The Complainant is LEGO Juris A/S of Billund, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Narong Sangaed of Bangkok, Thailand.
The disputed domain name <lego-games-boost.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2013. On May 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2013, the Registrar 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 May 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2013.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on July 10, 2013. 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 is the registered owner of the trademark LEGO in numerous countries. A list of the LEGO trademark registrations of the Complainant is attached to the Complaint.
The disputed domain name was registered on March 9, 2013.
The Complainant is the owner of the LEGO trademarks, and also of over 1000 domain names incorporating the mark LEGO. The Complainant asserts that it has subsidiaries and branches in more than 130 countries. The Complainant contends that the LEGO trademark is among the most well-known in the world. The use of the trademark has been expanded from toys to now also include computer hardware and software, books, videos and computer controlled robotic construction sets.
The Complainant contends that the inherent and acquired distinctiveness of the LEGO trademark and its status of well-known mark provides it with the right to prevent any use of LEGO or a confusingly similar denomination in connection with any products or services.
Further, the Complainant contends that the disputed domain name comprises the mark LEGO, and therefore is confusingly similar to the Complainant’s LEGO trademark. The Complainant asserts that the fame of the Complainant’s LEGO trademark has been confirmed in numerous panel decisions, some of which are listed in the Complaint. Further, the Complainant contends that disputed domain names that comprise a well-known trademark and generic terms, as is the case here with the inclusion of “games” and “boost”, are confusingly similar to the said trademark. The addition of the terms “games” and “boost” do not have any impact on the overall impression of the dominant part of the name, according to the Complainant, nor does the addition of “.com”. Further, the Complainant contends that a person who sees the disputed domain name will inevitably conclude that there is some association with the trademark of the Complainant. The Complainant’s trademark is therefore at risk of tarnishment.
Further, the Complainant asserts that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, nor anything that would indicate that the Respondent has used the disputed domain name in a manner that would vest him with legitimate rights. No license or authorization has been granted to the Respondent in relation to the LEGO trademark, and the Respondent is not an authorized dealer of the Complainant. The Complainant also contends that the mere registration of a domain name does not vest a legitimate interest in the Respondent. Further, according to the Complainant the Respondent cannot claim to have been unaware of the Complainant’s rights to the LEGO trademark, especially since the disputed domain name refers to products sold by the Complainant.
Further, according to the Complainant the disputed domain name is not used in connection with a bona fide offering of goods or services, but rather to generate traffic and income through website linking to “www.amazon.com”, where competitors’ products are also offered for sale. This results in tarnishment of the LEGO trademark according to the Complainant, and the Respondent sponging off the Complainant’s reputation.
Further, the Respondent does not use the name as a company name or in any other manner that gives rise to rights or legitimate interests, according to the Complainant. Further the Complainant asserts that even though the Oki Data test does not apply in this case, as the Respondent is not an authorized reseller, if it were applied then the Respondent would not comply as its relationship with the Complainant is not clearly disclosed, nor is there a visible disclaimer on the relevant website. Redirecting visitors to “www.amazon.com” where rival products are for sale also does not fall within the framework of Oki Data.
Further, the Complainant contends that LEGO is a well-known mark, with a significant and substantial reputation. The Complainant asserts that the number of third party domain name registrations comprising the LEGO trademark and generic terms has skyrocketed the last years in large part due to the considerable value and goodwill of the LEGO trademark, which no doubt caused the Respondent to register the disputed domain name at issue in this case. Further the Complainant’s cease and desist letters to the Respondent went without response, and such failure to respond has been considered relevant to a finding of bad faith in a number of Panel decisions.
Further, according to the Complainant, the Respondent is attempting to take advantage of the well-known status of the LEGO trademark by intentionally attempting to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or a product or service on the registrant’s website or location. The Respondent is using the disputed domain name to attract visitors by using links to third party websites, according to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name is not identical to the LEGO trademark of the Complainant. However, it incorporates the LEGO trademark as its initial and most prominent part. The disputed domain name also includes the words “games” and “boost”, as separated by hyphens. This results in the even more prominent display of the Complainant’s LEGO trademark in the disputed domain name. The additional inclusion of one or more generic terms does nothing to distinguish the disputed domain name from the Complainant’s LEGO trademark and its attendant reputation. In this case, since the Complainant is in the business of selling toys and playthings, the inclusion of the term “games” further reinforces the impression of some legitimate connection with the Complainant, which does not in fact exist.
Therefore the Panel holds that the disputed domain name is confusingly similar with the Complainant’s LEGO trademark.
The Respondent is not known by the disputed domain name, nor has it received any authorization or license to use or register the disputed domain name, or to use the Complainant’s LEGO trademark in any way. The Complaint includes a screenshot that establishes that at the time the website to which the disputed domain name resolves was accessed by the Complainant, it contained links to “www.amazon.com”, where rival products are also on offer. At the time of writing of the Panel decision the Internet browser could not display the relevant webpage. In other words, the link to “www.amazon.com” had been removed in the meantime. Irrespective of this change, neither the diverting of Internet users to a website where the Complainant’s and others’ rival products are offered for sale, nor the absence of any actual use of the disputed domain name give rise to any rights or legitimate interests in a Respondent. It is apparent from the material put before the Panel by the Complainant that the Respondent has sought to benefit financially from attracting Internet users to its website and providing links to other websites, most likely to generate click-through fees. Internet users would be so attracted by the false impression generated by the incorporation of the Complainant’s LEGO trademark in the disputed domain name.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
In light of the nature of its business, the LEGO trademark of the Complainant is inherently distinctive. Further, as the Complainant establishes by reference to the scope of its activities, the extensive number of LEGO trademark registrations and evidence of how it is perceived by branding specialists, the LEGO trademark has acquired considerable distinctiveness around the world. In light of its fame, it is apparent that the Respondent must have been aware at the time of registration of the Complainant’s goodwill in LEGO, and in fact deliberately chose to register the disputed domain name with its consumer appeal in mind. The inclusion of terms that refer to the nature of the business the Complainant conducts by reference to its LEGO trademark further reinforces this conclusion.
Further, the Respondent did not react to the Complainant’s attempts to settle this dispute amicably. The webpage to which the disputed domain name resolved at the time of investigation by the Complainant was subsequently apparently taken down. None of this is indicative of the Respondent acting in good faith. The facts as put before the Panel are instead consistent with an illegitimate attempt by the Respondent to turn the Complainant’s reputation to its own account without any permission or authorization.
Therefore the Panel holds that the disputed domain name was registered and 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 <lego-games-boost.com> be transferred to the Complainant.
WiIliam A. Van Caenegem
Sole Panelist
Date: July 24, 2013