The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is wacherananthakorn, peyaporn of Bangkhan, Thailand.
The disputed domain name <legobatmanlego.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2011. On July 27, 2011, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On July 28, 2011, Network Solutions, LLC transmitted by email to the Center its verification response confirming that wacherananthakorn, peyaporn 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2011.
The Center appointed Derek M. Minus as the sole panelist in this matter on September 1, 2011. 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.
The Complainant is a Denmark-based corporation, founded in 1932, that has become the world’s fifth largest manufacturer of play materials and the largest manufacturer of construction toys. The Complainant and its licensee companies (collectively “the LEGO Group”), through their predecessors, commenced use of the LEGO trademark in the United States America since 1953 to identify and distinguish its interlocking brick construction toys.
Since that time, the business of making and selling LEGO branded toys has grown remarkably. The LEGO Group revenues exceeded USD 2.8 billion in 2009. The LEGO mark is now registered in over 180 countries in international class 28, among several others, of the Nice Classification. The Complainant maintains its corporate website at “www.lego.com” in addition to owning more than 1,000 domain names comprising the LEGO trademark.
The 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. The LEGO trademark and brand have been recognized as being one of the most famous trademarks and brands in the world, according to the official top 500 Superbrands for 2009/10, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world.
The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. Since 2006, the LEGO Group has a license agreement with Warner Bros Consumer Products Inc. concerning the use of the BATMAN trademark incorporated in the LEGO BATMAN product line.
The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Thailand. The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in Thailand and elsewhere. Specifically, in Thailand, the Complainant has a trademark registration for LEGO trademark number KOR 78605.
The disputed domain name was registered on December 24, 2010. The domain name resolved to a website prominently displaying the Complainant’s LEGO trademark and the message, “70% off Lego Batman.”
On February 11, 2011, the Complainant sent the Respondent a cease and desist Letter demanding the voluntary surrender of the disputed domain name in exchange for the Complainant reimbursing the out-of-pocket expenses incurred by the Respondent in registering the disputed domain name.
The Complainant asserts that:
(a) The disputed domain name is confusingly similar to the Complainant’s world famous LEGO trademark in which the Complainant has extensive rights.
The disputed domain name entirely reproduces the LEGO trademark, which itself has no particular meaning and is highly distinctive.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has not granted the Respondent a license or other authorization to use its trademark in relation to the disputed domain name.
The disputed domain name is composed of the Complainant’s LEGO trademark and BATMAN trademark which the Complainant uses under licence from Warner Bros Consumer Products Inc. for the development, marketing and sale of products incorporating the entire DC Comics / DC Universe cast of characters, including BATMAN.
The Respondent is not making legitimate noncommercial or fair use of the disputed domain name but is using it to obtain commercial gain by misleadingly diverting consumers from the Complainant’s websites to the Respondent’s website.
(c) The Respondent registered and is using the disputed domain name in bad faith:
The Respondent has registered the disputed domain name in order to take advantage of the confusing similarity between the disputed domain name and the Complainant’s trademark in order to benefit from goodwill associated with the LEGO trademark and constitutes evidence of bad faith registration and use on behalf of the Respondent.
The Complainant also sent the Respondent a cease and desist letter by e-mail and two reminders requesting immediate transfer of the disputed domain name. However, the Respondent did not reply. The Respondent’s lack of reply reinforces the inference of bad faith.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant holds rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and are being used in bad faith by the Respondent.
As the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, the Panel shall decide the Complaint on the basis of the Complainant’s submissions and such inferences that can be reasonably drawn from the failure to submit a Response as the Panel considers applicable. (Rules, paragraph 14(b)).
The Panel finds that the Complainant is the owner of the LEGO trademark both by extensive registration and reputation, to the extent that it can legitimately claim LEGO to be a well-known mark of substantial inherent and acquired distinctiveness. The fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions: in LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840, “LEGO is clearly a well-known mark”; in LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260, “In the present case, the disputed domain names incorporate the Complainant’s well-known registered trademark LEGO”; and in LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680, “LEGO is a mark enjoying high reputation as construction toys popular with children.”
Here the disputed domain name <legobatmanlego.com> incorporates not one but three trademarks, the Complainant’s LEGO trademark in its entirety which is used before and after the BATMAN trademark which the Complainant licenses, with the addition of the “.com” top level identifier at the end.
Whether a domain name that incorporates a complainant’s trademark together with a prefix or suffix is confusingly similar to the trademark has been considered in a number of UDRP decisions. It has been held that a domain name consisting of the complainant’s trademark and ending with the “.com” gTLD is confusingly similar to the complainant’s trademark. See Sanofi-Aventis v. The Counsel Group, LLC, WIPO Case No. D2005-0650.
The incorporation of a trademark in its entirety has been held to be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered trademark. See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201. It was decided by the panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, that “when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy”.
The Panel considers that the jumbling together of these well-known trademarks does not in any way modify a finding of confusing similarity, but rather only exacerbates the effect. In a straightforward visual examination of the disputed domain name, the Complainant’s trademark is clearly recognizable such as to lead an Internet user into confusion, and to think that the disputed domain name has a connection with the Complainant. In Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112, where the disputed domain name was identical to the registered trademarks of both complainants, the panel stated that: “[use of the trademarks] in the combined form in the disputed domain name is such as to make the disputed domain name confusingly similar to both marks.”
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark in which the Complainant has rights. Therefore the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
The disputed domain name was registered on December 24, 2010. As was stated in Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134, “mere registration [of a domain name] does not establish rights or legitimate interests in the disputed domain name.” The Respondent is not a licensee or authorized agent of the Complainant or in any way authorized to use the Complainant’s trademark LEGO.
The Complainant is not in possession of, nor has the Respondent provided the Complainant with any evidence demonstrating that the Respondent might be commonly known by the disputed domain name as an individual, business, or other organization, or that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name.
The Respondent cannot claim to have been using the Complainant’s LEGO trademark whilst unaware of the Complainant’s rights in it, as the “www.legobatmanlego.com” site, which is still live, prominently displays on its front, landing page, the Complainant’s LEGO trademark and the message, “70% off Lego Batman.” On this site, copyright material belonging to Complainant is published, including images of the Complainant’s products and its LEGO logo, which together give the impression that the site is an official LEGO site. On clicking the link to “Buy Cheap Batman Lego Sets With Free Shipping Here !!!” one is diverted to an Amazon store sites featuring a range of the Complainant’s products for sale at (apparently) discounted prices. This is evidence that the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name, without intent for commercial gain.
The Panel accepts the Complainant’s submission that it is the fame of the LEGO trademark that has motivated the Respondent to register the disputed domain name based on the Complainant’s registered trademark, in order to generate traffic to a website displaying links to “www.amazon.com” where the Complainant’s products are offered for sale. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. In Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903 the learned panel held that for the respondent’s offerings to be characterized as bona fide, they must meet several requirements, which include, at the minimum:
“- Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (WIPO Jan. 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (WIPO Feb. 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).
- The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (WIPO April 25, 2001) (no bona fide offering where website’s use of Complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (WIPO Nov. 14, 2000) (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent’s deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (WIPO June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant’s products).
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (WIPO Jan. 29, 2001) (‘a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark’).”
The Respondent does not qualify to fulfil the requirements to be making a bona fide offering set out above, because:
- The Respondent cannot be considered as a reseller as the products are sold at “www.amazon.com” and not on his own website. In LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913, the panel stated with respect to the domain name <mylegostore.com> that:
“The Panel doubts on the provided record that the Respondent could fairly be described as a genuine reseller of the Complainant’s goods within the meaning of the Policy. Rather it seems to the Panel that if there would be a relevant reseller here it would be Amazon.com, and that the Respondent (by its use of the disputed Domain Name) could at best be described as an intermediary or middle man, profiting from the unauthorized use of the Complainant’s trademark in a domain name to re-direct Internet user to a location at which LEGO products may purchased from a third party.”
- The Respondent does not disclose on its website that it is not an authorized reseller for the trademark owner. Rather the Respondent displays the trademark protected LEGO logotype on several places on the website, both at the top and also at the bottom to give the impression that it is an official website. In LEGO Juris A/S v. Probuilders, WIPO Case No. D2011-0226, the panel stated:
“The prominent use by the Respondent of the Complainant’s own logo is clearly designed to imply a connection between the Respondent and the Complainant. Accordingly, such use of the disputed domain name could not be said to be bona fide. See, e.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (no bona fide offering where websites’ use of the Complainant’s logo, and lack of any disclaimer, suggested that website was an official website of the trade mark owner).”
The Panel therefore finds that the Complainant has made a prima facie case of the Respondent’s lack of rights to or legitimate interests in the disputed domain name. Given that the Complainant has satisfactorily made out a prima facie case that the Respondent lacks rights or legitimate interests, the burden is on the Respondent to establish its right or legitimate interests in the disputed domain name. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174. The Respondent has not demonstrated or established any such right or legitimate interests.
The Respondent has not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative are:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(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.
The list of four circumstances set out in paragraph 4(b) of the Policy, which are deemed to indicate bad faith, are expressly non-exclusive.
The LEGO trademark is in global use and predates the Respondent’s very recent registration of the disputed domain name. It is therefore highly unlikely that the Respondent was unaware of the Complainant’s trademark when it registered the disputed domain name. The registration of the disputed domain name by the Respondent without authorization is evidence of its bad faith registration. See Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487 (where the panel found that the international fame of a trademark precludes innocent registration of a confusingly similar domain name).
Further, the Respondent is using the disputed domain name to access a website on which the Complainant’s trademarked logo is featured. The website is still live and currently contains advertising of the Complainant’s products for sale, however, a prospective purchaser is then directed to an Amazon shopping site. As discussed above, the Respondent does not disclose on its website, its relationship with the trademark owner. The Panel finds that the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website. It is irrelevant whether the Respondent is actually getting revenue from the pages himself. In Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, the respondent claimed that he had not received any money from the website. The panel stated that “these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain', but this gain does not need to be derived by the Respondent himself.”
The Complainant tried to contact the Respondent on February 11, 2011 through a cease and desist letter, sent by e-mail. No response was received from the Respondent to the letter or the two reminders that were sent on February 24 and April 19, 2011. The failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith. See News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623.
The Panel accepts that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
For all 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 <legobatmanlego.com> be transferred to the Complainant.
Derek M. Minus
Sole Panelist
Dated: September 19, 2011