Complainant is LEGO Juris A/S, of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Above.com Domain Privacy / Transure Enterprise Ltd of Victoria, Australia and City Tortola, Tortola, British Virgin Islands, respectively.
The disputed domain name <buymealego.com> is registered with Above.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 7, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 8, 2012.
The Center verified that the Complaint together with the amendment to 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 November 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 4, 2012.
The Center appointed Alain Bensoussan as the sole panelist in this matter on December 18, 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 owns numerous trademarks composed with the sole word “lego” registered in numerous countries all over the world, several of them having been registered for more than 50 years. Among these trademarks, it owns an Australian verbal trademark No.1282485 LEGO, filed and registered on January 28, 2009 and which registration was published on October 1, 2009. The registration of the disputed domain name was made via a privacy service located in Australia
It also holds numerous domain names composed with the word “lego”.
According to the Centre for Brand Analysis, the trademark LEGO is ranked at the 31st position among the official top 500 trademarks in the world, in 2012.
The underlying registrant of records, the company Transure Enterprise Ltd located in the Bristish Virgin Islands registered with the Registrar, Inc. the disputed domain name <buymealego.com> on July 1, 2012.
The disputed domain name leads to a website that contains numerous links for products ranging from selling of Bio Food Products on line to selling of beauty products on line. The parking page contains also a column named “related searches” under which the links named “Star Wars Lego Set”, “Buy Lego”, “Lego Games”, Lego Star Wars Models” appears.
Complainant contends that the trademark LEGO has acquired the statute of a well-known trademark, which has been recognized in several previous UDRP decisions. It further states that this reputation provides a wider protection according to the provisions of Article 6 bis of the Paris Convention, in particular it provides the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services, i.e. regardless of the list of products and services for which the trademark is registered.
It further submits that the disputed domain name is confusingly similar to its famous trademark insomuch as the dominant part of the domain name comprises the trademark LEGO whereas the addition of the top-level domain name “.com” is irrelevant to determine the confusing similarity between the trademark and the Domain Name.
It adds that, according to its researches, Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name; moreover nothing would suggest that Respondent has been using the trademark LEGO in any other way that would give it any legitimate rights in the name. Complainant also submits that no license or authorization of any other kind has been given to Respondent to use the trademark LEGO and adds that Respondent could not be unaware of the existence of the famous trademark LEGO when he registered the disputed domain name.
Finally, Complainant states that the disputed domain name was registered and is being used in bad faith insomuch as:
- it is currently connected to parked pay per click Web site, which underline the intent of Respondent to use the disputed domain name as a mean to attract, for commercial gain, Internet users to websites ;
- it first tried to contact the Respondent on August 28, 2012 through a cease and desist letter and offered to acquire the disputed domain name in compensation with the expenses of registration and transfer fees not exceeding our of pocket expenses; but Respondent only agreed to transfer the Domain Name for an amount exceeding the out of pocket expenses.
Respondent did not reply to Complainant’s contentions.
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Moreover, the scope of protection of a well-known trademark has to be construed in view of article 6 bis of the Paris Convention.
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly, that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
The Panel finds that Complainant has established that it owns several trademarks LEGO all over the world, especially in Australia through an extract of the database of the Australian Intellectual Property Office which evidences the status of the Australian trademark No.1282485 LEGO filed and registered on January 28, 2009.
The Panel finds also that Complainant has evidenced that the trademark LEGO is famous all around the world, with the production of an extract of the manual Consumer Superbrands which evidences that the trademark LEGO is at the rank 31 among the first 500 famous trademarks.
The disputed domain name contains the famous trademark LEGO. The words and article “buy”, “me” and “a” are not distinctive and do not diminish the attractive character of the name LEGO trademark in the disputed domain name. Indeed the words “buy” and article “me” and “a” directly refer to the purpose of the Web site activated under the disputed domain name. Finally, it is constantly stated that the addition of the Top Level Domain, such as “.com”, may be disregarded when determining identity or similarity, insomuch as it is a technical part of a domain name. In other words, within the disputed domain name, the attractive and distinctive element is the LEGO trademark.
Moreover, article 6bis of the Paris Convention, ratified by Australia and the United Kingdom of Great Britain and Northern Ireland in particular, provides that “the countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith”. This article organizes a wide protection in the benefit of well-known trademarks.
In the present case, the website activated under the disputed domain name contains several commercial links and in particular links named “Starwars Lego”, “Lego Starwars”, “Buy Lego”. The suggested related searches contained in the parking pay per click Web page directly refer to the famous trademark LEGO.
The Panel therefore finds that Complainant has proven that the disputed Domain Name is confusingly similar to Complainant’s registered trademark LEGO.
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Pursuant to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1, “while the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In the present case, Respondent has not evidenced that it would have rights or legitimate interests in the disputed domain name, in particular it has not evidenced that it would have been authorized by Complainant to use the trademark LEGO, whereas Complainant has, in particular, stated that according to its researches, Respondent does not have any registered trademarks or trade names corresponding to the domain name and that no license or authorization of any other kind has been given to Respondent to use the trademark LEGO.
The Panel therefore finds that an unrebutted prima facie case has been made by Complainant that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Pursuant to WIPO Overview 2.0, paragraph 3.6, “Evidence of offers to sell the domain name are generally admissible under the UDRP, and is often used to show bad faith”
In the present case, Complainant has evidenced that it tried to amicably settle the present dispute and offered for the disputed domain name a compensation for the expenses of registration and transfer fees not exceeding out of pocket expenses. It is also evidence that Respondent only agreed to transfer the disputed domain name for an amount exceeding the out of pocket expenses, i.e. USD 900.
Moreover the activation of the disputed domain name through a pay per click Web site, which results in the allocation of revenues to Respondent each time an Internet user click on a link contained on the Web page, and the presence of links under the column suggested research named “Starwars Lego”, “Lego Starwars”, “Buy Lego” highlight the intent of Respondent to benefit of the reputation of the trademark LEGO without any right or legitimate interest.
The Panel therefore finds that Complainant has proven that Respondent has proven that the disputed domain name has been registered and is being used in bad faith.
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 <buymealego.com> be transferred to Complainant
Alain Bensoussan
Sole Panelist
Date: January 1, 2013