Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Mr. Antonio of Tasikmalaya, Jawa Barat, Indonesia.
The disputed domain name <lego-eisenbahn.info> (the “Domain Name”) is registered with GoDaddy.com, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2012. On the same date, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Name and GoDaddy.com, LLC 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 March 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2012.
On April 2, 2012, the Center received an email communication from Complainant requesting suspension of the proceeding until May 2, 2012. On May 3, 2012, the Center received an email communication from Complainant requesting reinstitution of the proceeding. On May 4, 2012, the Center notified the parties of reinstitution of the proceeding and the new due date for Response, which was May 10, 2012.
Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on May 11, 2012.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on May 21, 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.
Complainant LEGO Juris A/S, based in Denmark, manufactures and sells in 130 countries worldwide, including Indonesia where Respondent is located, a number of LEGO-branded products. Complainant is best known for its broad line of children’s construction toys.
Complainant owns registrations of its LEGO trademark in many countries and jurisdictions, including by way of particularly relevant example, the European Community (Registration No. 000039800 LEGO, dated May 10, 1998), Denmark (Registration Nos. 604-1954 and 94-1963), Germany (six registrations), and the United States of America (Registration No. 1,018,875, dated August 26, 1975, and Registration No. 2245652, dated May 18, 1999).
Complainant also owns more than 2,400 domain names containing the term LEGO and maintains an extensive website at “www.lego.com”.
Respondent registered the Domain Name on December 18, 2011. Complainant’s business and trademarks clearly predate, in some cases by many years, Respondent’s registration of the Domain Name.
The Domain Name directs the Internet user to a website featuring sponsored advertisements for goods sold not on the website at the Domain Name but through “www.amazon.de”. The products advertised include those of Complainant, in particular a toy train set, as well as goods of other manufacturers, at least one of which may compete directly with Complainant’s toy train products.
Complainant contends that the Domain Name is identical or confusingly similar to the LEGO trademark in which Complainant has established legal rights. The Domain Name incorporates the world famous LEGO mark. The addition of the word “eisenbahn” is not relevant and has no impact upon the overall impression on the dominant part of the Domain Name, namely “lego”. The inclusion in the Domain Name of a hyphen and the top level domain “info” likewise have no relevance in comparing the Domain Name and the LEGO trademark.
Complainant contends that the Domain Name creates a likelihood of confusion that Respondent’s website is associated with Complainant’s trademark and that there exists an association or commercial relationship between Respondent and Complainant.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Respondent has no registered trademarks or trade names using the Domain Name. Complainant has not licensed or authorized Respondent to use the LEGO trademark.
Respondent, it is contended, is not making a bona fide use of the Domain Name which would establish that Respondent possesses rights or legitimate interests in the Domain Name. Use of Complainant’s famous mark without permission suggests that Respondent does not have rights or legitimate interests in the Domain Name.
Respondent is using the Domain Name to generate traffic to a website displaying sponsored links to online stores offering Complainant’s products as well as products of Complainant’s competitors, and is generating revenues for himself from click-through payments. Complainant contends this is not a bona fide offering of goods.
Complainant contends further that Respondent registered and is using the Domain Name in bad faith. Complainant relies in this regard principally upon i) the fame of the LEGO trademark; ii) the fact that Respondent is using the Domain Name intentionally to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website; and iii) Respondent’s failure to respond to Complainant’s cease and desist letter.
Respondent did not reply to Complainant’s contentions.
Respondent did not respond to the Complaint. The Panel therefore considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form and sent the Written Notice in hard copy by courier to Respondent at the addresses provided in the Complaint, in Respondent’s registration information available in the WhoIs and as confirmed by the Registrar. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding and moreover appears to have achieved actual notice.
Where there is no response to the complaint, the panel must decide the dispute based upon the complaint, Rules, paragraphs 5(e) and 14(a). The panel is to decide the Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable, Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) Respondent’s 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 in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith.
Complainant has established legal rights in its LEGO trademark by reason of long-term use and registration of the mark in numerous jurisdictions around the world.
Complainant contends, and a number of prior UDRP decisions have found, that the LEGO trademark is famous or well-known. See LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680. This Panel agrees that the mark is well-known. The evidence of record in fact suggests that LEGO is one of the ten most recognized trademarks in the world.
The Panel finds that the Domain Name is confusingly similar to Complainant’s LEGO trademark. The incorporation of another’s well-known mark in one’s domain name is strong evidence of a purpose to cause confusion by creating and exploiting a false perception of association between the owner of the trademark and the website to which the domain name relates and the likelihood that such confusion will occur.
The use of other descriptive or generic words with another’s trademark will generally not be sufficient to negate confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraphs 1.2 and 1.9, and cases cited therein. Here, Respondent uses the German word “eisenbahn”, meaning “railway” or “railroad” in English, with the LEGO trademark. “Eisenbahn” is generic or merely descriptive of a product, in this case a railroad or train toy construction set that Complainant actually makes and sells. Thus, the word “eisenbahn” as used here does not distinguish the Domain Name from Complainant’s trademark and in fact tends to strengthen the perception of an association between the two, because it describes a product that Complainant makes and sells.
The use in the Domain Name of the top level domain “info” and the insertion of a hyphen both are irrelevant for purposes of comparing the Domain Name and the Complainant’s trademark. They do not serve in any way to distinguish the Domain Name from the LEGO trademark. See WIPO Overview 2.0, paragraph 1.2.
The Panel thus finds that the Domain Name is confusingly similar to Complainant’s LEGO trademark and that Complainant, therefore, has established the first element of its case.
Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. The allegations of the Complaint and the supporting exhibits are sufficient here to establish a prima facie case that Respondent does not have rights or legitimate interests in respect of the Domain Name.
Complainant denies that it has authorized Respondent to use its LEGO trademark or that it has any association with Respondent. There is no evidence that Respondent has ever registered a trademark or trade name using the Domain Name or that Respondent has commonly been known by the Domain Name.
A respondent may try to show that it has rights or legitimate interests by demonstrating use of the domain name in connection with a bona fide offering of goods or services, Policy, paragraph 4(c)(i). On the basis of the record before the Panel, however, Respondent is using the Domain Name, based on Complainant’s well-known trademark, to divert Internet users from Complainant’s website to Respondent’s website, which provides sponsored links to sellers of various products, including Complainant’s products and products that compete with those of Complainant, and generates pay-per-click revenues to Respondent from the advertisers on the website. Respondent here is not functioning as a legitimate reseller or distributor of Complainant’s goods. Respondent is not actually selling Complainant’s goods, has no authority to sell Complainant’s goods, and is in fact carrying advertising for goods that compete with those of Complainant. Respondent’s website carries no disclaimer that it is unrelated to Complainant. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and WIPO Overview 2.0, paragraph 2.3. The Panel thus finds that Respondent’s use of the Domain Name does not constitute a bona fide offering of goods or services that would confer rights or legitimate interests in the Domain Name on Respondent. See LEGO Juris A/S v. Suka LLC, WIPO Case No. D2011-1057; LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913; LEGO Juris A/S v. J.h. Ryu, WIPO Case No. D2010-1156 and WIPO Overview 2.0, paragraph 2.6.
Respondent clearly makes a commercial use of the Domain Name and uses the Domain Name misleadingly to divert consumers to its website. Respondent thus is not making a noncommercial or fair use of the Domain Name, Policy, paragraph 4(c)(iii).
Respondent has not come forward to refute Complainant’s prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The prima facie case thus is accepted, and Complainant has proved the second element of its case. See WIPO Overview 2.0, paragraph 2.1.
Complainant must show that Respondent registered and is using the Domain Name in bad faith. Under paragraph 4(b)(iv) of the Policy, the following is evidence of registration and use in bad faith:
“By using the domain name, you [Respondent] 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.”
Respondent registered the Domain Name incorporating Complainant’s long-established and, as found above, well-known, trademark in its entirety. Respondent clearly knew of Complainant’s LEGO trademark and intended to use it to create a false impression for the Internet user that Respondent is associated with or sponsored by Complainant. This constitutes bad faith registration of the Domain Name.
Respondent is using the Domain Name to divert Internet users to Respondent’s commercial website where Respondent advertises links to sellers of Complainant’s goods as well as goods that compete with those of Complainant. The Panel finds that Respondent is intentionally creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site, which is sufficient under the circumstances to establish bad faith use of the Domain Name. See Juris A/S v. Adry Asry, WIPO Case No. D2011-1224; LEGO Juris A/S v. James Mills, WIPO Case No. D2011-1000; LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913; The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057.
Respondent’s failure to respond to the cease and desist letter and subsequently to the Complaint further support the inference of bad faith.
Based upon all of the foregoing, the Panel concludes that Respondent registered and is using the Domain Name in bad faith and that Complainant, therefore, has established the third and final element of its case.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <lego-eisenbahn.info>, be transferred to Complainant.
John R. Keys, Jr.
Sole Panelist
Dated: June 4, 2012