The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Admin of Nobby Beach, Queensland, Australia / Peter Wong of Kowloon, Hong Kong, China.
The disputed domain name <legolandpackage.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 13, 2014. On March 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 2014, 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 the Complainant on March 17, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 17, 2014.
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 the Respondent of the Complaint, and the proceedings commenced on March 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 14, 2014.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on April 24, 2014. 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 Lego Juris A/S, based in Denmark and owner of the worldwide famous trademark LEGO for construction toys, LEGOLAND and other LEGO branded products.
The Complainant submitted evidence that it is the owner of numerous national, European and international trademarks for the signs LEGO and LEGOLAND, both in word and figurative forms.
The Complainant uses the LEGO trademark to identify construction toys made and sold by the Complainant and its licensees, in Australia and worldwide.
The Complainant and its subsidiaries and branches are selling LEGO products in more than 130 countries, including in Australia. Besides its LEGOLAND theme parks have every year approximately 1,4 million visitors.
The Complainant is also the owner of more than 2,400 domain names containing the term "lego". The Complainant maintains an extensive website under the domain name <lego.com>. The Complainant also maintains a website under the domain name <legoland.com>, concerning entertainment, leisure and cultural activities.
The trademarks LEGO and LEGOLAND are among the best-known trademarks in the world, and the LEGO trademark and brands, as well as LEGOLAND have been recognized as being famous.
The Respondent registered the disputed domain name <legolandpackage.org> on June 14, 2013.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
The Complainant is and has been for many years the right holder of the marks LEGO and LEGOLAND (the "Trademarks") in numerous countries worldwide.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademarks as it is comprises the words "lego" and "legoland".
The Complainant contends that the addition of the suffix "package" will have no impact on the overall impression of the dominant part of the disputed domain name, namely "legoland".
The Complainant further submits, on the basis of previous UDRP decisions that pairing well-known trademarks with a generic suffix or prefix established confusing similarity. The Complainant concludes that the top-level suffix ".org" in the disputed domain name has no impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant when determining the confusing similarity.
Finally, the Complainant submits that, given the reputation of the Trademarks, there is a considerable risk that the public will perceive the disputed domain name as being owned by the Respondent or that there is some kind of commercial relationship with the Complainant. The Complainant therefore contends that such association is likely to create confusion with the Complainant's Trademarks.
The Complainant argues that the Respondent has no trademark rights or trade names corresponding to the disputed domain name and that it is not using LEGO or LEGOLAND in any way that would give it any legitimate rights.
The Complainant has trademark rights for LEGO and LEGOLAND and no license or authorization was granted to the Respondent to use the Trademarks in the dispute domain name or in any other manner. In addition, the Respondent is not an authorized dealer of the Complainants products and the parties have never had any business relationship.
Further, the Complainant contends that the Respondent was aware of the Complainant's rights in the Trademarks at the time of registration and that the fame of the Trademarks motivated the Respondent to register the disputed domain name. By incorporating the famous Trademarks, the Respondent's interests could therefore not have been legitimate.
The complainant submits that the Respondent is not using the dispute domain name in connection with a bona fide offering of goods and services and that the disputed domain name was registered and used in order to mislead Internet users and thus generate traffic and income through a website which has sponsored links on it.
Finally, the Complainant contends that the Respondent is tarnishing the Trademarks as it is using the LEGO trademark and misleading Internet users to a commercial website. Also, the Complainant argues that no evidence has been found that the Respondent uses any of the Trademarks as a company name or has legal rights in one of the names. The Respondent would therefore try to sponge off the Complainant's famous Trademarks.
The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.
Firstly, the Complainant submits that registration in bad faith is established on the basis of the fact that the Complainant's trademark has a strong reputation and is reputed throughout the world and that the awareness of the Trademarks is considered to be significant and substantial.
The Complainant further indicates its efforts in contacting the Respondent and trying to solve the matter amicably but without any reply from the Respondent or any success. The Complainant provides evidence that the site at the disputed domain name is currently connected to a commercial website with sponsored ads, thus using it with a commercial purpose. The Complainant concludes that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the site, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of its site.
Secondly, the Complainant puts forward that by using the disputed domain name the Respondent is not making a legitimate noncommercial or fair use, but is misleadingly diverting consumers for his own commercial gain.
The Respondent did not reply to the 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".
Notwithstanding a respondent's default, the complainant must nevertheless still establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview 2.0"), paragraph 2.1 and paragraph 4.6, and the relevant decisions cited therein. Nonetheless, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and, in the absence of exceptional circumstances, draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
As a result, asserted facts that are not unreasonable will be taken as true by this Panel.
Finally, in accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, this Panel will examine whether each the following three elements are present:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
Consequently, this Panel shall further analyse the eventual concurrence of these three grounds in the present case.
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it had registered trademark rights to LEGO and LEGOLAND well before the disputed domain name was registered.
For the sake of completeness, this Panel further analyzed the Complainant's contention with regard to the notoriety of LEGO and LEGOLAND trademarks. This Panel believes that in order to determine whether the Trademarks should be considered as being well-known, various factual elements shall be taken into account, including the degree of knowledge and recognition of the mark in the relevant sector; the duration, extent and geographical area of any use and promotion of the mark; and the enforcement efforts and success of rights in the mark. This Panel finds that the trademarks LEGO and LEGOLAND shall be considered, at least for the purposes of this administrative procedure, as well-known trademarks. Such conclusion is supported by previous UDRP decisions where Lego Juris A/S is the complainant.
Also, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its Trademarks for its commercial activities, and in particular to offer toys and entertainment activities.
Secondly, the disputed domain name fully incorporates the Complainant's distinctive and widely known LEGO and LEGOLAND Trademarks in which the Complainant has exclusive rights. This Panel finds, similarly to other UDRP panels, that it is established that where the domain name incorporates a complainant's registered trademark, as the dominant element, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy.
Thirdly, this Panel finds, similarly to other UDRP panels, that the addition of the generic top-level domain (gTLD) ".org" to the disputed domain name does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see General Motors LLC v. Star King, WIPO Case No. D2012-1929; Frey Wille GmbH & Co. KG. v. Domain Admin, PrivatProtect.org/ liuhua, WIPO Case No. D2013-1334; Spy Optic Inc. v. WhoisGuard Protected / Thomas, Thomas Jones, WIPO Case No. D2013-1649; Indian Oil Corporation Limited v. Nitin Jindal, WIPO Case No. D2010-2003; Christian Dior Couture v. Chen Takong, WIPO Case No. D2013-0053).
Fourthly, this Panel finds on the basis of previous UDRP decisions that the mere addition of generic terms is, in general, insufficient to make a disputed domain name distinctive such that it is not confusingly similar to the Complainant's registered trademark. (see Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488; Moncler S.r.l. v. xie guoren, WIPO Case No. D2010-2161; Allianz SE v. Antonio Porchia, WIPO Case No. D2010-0694; Sanofi-Aventis, Aventis Inc., Aventisub II Inc. v. Yur Bar, WIPO Case No. D2010-0663). Consequently, this Panel finds that the mere addition of the descriptive or generic term "package" does not distinguish the disputed domain name from the Trademarks, nor dispel the risk of confusing similarity.
This Panel finds in the present case that the disputed domain name incorporates the Complainant's well-known trademarks LEGO and LEGOLAND in its entirety and only with the addition of the generic term "package", and ending with the suffix ".org".
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant's LEGO and LEGOLAND trademarks.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent's rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
"When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
This Panel finds in light of the Complainant's asserted facts, that no license, permission or authorization of any kind to use the Complainant's trademarks has been granted to the Respondent. Thus, the Respondent has no rights in "lego" or "legoland".
Moreover, there is no evidence before the Panel to show that the Respondent was acting in pursuance of any legitimate interests with respect to registering the disputed domain name. Indeed, the Respondent is not commonly known by the name "lego" and/or "legoland".
Also, this Panel finds that there is no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
This Panel further finds that no evidence has been presented that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name. In fact, this Panel has considered the Complainant's assertions and evidence with regard to the Respondent's registration of the disputed domain name, and finds that the Respondent had or should have had full knowledge of the Trademarks and that its only intention was to mislead Internet users to one or more other commercial site and thus generate traffic and income by free-riding on the good reputation of the Complainant and its Trademarks.
For all the foregoing reasons, this Panel finds the Respondent's use of the disputed domain name cannot be considered to be in accordance with a bona fide offering of goods or services. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you 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".
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of "registration and use of a domain name in bad faith".
This Panel has considered the Complainant's assertions and evidence with regard to the Respondent's registration of the disputed domain name. In this respect, this Panel believes, after reviewing the website and its content as evidenced by the Complainant that the Respondent must have known and been aware of the rights in the prior well-known trademarks LEGO and LEGOLAND and the associated products and services at the time of the registration of the disputed domain name.
Such conclusion is further evidenced by the fact that the Respondent uses the LEGO and LEGOLAND logotypes on the site at the disputed domain name at which tour packages to LEGOLAND Malaysia Resort (which is owned by the LEGO Group), are apparently offered. On its own, this could in certain limited circumstances be considered use that was not in bad faith under the Policy. However, there are additional other references to e.g., London and Dubai, as well as a large number of links and references to third-party airlines which appear unrelated to any ostensibly good faith use for which the disputed domain name might be put. In sum, the Panel finds the Respondent's use of the disputed domain name is one that unfairly capitalizes on the Complainant's reputation while providing unrelated information that does not appear to be done in good faith and which creates confusion as to the Complainant's affiliation (or not) with the Respondent.
Furthermore, this Panel has considered the Complainant's assertions and evidence with regard to the Respondent's use of the disputed domain name.
In this respect, this Panel believes after reviewing the site at the disputed domain name and its content as evidenced by the Complainant that the Respondent registered and uses the disputed domain name to generate traffic and income through sponsored ads and to attract, for commercial gain, Internet users to the site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its site.
Consequently, this Panel finds that the Respondent intentionally registered and used the disputed domain name for commercial gain and that the Respondent's actual use of the disputed domain name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behaviour is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.
In light of the foregoing, this Panel finds that the disputed domain name was registered and used by the Respondent in bad faith under 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 <legolandpackage.org> be transferred to the Complainant.
Benoit Van Asbroeck
Sole Panelist
Date: May 8, 2014