Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Klevrings Sverige AB / Mikael Rendahl of Nacka, Sweden.
The disputed domain name <legoextra.com> (the “Disputed Domain Name”) is registered with Domaininfo AB aka domaininfo.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2012. On May 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 10, 2012, the Registrar 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 May 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 1, 2012.
The Center appointed Alexander Duisberg as the sole panelist in this matter on June 7, 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.
Respondent, Klevrings Sverige AB / Mikael Rendahl, registered the Disputed Domain Name, <legoextra.com>, on February 8, 2012. According to the information provided by the Registrar, the contact address for Respondent is a location in Nacka, Sweden.
Complainant, LEGO Juris A/S, a limited company incorporated in Denmark, challenges the registration of the Disputed Domain Name <legoextra.com> by Respondent. Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the United States of America in 1953, to identify construction toys made and sold by them. LEGO branded products have been sold in Sweden since 1955 and Complainant today continues to do so in over 130 countries worldwide, including Sweden. The undisputed submissions brought forward and evidenced by Complainant that it recognized over USD 2.8 billion in revenue in 2009 and has further developed since then.
According to the undisputed allegations and exhibits provided by Complainant, Complainant currently owns numerous trademark registrations (“LEGO Trademarks”) all over the world for LEGO, in particular the Community Trademark LEGO registered on October 5, 1998 (CTM 000039800 for class 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42).
According to Complainant’s undisputed allegations, Complainant currently owns about 2,400 top-level and country code domain name registrations incorporating the term “lego”, including lego.se and has been recognized by Superbrands UK as number 8 of the most famous trademarks and brands in the world.
It has been demonstrated by Complainant that the website of Respondent accessible under the Disputed Domain Name initially was used as a sponsored links site and subsequently the Disputed Domain Name was redirected to Respondent’s website “www.bokextra.se” offering LEGO products together with non LEGO products for sale.
Complainant contends that the Disputed Domain Name <legoextra.com> is identical or confusingly similar to its LEGO Trademark, that Respondent lacks rights or legitimate interests in the Disputed Domain Name and that the Disputed Domain Name has been registered and is used in bad faith:
(a) Complainant is the owner of the LEGO Trademarks. Moreover, Complainant contends that its LEGO Trademark is a famous and well-known brand and that the Disputed Domain Name <legoextra.com> is identical and confusingly similar to the LEGO Trademark as it incorporates Complainant’s distinctive trademark in its entirety. Complainant asserts that the suffix of “extra” will not have an impact on the overall impression of “lego” as the dominant part of the Disputed Domain Name and that, thus, the Disputed Domain Name is confusingly similar to the LEGO Trademarks. Further, Complainant argues that the addition of “.com” in its capacity as a generic Top Level Domain (gTLD) does not remove the confusing similarity between the Disputed Domain Name and Complainant’s LEGO Trademark and that it has been established by previous UDRP panels that the gTLD has no distinguishing capacity in the context of the domain name.
(b) Complainant argues that Respondent cannot demonstrate any rights or legitimate interests in the Disputed Domain Name. Complainant contends that Respondent is not commonly known by the Disputed Domain Name and has not used the Disputed Domain Name in connection with a legitimate business and that there is no license or authorization by Complainant given to Respondent to use the LEGO Trademark. Complainant avers that Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name as it is using the Disputed Domain Name for the purpose of misleading and attracting customers to Respondent’s website (providing sale of LEGO products together with numerous other products, such as competitors to Complainant within the toy business, books, women’s underwear etc.) for its own commercial gain (also by initially using it as a parking page for generating click through revenues).
(c) Finally, Complainant contends that the Disputed Domain Name was registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy. More specifically, Complainant maintains that the unauthorized use of a complainant's trademark to generate pay-per-click revenue or to sell competitive products constitutes bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. Complainant refers to previous UDRP decisions qualifying the use of a domain name to attempt to attract clicks to its own websites for commercial gain by creating a likelihood of confusion with a complainant’s trademark as to source, sponsorship, affiliation or endorsement of his website as an act in bad faith.
Complainant requests a decision that the Disputed Domain Name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
Complainant is the holder of the widely known LEGO Trademark that is used primarily for construction toys. Complainant has demonstrated that it has registered numerous LEGO Trademarks, and has used said trademarks for a period of time substantially preceding Respondent’s registration of the Disputed Domain Name in 2011.
According to established case law and previous decisions under the UDRP a TLD suffix, in this instance the gTLD suffix “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy, see Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; SANOFI-AVENTIS v. Britny Spears, WIPO Case No. D2006-0795 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The Panel concurs with the underlying reasoning and confirms that the applicable top-level suffix in the domain name may usually be disregarded under the confusing similarity test as it is a technical requirement of registration.
Complainant does not show to have registered trademark rights in the term “legoextra”. Nonetheless, Complainant shows to have registered trademark rights in LEGO. The Panel considers the Disputed Domain Name <legoextra.com> to be composed of a name identical to the LEGO Trademark and the non-distinctive generic term “extra”.
The Panel is of the opinion that the mere addition of non-distinctive text to a complainant’s trademark does not remove confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Reckitt Benckiser Group plc v. Johnny Steel, WIPO Case No. D2009-0783, where the domain name <nurofenplus.com> was held to be confusingly similar to the NUROFEN trademark; International Business Machines Corporation v. Scott banner, WIPO Case No. D2008-0965, where the domain name <ibmdownload.com> was held to be confusingly similar to the IBM trademark because many Internet users would assume that the domain name identifies a website from which they can download software supplied by complainant; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where the addition of the words “mail”, “post”, “fan” and “top50” to the word “pokémon” in the disputed domain names was held to be of minimal impact on what the Internet visitor focuses on, namely the word “pokémon”).
The Panel, thus, finds that the Disputed Domain Name <legoextra.com> is confusingly similar to Complainant’s LEGO Trademark and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
The Panel finds that Respondent has neither rights nor legitimate interests in respect of the Disputed Domain Name <legoextra.com>.
Complainant has asserted in its Complaint that Respondent is neither affiliated with nor authorized by Complainant in any way to use the LEGO Trademark as part of the Disputed Domain Name.
The Panel notes that Complainant reported in the Complaint that prior to the filing of the Complaint the matter has been discussed with Respondent and that Respondent claimed an entitlement to use the term “lego” in the Disputed Domain Name. Despite proper notification Respondent, however, did not submit a Response to the Center addressing Complainant’s contentions and, thus, the Panel cannot rely on a submission by Respondent supporting such potential entitlement to use the Disputed Domain Name due to rights or legitimate interests of Respondent.
The Panel acknowledges the consensus view - as set forth in paragraph 4.6 of the WIPO Overview 2.0 - that a respondent’s default to respond to the complaint does not automatically result in a decision in favor of the complainant. The complainant must establish each of the three elements required by paragraph 4(a) of the Policy and although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. Accordingly, under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is established case law, however, that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Name in order to shift the burden of production to Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094 <championinnovation.com>; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 <croatiaairlines.com>; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 <belupo.com>.)
The Panel notes that Complainant in the Complaint made a prima facie showing that Respondent has not been commonly known by the Disputed Domain Name and that Respondent has not acquired trademark or service mark rights. Respondent’s use and registration of the Disputed Domain Name was not authorized by Complainant and there are no indications that a connection existed between Complainant and Respondent justifying the use of the LEGO Trademark as part of the Disputed Domain Name. Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
In February 2011 the Disputed Domain Name was parked with a sponsored links site that purports to offer for sale various other products and shortly thereafter in March 2011 the Disputed Domain Name was redirected to Respondent’s website “www.bokextra.se”. According to a printout of this website, it appears that Respondent has been selling, via this website, Complainant’s products and products that compete with Complainant’s products, as well as books, women’s underwear etc.
The Panel is of the opinion that a reseller cannot be making a bona fide use of the Disputed Domain Name by offering goods and services if the use of the site is not to sell only the trademarked goods and/or accurately disclosing Respondent’s relationship with the holder of the trademark (see Reckitt Benckiser Group plc v. Johnny Steel, WIPO Case No. D2009-0783; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
In the present case, Respondent appears to sell various products on its website including such of competitors to Complainant (such brands like Brio or Disney) and has at least in the past used its website to sell toys of both Complainant and of Complainant’s competitors. Moreover, by the absence of a disclaimer on “www.bokextra.se” Respondent might even have created an impression that the website is authorized or licensed by Complainant.
Particularly in this case, where Respondent has offered no reason (and there appears to be no obvious reason) why Respondent’s commercial use should be considered bona fide or a fair use, the Panel finds that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name (MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS, WIPO Case No. D2008-0009).
Paragraph 4(b) of the Policy sets out a number of illustrative circumstances which, if found by the panel, are taken to be evidence of bad faith registration and use of a domain name.
One of these circumstances (paragraph 4(b)(iv) of the Policy) is that Respondent, by using the Disputed Domain Name intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
In the instant case, Respondent must have had knowledge of Complainant’s rights in the LEGO Trademark at the moment it registered the Disputed Domain Name, since Complainant’s LEGO Trademark is a widely known trademark. Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith at the moment of registration (See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix suggested knowledge of complainant’s rights in the trademarks). Since Respondent must have had knowledge of Complainant’s rights in the LEGO Trademark at the moment it registered the Disputed Domain Name, and since Respondent had no rights or legitimate interests in the Disputed Domain Name, it is established that the Disputed Domain Name was registered in bad faith.
Moreover it is established that Respondent registered and used the Disputed Domain Name, including Complainant’s widely known LEGO Trademark, for the purpose of intentionally attracting Internet users to Respondent’s website by suggesting that Respondent’s website is affiliated with or endorsed by Complainant. Respondent obtains commercial benefit through the selling of products on its website. Such use here constitutes bad faith according to paragraph 4(b)(iv) of the Policy (see Milwaukee Radio Alliance, L.L.C. v. WLZR-FM LAZER 103, WIPO Case No. D2000-0209, where it was held that there was bad faith where a domain name holder seeks to create an “initial confusion on the part of Internet users with regard to the source of the domain name”; Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102, where it was held that respondent was taking a free ride on the goodwill of complainant’s trademark through the use of a domain name aiming at creating traffic to its website).
As regards the use of the Disputed Domain Name parked at a sponsored links site the Panel acknowledges that numerous UDRP panels have found bad faith in circumstances where the respondent intentionally diverted Internet users (see, for instance, F. Hoffmann-La Roche AG v. DOMIBOT, WIPO Case No. D2006-0327). Given the circumstances of this present case, there are sufficient reasons for the Panel to assume that Respondent takes commercial advantage if Internet users click on the links displayed on the website which is linked to the Disputed Domain Name because it receives revenue resulting from such pay-per-click or click-through activities of Internet users who follow such links. Therefore, the Panel finds that Respondent is using the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website.
The fact that the webpage contains advertising links, from which Respondent likely benefits through a “Cash Parking” monetization program, supports the inference that the purpose of Respondent’s diversion of traffic from Complainant to himself is for Respondent’s own commercial gain (see in this context Ticketmaster Corporation v. Yong Li, WIPO Case No. D2003-0905; Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Henry Chan, WIPO Case No. D2004-0218; Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Yong Li, WIPO Case No. D2004-0296).
No evidence has been given by Respondent regarding the question whether or not the Disputed Domain Name was registered and used in bad faith.
For these reasons, the Panel finds that the Disputed Domain Name was registered and used in bad faith, in accordance with paragraph 4(b)(iv) 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 <legoextra.com> be transferred to Complainant.
Alexander Duisberg
Sole Panelist
Dated: June 28, 2012