The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is legooutlet.info Dot InFo, legooutlet.info of Florida, United States of America (“United States”).
The disputed domain name <legooutlet.info> is registered with GoDaddy.com, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2012. On February 22, 2012, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the disputed domain name. On the same date, GoDaddy.com, LLC. 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 February 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2012.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on March 22, 2012. 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 provides a list of the registered trademarks upon which its Complaint is based.
The Complainant is the owner of the Lego trademark “and all other Lego trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded goods.” The Complainant’s trademark LEGO is registered in various countries around the world.
The Complainant is also the owner of more than 2,400 domain names containing the term LEGO. These include <LEGO.com>.
The disputed domain name was registered on 6 June 2011.
The Complainant states that it and its licensees, through their predecessors, commenced use of the LEGO mark in the United States in 1953 “to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown remarkably. By way of example, the revenue of the LEGO Group in 2009 was more than $2.8 billion.” LEGO products are sold in 130 countries, including the United States.
The Complainant says that the trademark LEGO is among the best known trademarks in the world: “due in part to decades of extensive advertising […] the LEGO trademark and brand have been recognised as being famous.” A Report quoted by the Complainant in the Annexes to the Complaint states that LEGO began its operations in Denmark in the 1940s, and that a 2009 survey has shown LEGO as “the most powerful toy brand.” A list of 500 “Superbrands” shows LEGO as “number 8 of the most famous trademarks and brands in the world.”
The dominant part of the disputed domain name <legooutlet.info> comprises the word LEGO. That is identical to the trademark LEGO “which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world.”
The Complainant says that the disputed domain name is being used to generate traffic to a commercial site entitled “Pay Day Loans”, where the customer can apply for loans and get instant approval: “When you click on the ‘apply now’ icon you are redirected to “www.cash-advance-loans.co”. The site is completely unrelated to the brand LEGO […]”
The Complainant’s contentions are that:
- The disputed domain name is confusingly similar to its mark;
- The Respondent has no rights or legitimate interest in the disputed domain name;
- The Respondent registered and is using the disputed domain name in bad faith.
The Complainant seeks the transfer of the disputed domain name to itself.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15 of the Rules states that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate: Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a) (iii) of the Policy, paragraph 4(b) sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
The Complainant has shown that it is the owner of the well-known trademark LEGO, and points out that the disputed domain name incorporates the Complainant’s mark in its entirety. Various UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a Complainant's registered mark: for example, The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137.
The Complainant states that the addition of the word “outlet” has no impact on the overall impression of the dominant part of the disputed domain name: “outlet” is a non-distinctive term “commonly used in commercial circumstances referring to a place of business for retailing goods.”
The Complainant further argues that the addition of the TLD “.info” does not have any impact on the overall impression on the dominant portion of the disputed domain name, and is therefore irrelevant in determining confusing similarity between the mark and the disputed domain name. For example, in Petroleo Brasileiro S.A - Petrobras v. Chunnan Zhang, WIPO Case No. D2011-1523, the domain name <petrobras.mobi> differed from the registered PETROBRAS trademark by the additional TLD “.mobi”. The Panel stated that this was insufficient in distinguishing the domain name from the Complainant's marks: “the TLD “.mobi” is without legal significance since the use of a TLD is technically required to operate the domain name.”
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.
The Complainant asserts that it has exclusive rights to the LEGO mark and that no license or authorization has been given by the Complainant to the Respondent to use the trade mark LEGO, or to use the disputed domain name: “It is the strict policy of the Complainant that all domain names containing the word LEGO should be owned by the Complainant.”
It was open to the Respondent to demonstrate rights or legitimate interests in the disputed domain name by, for example, reliance on the circumstances set out in paragraph 4(c) of the Policy. The Respondent has not done so.
The Panel is satisfied that the Complainant has proved the requirements of paragraph 4(a)(ii) of the Policy.
As already stated, the disputed domain name incorporates the Complainant’s mark in its entirety. That domain name was registered long after the mark was registered by the Complainant in numerous countries worldwide. The Complainant says that the Respondent’s website was clearly set up “to attract internet users looking for LEGO to land on their own website from which the Respondent derives income once a visitor clicks on the link ‘apply now’ and also when they in fact apply for a loan.”
Domain names consisting of well-known trademarks (used without authorization) may constitute evidence of registration and use in bad faith. For example in F. Hoffmann-La Roche AG v. Pinetree Development Ltd., WIPO Case No. D2006-0049, the domain name was <buy-xenical-cheap-online.com>. That domain name incorporated the Complainant’s mark XENICAL in its entirety in that case, the website resolving to the domain name at issue had been used to provide an online pharmacy which offered XENICAL, as well as various other drugs, which were in direct competition with the Complainant. The use of the said domain name “thus appears to be an attempt to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark. This is evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b).”
In this present case, the disputed domain name operates by way of a “click-through” to a loan site from which the Respondent derives income.
The Complainant states that the number of third party domain name registrations comprising the trademark LEGO in combination with other words “has skyrocketed” in recent years. Nearly 30 UDRP Decisions are cited covering the past two years. To take one example, in LEGO Juris A/S v. Sharon Carbral, WIPO Case No. D2011-1677, the domain name was <legoshuttleadventure.com>. The Panel ordered that the domain name be transferred to the Complainant.
The Respondent could have answered the Complainant’s arguments by serving a Response, but has not done so.
The Panel is satisfied that the Complainant has provided evidence of bad faith registration and use pursuant to the Policy, and has proved the requirements of paragraph 4(a)(iii) of the Policy.
For 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 <legooutlet.info> be transferred to the Complainant.
Anthony R. Connerty
Sole Panelist
Dates: April 2, 2012