriptive word directly related with the Complainant’s products (“toyss”). Also, it is currently linked to a toy store website that contains reproductions of the Complainant’s trademark, among other toys’ brands.
Therefore, the Panel concludes that it would definitely not be feasible to consider that the Respondent could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “legotoyss” could be a mere coincidence.
Actually, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainants’ trademark; and
(ii) potentially obtains revenue selling LEGO and other competing toys to consumers that were looking for the Complainant’s products; and
(iii) deprives the Complainant from selling its products to prospective clients.
Furthermore, the passive and non-collaborative posture of the Respondent, not at least providing justifications for the use of a third-party well-known trademark, certainly cannot be used in benefit of the Respondent in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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.
Rodrigo Azevedo
Sole Panelist
Date: February 18, 2017
Full & Egal Universal Law Academy