Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
Respondent is Nick Terlouw of Noordwolde, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name (hereinafter referred to as the “Domain Name”) is registered with SIDN through MijnInternetOplossing. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2011. On April 5, 2011, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On April 6, 2011, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 6, 2011. In accordance with the Regulations, article 7.1, the due date for Response was April 26, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 27, 2011.
The Center appointed Willem J.H. Leppink as the panelist in this matter on May 9, 2011. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
The Domain Name was registered on November 22, 2010.
Complainant and its licensees are commonly known as the LEGO Group, which is famous for the manufacture and distribution of LEGO brand toys with a turnover in 2009 of USD 2,8 billion.
Complainant is the owner of an extensive portfolio of LEGO-trademarks, including inter alia the following:
1. Community trademark registration (no. 39800) for the LEGO word trademark;
2. Benelux trademark registration (no. 54491) for the LEGO word trademark.
Both trademark registrations are hereinafter referred to as the “Trademarks”.
In addition, Complainant is the holder of more than 1000 domain names containing the term LEGO. 5. Parties’ Contentions A. Complainant
Complainant bases the Complaint on the Trademarks. According to Complainant, with reference to numerous decisions under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Trademarks are well-known trademarks.
According to Complainant the Domain Name is confusingly similar to the Trademarks, as the most distinctive element of the Domain Name is the LEGO sign. The addition of the generic suffix “worldshop” does not detract from the overall impression, and the Domain Name must therefore be considered to be confusingly similar with the Trademarks.
Complainant states that Respondent does not have a right or legitimate interest in respect of the Domain Name. Firstly, Respondent has no right to use the element LEGO in the Domain Name as Complainant has not granted a license to Respondent to use the Domain Name. Secondly, Respondent is not commonly known by the Domain Name. Thirdly, the Domain Name has not been used for the bona fide offering of goods or services. Respondent sells or is offering for sale Complainant’s products. For this offering of goods and services to be qualified bona fide, four cumulative requirements must be met. As Respondent has not disclosed any information in relation to its non-existent (commercial) relationship to Complainant, at least one of the requirements has not been fulfilled and as a consequence, the Complainant holds, the offering of the goods cannot be deemed bona fide.
Complainant argues that Respondent has registered and/or is using the Domain Name in bad faith. According to Complainant, the Trademarks have a repute throughout the whole European Union and throughout the world and Respondent must have been aware of the Trademarks at the point of registration of the Domain Name. The Domain Name is currently connected to a website containing an online shop for toys with the LEGO logotype displayed on the website. Respondent is thus using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation or endorsement of its website. Summarizing, Complainant argues that the Domain Name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
According to article 10.3 of the Regulations, a complaint shall be granted unless the panelist considers it to be without basis in law or fact.
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
A. The disputed domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law, or other name mentioned in article 2.1 sub a (II) of the Regulations;
B. The respondent has no rights or legitimate interest in the disputed domain name;
C. The disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has sufficiently demonstrated its rights in the Trademarks by submitting copies of several of its trademark registrations.
It is established case law that the top level domain “.nl” can be disregarded in assessing the similarity between the invoked trademarks on the one hand and the disputed domain name at the other hand (Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
The Panel finds that the Domain Name is likely to confuse Internet users with Complainant’s Trademarks, because it incorporates LEGO in its entirety. The Domain Name differs from the Trademarks only in that it contains the generic suffix “worldshop”. The addition of such generic term does not prevent confusion (LEGO Juris A/S v.M. Moench,WIPO Case No. DNL2009-0052).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademarks pursuant to article 2.1 sub a of the Regulations. B. Rights or Legitimate Interests
According to article 2.1 sub b of the Regulations, Complainant must demonstrate that Respondent has no rights or legitimate interest in the Domain Name. Complainant has made a prima facie case that Respondent lacks right or legitimate interest by demonstrating that Respondent (i) has not used the Domain Name for the bona fide offering of goods and (ii) is not commonly known by the Domain Name. It follows from the content of the website that Respondent is not making a noncommercial use of the Domain Name. As the prima facie case is made, it is Respondent’s burden to demonstrate rights or legitimate interest in the Domain Name. Respondent has not rebutted the aforementioned prima facie showing.
The Panel accordingly finds that the second element of article 2.1 of the Regulations has been sufficiently demonstrated. C. Registered or Used in Bad Faith
Complainant has alleged that the Domain Name was registered and is being used in bad faith. This has not been contested by Respondent.
The website linked to the Domain Name contains LEGO logotypes and a webshop for Complainant’s products. The website does not contain any information as to Respondent’s relationship with Complainant. Taking also account of the renown of Complainant’s Trademarks, the Panel deems it most likely that (i) Respondent was aware of the Trademarks when registering the Domain Name and (ii) that the Domain Name is being used for commercial gain, by attracting Internet users to the website through the likelihood of confusion which may arise with the Trademarks.
Therefore, the Panel finds that Complainant has also established the third element of article 2.1 of the Regulations. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name be transferred to Complainant.
Willem J.H. Leppink
Panelist
Dated: May 13, 2011
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