The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Aamir Abdul Wahid, Spiro Line Media of Rochdale, Lancashire, United Kingdom. 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 January 31, 2019. On January 31, 2019, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On January 31, 2019, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to the Complainant on February 5, 2019, 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 February 8, 2019.
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 February 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2019.
The Center appointed A. Justin Ourso III as the sole panelist in this matter on March 11, 2019. 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, a Danish limited company, is the owner of the LEGO trademark and other trademarks used in connection with the LEGO brand of construction toys and other products, which are sold worldwide, in more than 130 countries, including the United Kingdom and the United States of America.
The Complainant owns registrations for its trademark LEGO in over 160 countries and territories in Class 28 and in other classes in a number of these countries. Its earliest registration issued in Denmark for LEGO, registration No. 195400604 and registered on May 1, 1954, and its registrations in the United Kingdom and the United States issued in 1957 and 1975.
The Complainant owns the domain name , where it operates a web site from which it advertises and sells its products, and owns nearly 5,000 other domain names incorporating the word “Lego”.
The Respondent, Aamir Abdul Wahid, Spiro Line Media, of Rochdale, Lancashire, United Kingdom, who has not submitted a response to the Complaint, registered on October 2, 2018, through a privacy service, the Domain Name, , where it operates a web site selling competing products that displays the operator’s location as Pasadena, California, in the United States. 5. Parties’ Contentions A. Complainant
In addition to facts set forth in the Factual Background in Part 4, above, the Complainant contends, generally:
1. Its licensees are authorized to exploit the Complainant’s trademark rights.
2. Its LEGO trademark 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, citing as evidence (a) its selection in 2017 by Superbrands UK as the Number One brand in the category “Child Products – Toys and Education” and the Number Two brand overall; (b) its selection in 2017 by the Reputation Institute as Number Two among “the World’s Most Reputable Companies”, and (c) its selection in 2014 by TIME Magazine as the “Most Influential Toy of All Time”.
3. The LEGO Group has expanded the scope of products sold under the LEGO mark to, inter alia, computer hardware and software, books, videos, and computer-controlled robotic construction sets.
4. Its LEGO trademark has substantial inherent and acquired distinctiveness.
5. Under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights, the LEGO trademark’s status as a well-known mark provides the Complainant with the right to prevent any use of a well-known trademark or a confusingly similar denomination in connection with any products, regardless of the products for which the trademark is registered, extending the scope of its rights beyond toys and goods similar to toys.
Regarding the first element of a claim set forth in the Policy, paragraph 4(a)(i), the Complainant contends:
1. The dominant part of the Domain Name consists of its trademark, LEGO.
2. The Domain Name is confusingly similar to the Complainant’s trademark, LEGO.
3. The addition of the suffix “room” will not have any impact on the overall impression of the dominant part of the name, LEGO, recognizable as a world-famous trademark.
4. The addition of the Top-Level Domain “.org” does not impact the impression of the dominant portion of the Domain Name and is irrelevant in determining confusing similarity between the trademark and the Domain Name.
5. A considerable risk exists that the trade public will perceive that the Domain Name is owned by the Complainant or that the owner of the Domain Name has a commercial relationship with the Complainant.
6. The Respondent’s use of the Domain Name for a web site that offers counterfeit versions of the Complainant’s products or products of the Complainant’s competitors suggests that the Respondent intended the Domain Name to be confusingly similar to the Complainant’s trademark.
Regarding the second element set forth in the Policy, paragraph 4(a)(ii), the Complainant contends:
1. The Respondent may not claim any rights established by common usage, because the Complainant has not found any evidence that the Respondent has any registered trademarks or trade names corresponding to the Domain Name or any other use of the word “Lego” that would give the Respondent legitimate rights in the word.
2. The Complainant has not found any evidence that the Respondent uses the word “Lego” as a company name or has any other legal right in the name.
3. The Respondent is not an authorized dealer of the Complainant’s products.
4. The Complainant has not granted any license or authorization to the Respondent to use its trademark LEGO and has never had a business relationship with the Respondent.
5. At the time that the Respondent registered the Domain Name, the Respondent must have known of the Complainant’s rights in its mark, LEGO, because of its fame, which, in fact, must have motivated the Respondent to register the Domain Name.
6. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.
7. The Respondent intentionally chose the Domain Name to mislead Internet users to its own web site to generate traffic and income by offering counterfeit versions of the Complainant’s products or competing products, trying to sponge off the Complainant’s world famous trademark.
8. The Respondent has no rights or legitimate interest in the Domain Name.
Regarding the third element set forth in the Policy, paragraph 4(a)(iii), the Complainant contends:
1. Its LEGO trademark is world famous.
2. The fame of its LEGO trademark has prompted numerous third-party domain name registrations incorporating its trademark, citing as evidence numerous decisions arising from complaints filed by the Complainant in 2018 alone.
3. The fame and goodwill in its LEGO mark motivated the Respondent to register the Domain Name.
4. The Respondent registered the Domain Name decades after the Complainant registered its LEGO mark in Panama and elsewhere.
5. The Respondent cannot claim that it used the Complainant’s LEGO trademark without being aware of the Complainant’s rights in its mark.
6. The Complainant sent three demand letters to the Respondent by e-mail through the Registrar, because no contact information for the Respondent was available in the WhoIs database, but received no reply.
7. The Respondent uses the Domain Name for a commercial web site that offers for sale counterfeit versions of the Complainant’s products or competing products.
8. The Respondent is using the Domain Name intentionally and misleadingly to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site.
9. The Respondent’s use of the Domain Name disrupts the Complainant’s business and is a bad faith registration because the Domain Name is confusingly similar to the Complainant’s trademark and the Respondent’s web site offers counterfeit goods. B. Respondent
The Respondent did not submit a response to the Complaint. 6. Discussion and Findings A. The Effect of the Respondent’s Default
The Respondent has not responded to the Complaint. If a respondent does not submit a response, the panel decides the dispute based upon the complaint. Rules, paragraphs 5(f) and 14(a). The panel decides a complaint on the basis of the statements and documents submitted. Rules, paragraph 15(a).
Because the Complainant has the burden of proof, Policy, paragraph 4(a), the Respondent’s default, i.e., the Respondent’s failure to submit a response to the Complaint, does not mean that the Complainant necessarily prevails. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. Accordingly, notwithstanding the Respondent’s default, the Complainant must prove the following three elements to obtain the requested relief: (i) the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
However, in the absence of exceptional circumstances, the Respondent’s failure to respond to the Complaint requires that the Panel draw the inferences from this failure that it considers appropriate. Rules, paragraph 14(b). The Panel finds that no exceptional circumstances exist for the failure of the Respondent to submit a response. Accordingly, the Panel infers that the Respondent does not deny the facts alleged and the contentions urged by the Complainant based upon these facts, and will draw all reasonable inferences that are appropriate from the evidence and the facts found by the Panel. Id.; Facebook Inc. v. te5gfh gtfghbfh,WIPO Case No. D2018-2433; WestJet Airlines Ltd. v. WhoIsGuard Protected, WhoIsGuard, Inc. / Vladimir Axdalinescu,WIPO Case No. D2018-2424; RX America, L.L.C. v. Tony Rodolakis,WIPO Case No. D2005-1190.
Although the Panel may draw negative inferences from the Respondent’s default, the Complainant may not rely on conclusory allegations and must support its allegations with evidence to prove the three elements and prevail. WIPO Overview 3.0, section 4.3; PVH CORP. v. Super Privacy Service LTD c/o Dynadot,WIPO Case No. D2018-1013. B. Elements of a Claim (i) Domain Name Identical or Confusingly Similar to the Complainant’s Trademark
To prove the first element, the Complainant must prove that (1) it has rights in a trademark and (2) the Domain Name is identical or confusingly similar to this trademark.
The Panel finds that the Complainant’s trademark registrations in Denmark, the United Kingdom, the United States, and over 150 other countries and territories establish the Complainant’s trademark rights. WIPO Overview 3.0, section 1.2.1.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s LEGO trademark. The Domain Name incorporates the entire LEGO trademark and the LEGO trademark is easily recognizable within the Domain Name. WIPO Overview 3.0, section 1.7.
The inclusion of the generic word “room” in the Domain Name does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.8.
Lastly, the inclusion of the generic Top-Level Domain (“gTLD”) “.org” is disregarded in determining confusing similarity. WIPO Overview 3.0, section 1.11.
Accordingly, the panel concludes that the Complainant has proven the first element, namely, that the Domain Name is confusingly similar to a trademark in which it has rights. (ii) Rights or Legitimate Interests in the Domain Name
The Policy provides a non-exclusive list of circumstances that, if a panel finds proved, demonstrates that a respondent has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to 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, even if it has acquired no trademark or service mark rights; 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 or service mark at issue.
Policy, paragraph 4(c).
The Panel finds that the Complainant’s trademark rights precede the registration of the Domain Name by many years.
The Panel also finds, on the basis of the Complaint, which the Complainant has certified as complete and accurate, and the Respondent has not contested, that (1) the Respondent is not a dealer or licensee of the Complainant; (2) the Complainant has not otherwise authorized the Respondent to use its trademark, including to register or use the mark in a domain name; (3) the Respondent has not registered any trademarks or trade names corresponding to the trademark; (4) the Respondent has not used the trademark in a company name; and (5) the Respondent has not established any rights by common usage or any other legal rights in a name corresponding to the trademark. Rules, paragraph 14(b) and 10(d); WIPO Overview 3.0, section 4.3.
For these reasons, the Complainant has shown, prima facie, that the Respondent lacks rights or legitimate interests in the Domain Name.
Where a complainant shows prima facie that a respondent lacks rights or legitimate interests, the burden of production on this second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1.
The Respondent here has not even submitted a response to the Complaint, much less submitted evidence to rebut the prima facie showing.
If a respondent fails to come forward with relevant evidence to rebut the prima facie showing, a complainant is deemed to have proven that the respondent has no rights or legitimate interests in the domain name, satisfying the second element. Id.; Sperre Mek. Verksted AS v. Perfect Privacy, LLC / The Allied Valve Spares Mfg. Co.,WIPO Case No. D2018-2904; WestJet Airlines Ltd. v. WhoIsGuard Protected, WhoIsGuard, Inc. / Vladimir Axdalinescu,WIPO Case No. D2018-2424; Wal-Mart Stores, Inc. v. WalMart Careers, Inc.,WIPO Case No. D2012-0285.
Additionally, the Panel finds that, because of the worldwide fame of the Complainant’s LEGO trademark, because the Domain Name falsely suggests affiliation with the Complainant, and because the Respondent offers competing goods for sale, the Respondent must have known of the mark and the Complainant’s rights in the mark, and must have chosen to incorporate the trademark in the Domain Name intentionally to attract Internet users, including customers and potential customers of the Complainant, to the Respondent’s web site for commercial gain, which is not a legitimate use.
Also, the Panel finds that the Respondent could not make any legitimate noncommercial or fair use of the Domain Name, because any use of the Domain Name would result in deception and the diversion of users or potential users of the Complainant. WIPO Overview 3.0, sections 2.5.1, 2.5.2, and 2.5.3; Facebook Inc. v. te5gfh gtfghbfh,WIPO Case No. D2018-2433.
In summary, the Panel finds (1) an unrebutted prima facie showing that the Respondent has no rights or legitimate interests in the Domain Name and (2) an intent to deceive by the Respondent, which is not a legitimate interest for registering or using a domain name.
Accordingly, the Complainant has proven the second element, namely, that the Respondent lacks rights or legitimate interests in the Domain Name. (iii) Registration and Use of the Domain Name in Bad Faith
The Policy provides that the following circumstance is “evidence of the registration and use of a domain name in bad faith: [. . .] (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. Policy, paragraphs 4(b)(iii) and 4(b)(iv).
Previous panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous trademark can create a presumption of bad faith registration. WIPO Overview 3.0, section 3.1.4; Facebook, Inc. v. te5gfh gtfghbfh,WIPO Case No. D2018-2433.
Additionally, because the Complainant’s LEGO trademark enjoys worldwide renown, i.e., it is an internationally famous trademark, the Panel finds that the Respondent must have been aware of the Complainant’s LEGO trademark and of the Complainant’s rights in its mark at the time of registration of the Domain Name and that the Respondent registered the Domain Name in bad faith. Policy, paragraphs 4(a) and (b); WIPO Overview 3.0, section 3.2.2 (famous mark a respondent cannot credibly claim not to have known); Facebook, Inc. v. te5gfh gtfghbfh,WIPO Case No. D2018-2433.
Here, the Respondent has not even submitted a response to the Complaint. The Panel finds in the circumstances of this case, that the Respondent registered the Domain Name in bad faith. Rules, paragraphs 10(d) and 14(b); WIPO Overview 3.0, section 4.3; Cf. WIPO Overview 3.0, section 3.2.1.
Additionally, because (1) the Complainant’s LEGO trademark is world famous; (2) the Domain Name is confusingly similar to the LEGO trademark and falsely suggests affiliation with the Complainant, which will necessarily attract Internet users, including customers and potential customers of the Complainant, to the Respondent’s web site; and (3) the Respondent offers competing goods for sale, the Panel finds that the Respondent’s web site is disruptive to the business of the Complainant, which is a bad faith use of the Domain Name. Because the Respondent’s site misleadingly and deceptively attracts customers and potential customers of the Complainant for commercial gain, the Panel finds that the Respondent registered the Domain Name in bad faith for the purpose of unfairly competing and unfairly disrupting the business of a competitor. Policy, paragraph 4(b)(iii); WIPO Overview, section 3.1.3; WestJet Airlines Ltd. v. WhoIsGuard Protected, WhoIsGuard, Inc. / Vladimir Axdalinescu,WIPO Case No. D2018-2424.
For the same three reasons, and because the Complainant sent three demand letters to which the Respondent failed to reply, the Panel finds that the Respondent used the Domain Name in bad faith intentionally to attract Internet users to its site for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source of the site or the source of the goods offered on the site. Policy, paragraph 4(b)(iv); WIPO Overview 3.0, section 3.1.4. (attracting visitors by creating confusion with a famous trademark); Facebook, Inc. v. te5gfh gtfghbfh,WIPO Case No. D2018-2433.
Accordingly, the Complainant has proven the third element, namely, that the Domain Name was registered and is being used 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 Domain Name be transferred to the Complainant.
A. Justin Ourso III
Sole Panelist
Date: March 24, 2019
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