The Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Private, Registration of United States of America / Dohe Dot of Thailand.
The disputed domain names <legoadventcalendarstore.info>, <legobatmanstore.info>, <legocastlestore.info>, <legocitystore.info>, <legoduplostore.info>, <legoindianajonesstore.info>, <legostarwarsstore.info> and <lego-store.info> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2009. On June 10, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On June 11, 2009, GoDaddy.com, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 7, 2009.
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on July 21, 2009. 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 LEGO Juris A/S is the owner of the LEGO brand of construction toys and other LEGO branded products. The LEGO brand of construction toys and other LEGO branded products has been registered all over the world, including Thailand where the registration was renewed in 2008 under registration No. kor78605 by KIRKBY A/S. The Complainant and its licensees (the LEGO group) through their predecessors commenced the use of the LEGO trademark in the United States, in connection with construction toys during 1953, and the trademark has been in extensive, continuous and exclusive use since then. The LEGO trademark became one of the best known trademarks around the world and is generally acknowledged as a famous trademark.
The Complainant is the holder of hundreds of domain names containing the term “LEGO”. The LEGO group also holds an extensive website under the domain name <lego.com>.
The Respondent registered the disputed domain names on November 16, 2008. The disputed domain names are currently connected to websites containing sponsored links combined with online sale sponsored by Amazon.
The Complainant contends that:
- the disputed domain names are confusingly similar to the Complainant's mark LEGO, as the suffixes “city”, “store”, “only”, “adventures” do not detract from the overall impression;
- the Respondent has no rights or legitimate interests in the disputed domain names, as it does not hold any LEGO trademark, it is not a licensee of the Complainant and it is not using the disputed domain names in connection with a bona fide offering of goods and services but only to generate traffic to the websites and through this procedure generate income through sponsored links; and
- the disputed domain names were registered and are being used in bad faith as they were registered due to considerable value and good will of the trademark LEGO and they are being used to intentionally attempt to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the websites where the disputed domain names resolve to.
The Respondent did not reply to the Complainant's contentions.
There is no doubt that the Complainant and its licensee – the LEGO group – is the holder of the famous trademark LEGO. The LEGO group has rights in the trademark LEGO for construction toys and other LEGO branded products though registration all over the world but also through extensive, exclusive and continuous use for more than a half of century.
The disputed domain names <legoadventcalendarstore.info>, <legobatmanstore.info>, <legocastlestore.info>, <legocitystore.info>, <legoduplostore.info>, <legoindianajonesstore.info>, <legostarwarsstore.info> and <lego-store.info> are confusingly similar with the Complainant's trademark as they include in their entirety the Complainant's trademark LEGO. The use of the LEGO trademark in connection with other words does not make the disputed domain names distinctive from the Complainant's trademark LEGO. In particular, the words associated with the Complainant's trademark in the disputed domain names are descriptive of different LEGO branded construction toys, the fact of which is likely to produce more confusion as an obvious association with the Complainant trademark.
In addition, it is well established that the specific top level of a domain name such as “.com” or “.info” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a trademark (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488; Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001; and OSRAM GmbH, v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004).
For these reasons, the Panel finds the Complainant has established the first element of the Policy.
As established in the UDRP jurisprudence (see Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413; Inter-Continental Hotel Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252), once a complainant establishes a prima facie showing that none of the three circumstances establishing rights or legitimate interests apply, the burden of proof on this element shifts to the Respondent to rebut the showing.
The Panel considers that in this case there are sufficient elements to find that the Complainant established a prima facie showing that the Respondent does not have rights or legitimate interest with respect to the disputed domain names.
In this sense, the Complainant asserts that it has not licensed or otherwise authorized the use of the LEGO mark to the Respondent and there is no relationship between the Complainant and the Respondent that would give rise to any license, permission or other right by which the Respondent could apply for or use any domain name or trademark incorporating the Complainant's marks.
Further the Complainant asserts that the Respondent has never been commonly known by the disputed domain names and that the only reason for registering the disputed domain names was the fame of the Complainant's trademark.
In addition, when the Complainant put the Respondent on notice of its rights, the Respondent did not put forward any legitimate claim to the disputed domain names.
Finally, the Complainant asserts that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services to any website as it is using the Complainant's trademark in order to generate traffic to the websites and through this procedure generate income through sponsored links.
None of the assertions made by the Complainant were denied by the Respondent, who has failed to file a Response in these proceedings, even though it was properly notified according to the Policy and the Rules.
In the said circumstances, the Panel can only consider, in the absence of any contrary evidence and based also on the silence of the Respondent, that the Respondent (directly or indirectly) derives some commercial benefit from the websites to which the disputed domain names resolves.
As prior WIPO UDRP panels (see Singapore Airlines limited v. European Travel Network, WIPO Case No. D2000-0641; Bayerische Motoren Werke AG v. Null, WIPO Case No. D2002-0937) have accepted, the silence of the Respondent might support a finding, based on other relevant circumstances, that it has no rights or legitimate interests in respect of the disputed domain names.
Considering this prior practice and the circumstances of this case, the Panel finds that in these proceedings the Complainant established a prima facie showing that the Respondent has no rights to or legitimate interests in the disputed domain names. The Panel, referring to the Respondent, has no indication whatsoever of any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
The Panel concludes that the Complainant has proved the second element of the Policy.
As stated in the LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564, “[g]iven the world-wide fame of Lego, it seems clear that the Respondent was aware of the Complainant and at least the goodwill in the name Lego (and perhaps also the Lego trademark), when it registered the Domain Name”.
The Panel does not see any other reason for which the Respondent registered the disputed domain names except to take advantage of the fame of the Complainant's trademark in an attempt to attract Internet users to the corresponding websites, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its websites.
The disputed domain names are currently connected to websites containing sponsored links combined with online sale sponsored by Amazon. The Panel agrees with the Complainant that it may not be strictly necessary in finding bad faith whether or not the Respondent had itself directly influenced what links should be included on the sites or the fact whether or not the revenues derived from these pages are directly obtained by the Respondent. The Panel finds in this sense that the element of bad faith registration and usage is based on the intention of the Respondent to obtain directly or indirectly benefits based on the Complainant's trademark good will.
Added to these circumstances of the case, the failure of the Respondent to respond to cease and desist letters and to respond to the Complainant's allegation support strongly, in the opinion of this Panel, the finding of both registration and use of the disputed domain names in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <legoadventcalendarstore.info>, <legobatmanstore.info>, <legocastlestore.info>, <legocitystore.info>, <legoduplostore.info>, <legoindianajonesstore.info>, <legostarwarsstore.info> and <lego-store.info> be transferred to the Complainant.
Beatrice Onica Jarka
Sole Panelist
Dated: August 4, 2009