Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondents are: DomainPark Ltd, David Smith of California, United States of America; Above.com Domain Privacy of Beaumaris Victoria, Australia; Transure Enterprise Ltd, Host master, of Tortola, Virgin Islands, Oversees Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain names <club-lego.com>, <digitallego.com>, <legoindianajones2game.com>, <legoinside.com>, <legolan.com>, <legolandgame.com>, <legomanias.com>, <legominstorms.com>, <legosmarsmission.com> and <legostarwarscheat.com> are registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2010. On February 1, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain names. On February 2, 2010, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which was similar to one of the named Respondents in the Complaint. 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 Respondents of the Complaint, and the proceedings commenced on February 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2010. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on February 25, 2010.
The Center appointed Lynda M. Braun as the sole Panelist in this matter on March 3, 2010. 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.
Complainant Lego Juris A/S is based in Denmark and is the owner of the trademark LEGO and all other trademarks used in connection with the famous and distinctive brand of LEGO branded products. Complainant's licensees are authorized to utilize Complainant's trademark rights in Australia and elsewhere and only one company has a license to use the trademark in connection with the LEGO marks. Respondents do not have a license to use any of Complainant's LEGO marks. However, all rights to the LEGO trademark are still owned by the LEGO Group. The use of the LEGO mark has been used continuously in Australia since 1962 and over the years, the LEGO business has grown enormously. LEGO products are sold in more than 130 countries and the revenue for LEGO in 2008 was more than USD 1 billion.
LEGO is also the owner of more than 1000 domain names containing the term “lego”. LEGO is the owner of the 8th most famous trademark and brand in the world. It is the strict policy of Complainant that all domain names containing the word “lego” are owned by Complainant.
However, it recently came to LEGO's attention that Respondents registered the following domain names — all which contain the LEGO trademark— on the following dates:
<LEGOLANDgame.com> October 10, 2009
<club-LEGO.com> November 4, 2009
<LEGOminstorms.com> November 15, 2009
<LEGOmanias.com> November 17, 2009
<digitalLEGO.com> November 12, 2009
<LEGOsmarsmission.com> March 22, 2009
<LEGOstarwarscheat.com> March 22, 2009
<LEGOinside.com> December 1, 2009
<LEGOlan.com> December 20, 2009
<LEGOindianajones2game.com> November 25, 2009
Complainant states that the domain names registered by Respondents contain the dominant part of Complainant's trademark. Thus, it alleges that those domain names are identical to the registered trademarks and domain names in some form. Moreover, Complainant then alleges that as a result of the above, Respondents' domain names are confusingly similar to Complainant's world famous trademarks and domain names throughout the world.
Complainant also claims that the additions of the suffixes and prefixes in Respondent's domain names are not relevant and do not have any impact on the overall impression of the dominant part of the names. Nor does the addition of “.com” gTLD have any impact on the overall impression of the domain names. Thus, Complainant contends that the domain names are confusingly similar to Complainant's trademarks. Also, the suffix “minstorms” is a misspelling of another one of Complainant's trademarks. Moreover, Complainant also contends that anyone who sees the disputed domain names will mistake them for Complainant's marks. Thus, there is a risk that the public will perceive Respondents' domain names as owned by, endorsed by, licensed by or associated with those of Complainant.
Respondents did not reply to the Complainant's contentions.
In order for Complainant to prevail and the dispute domain names transferred to Complainant, Complainant must prove the following (the Policy, paragraph 4(a)(iii):
(i) The disputed domain names are identical or confusingly similar to a trademark of service mark in which Complainant has rights;
(ii) Respondents have no right or legitimate interest in respect of the disputed domain names; and
(iii) The disputed domain names were registered and are being used in bad faith.
Complainant has valid and extremely well established exclusive rights in its LEGO trademarks. It also owns approximately 1000 domain names that contains the LEGO trademark. Complainant uses the LEGO mark for a great variety of products.
As UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark. See, Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortage.com> are identical for purposes of the Policy); see also Sonia Rolland v.Belize Domain WHOIS Service, WIPO Case No. D2009-0480 (finding that SONIA ROLLAND and <soniarolland.com> are identical for purposes of the Policy).
Furthermore, it is well established that the addition of the suffix “.com” to a trademark in its entirely is irrelevant and does not change the likelihood of confusion between a domain name and a registered trademark. See, e.g. BIC Deutschland GMbH & Co KG v. Paul Tweed, WIPO Case No. D2000-0418 (finding that TIPP-EX and <tipp-ex.com> are identical for purposes of the Policy).
The Panel therefore concludes that the domain names listed above are identical or confusingly similar to Complainant's LEGO marks in which Complainant has valid and exclusive rights. Thus, Complainant has established the first element of the Policy.
Once a complainant establishes that a respondent's domain name is identical or confusingly similar to a complainant's mark, and has made a prima facie case that respondent lacks rights or legitimate interests in the domain name, the burden shifts to respondent to establish some rights or legitimate interest with respect to the domain name. See Sony Kabushiki kaisha v. sony.net, WIPO Case No. D2000-1074. The Panel, noting that Complainant has not authorized Respondents to use the LEGO marks, finds that Complainant has made such a prima facie case, in which Respondents have not answered.
It is clear that no license or authorization of any kind has been provided by Complainant to Respondents to use any of its trademarks or to apply for or use any domain name incorporating those marks. See Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055. Thus, it is clear that no bona fide or legitimate use of the domain names could be claimed by Respondents. See id. No evidence has been found that Respondents used any of the domain names as a company name or has any other legal right in the LEGO marks. Indeed, a previous panel stated that “rights or legitimate interest cannot be created where the user of the domain name at issue would not choose such name[s] unless he was seeking to create an impression of association with the Complainant.” Drexel University v. David Broud, WIPO Case No. D2001-0067.
Furthermore, by not submitting a response to the Complaint, Respondents have failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds some right or legitimate interest in the disputed domain names. See Ahead Software AG. v. Leduc Jean, WIPO Case No. D2004-0323; see also, Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (finding that the respondent's default alone was sufficient to conclude that it had no right or legitimate interest in the domain names).
Thus, the Panel concludes that Respondents have no rights or legitimate interests in respect of the disputed domain names and Complainant has established the second element of the Policy.
First, in view of the circumstances, the Panel infers Respondents' bad faith intent from Respondents' lack to respond to the Complaint. See Awesome Kids LLC and /or Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
Second, Respondents' registration of the LEGO domain names many years after Complainant began to use and widely promote its trademarks is evidence that the domain names were registered in bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademarks.). Thus, it can be inferred that Respondents were aware of Complainant's well-known trademarks and specifically registered the domain names to confuse Internet users and to attract them to Respondents' websites. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Given Complainant's numerous trademark registrations for, and its wide reputation in, the word “lego”, it is not possible to conceive of a plausible situation in which Respondents would have been unaware of this fact at the time of registration. Thus, the Panel finds that Respondents registered the domain names in bad faith.
Third, when Complainant attempted to contact Respondent about the disputed domain names, David Smith (one of the Respondents) replied, stating that he would be willing to sell the domain names for USD 250 each. The same occurred when Complainant contacted Above.com Domain Privacy (another Respondent), who offered Complainant USD 500 and USD 250 for 2 of the domain names. Such offer of remuneration for transfer of a disputed domain name constitutes use in bad faith.
Fourth, perhaps the most compelling evidence of Respondents' bad faith is evidenced in its long pattern of abusive registration, infringement and cybersquatting. Domain names of Respondent incorporating famous and distinctive marks have been the subject of approximately 38 UDRP proceedings and in each case the panel ordered Respondent, Transure Enterprise Ltd to transfer the respective domain names to the complainant. Such conduct is evidence of Respondent's use of the domain names in bad faith under paragraph 4(a) of the Policy.
Finally, the domain names are currently connected to web sites containing sponsored links. Thus, Respondent are using the domain names to intentionally attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of the websites. Indeed, this conduct additionally confirms that Respondents have used the domain names in bad faith. Thus, the Panel concludes that Respondents have registered and used the domain names in bad faith and Complainant has established the third element 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 domain names <club-lego.com>, <digitallego.com>, <legoindianajones2game.com>, <legoinside.com>, <legolan.com>, <legolandgame.com>, <legomanias.com>, <legominstorms.com>, <legosmarsmission.com> and <legostarwarscheat.com> be transferred to Complainant.
Lynda M. Braun
Sole Panelist
Dated: March 10, 2010