Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Corporate Brand Services AB, Sweden.
Respondent is Satisfaction Ink of Surrey, Canada.
The disputed domain name <legopros.com> is registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2010. On June 21, 2010, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On June 21, 2010, Wild West Domains, Inc. 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 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 Respondent of the Complaint, and the proceedings commenced on July 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 23, 2010.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on August 4, 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 is the owner of the LEGO mark, used in connection with construction toys. Complainant and its licensees, through their predecessors, began use of the LEGO mark in the United States of America in 1953. Complainant has subsidiaries and branches throughout the world, and products bearing the LEGO brand are sold in more than 130 countries, including Canada, where Complainant’s LEGO products were first sold as early as 1961 and LEGO Canada was established in 1988.
Complainant is the owner of numerous registered trademarks worldwide, including in Canada, for marks including the mark LEGO for use in connection with toys, books, computer software, computer games and other products. Complainant attached to the Complaint as Annex 6 an extensive list of its trademark registrations. Complainant is also the owner of more than 1,000 domain names containing the term LEGO, including |<lego.com>.
The disputed domain name was registred in August 2005.
Complainant contends that the disputed domain name incorporates Complainant’s mark in its entirety, is identical to and/or confusingly similar to Complainant’s trademarks, that Respondent has no rights or legitimate interests in the disputed domain name and that the domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Complainant has demonstrated that it owns strong rights in the trademark LEGO. The disputed domain name incorporates Complainant’s trademark in its entirety. The addition of the word “pros” does not add distinctive subject matter and does not avoid a finding of confusing similarity. Moreover, the addition of the top-level domain “.com” does not add any distinctive subject matter for the purpose of evaluating confusing similarity.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
Complainant contends that Respondent is not a franchisee, affiliated business or licensee of Complainant, and that Respondent is not an authorized dealer or agent of Complainant. Complainant further contends that it has not authorized Respondent to register the disputed domain name or to otherwise use Complainant’s marks.
The available record suggests that Respondent is not and has not been commonly known by the disputed domain name.
Respondent is operating a website at the disputed domain name for which the homepage describes a network of “business professionals who know how to play well.” The website lists links to each member’s company. When those links are clicked, advertisements about each company are displayed. Respondent is clearly attempting to confuse consumers by use of Complainant’s trademark in the disputed domain name to lure Internet users to the websites, and thereby benefit commercially from “click-through” advertising fees and/or by luring confused customers to the member companies advertised. Such use does not constitute a bona fide, legitimate use of the disputed domain name.
Accordingly, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the documented out of pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website 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 the respondent’s website or location of a product or service on the respondent’s website or location.
Respondent was most likely aware of Complainants’ trademark rights at the time of registering the disputed domain name. The LEGO mark is a famous mark, and it is highly likely that this fame motivated Respondent to register the disputed domain name. Complainant sent cease and desist letters to Respondent on April 7, 2010, April 19, 2010 and April 28, 2010. Respondent did not respond to any of Complainant’s letters.
In addition, the disputed domain name is connected to a web site containing advertisements to several companies unaffiliated with Complainant. The record shows that Respondent is using the disputed domain name to intentionally attempt to 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 Respondent’s website. Such use evidences Respondent’s bad faith.
The Panel finds that Respondent has registered and used the disputed domain name 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 name <legopros.com> be transferred to Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Dated: August 20, 2010