The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Jack Hollingsworth of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
The disputed domain name <legoland.london> is registered with Minds + Machines Registrar Limited (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 19, 2015. On January 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2015, 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 January 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 13, 2015.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on March 2, 2015. 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 numerous national, European and international trademark registrations for the terms LEGO and LEGOLAND, in particular Community trademarks number 000039800 LEGO (word) and number 000054205 LEGOLAND (word), registered both on October 5, 1998 for goods and services in numerous classes, including goods in class 28 (amongst others "games and playthings").
The disputed domain name <legoland.london> was registered on August 27, 2014.
It results from the Complainant's undisputed allegations that the Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United Kingdom. Moreover, the LEGOLAND theme parks have about 1,4 million visitors per year. The LEGOLAND parks are today owned by Merlin Entertainments. The LEGO Group owns 20% of Merlin. However, all rights to the trademark LEGOLAND are still owned by the LEGO Group and Merlin has an exclusive license to use the trademark in connection with the parks. Furthermore, the LEGO Group maintains a website under the domain name <legoland.com>. A list of the official top 500 Superbrands for 2014, provided by Superbrands UK, shows LEGO as winner in the category "Child Products - Toys and Education" and LEGOLAND as winner in the category "Leisure & Entertainment – Destinations". Moreover, the Reputation Institute nominated the LEGO Group as number 10 on their list of "the World's Most Reputable Companies" 2013. Recently, TIME also announced LEGO to be the Most Influential Toy of All Time.
The Complainant contends that the disputed domain name is confusingly similar to its trademarks LEGO and LEGOLAND since the dominant part of the disputed domain name reproduces the entirety of both trademarks. The addition of the new generic Top-Level Domain (gTLD) ".london" does not have any impact on the overall impression of the dominant portion of the disputed domain name.
It further results from the Complainant's undisputed contentions that the Respondent has no prior rights or legitimate interests in the disputed domain name. The Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant. The Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services. Instead he has chosen to park the disputed domain name with the Registry for the gTLD ".london", driving traffic intended to the Complainant's legitimate web site to that web site. By doing this, Respondent is misleading Internet users.
Finally, the Complainant contends that the Respondent registered and used the disputed domain name in bad faith. In particular, it results from the evidence provided by the Complainant that the Respondent had in the past registered multiple other third party trademarks as domain names under the ".london"- gTLD, e.g. <smirnoff.london>, <harveynichols.london>, <ragandbone.london>, <sipsmith.london>, <aspinal.london> and <aspinaloflondon.london>. Thereby the Respondent has allegedly engaged in a pattern of conduct. Furthermore, the Complainant has shown that the disputed domain name is currently parked with the Registry and the web site to which it resolves contains links to the Registry's web site. The Complainant assesses this as an attempt to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website.
Finally, it results from the evidence provided by the Complainant that the Complainant contacted the Respondent before starting the current UDRP-proceedings requesting a voluntary transfer of the disputed domain name and offering compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). It results from the correspondence provided by the Complainant that on January 5, 2015, the Respondent proposed the Complainant to transfer the disputed domain name in exchange for GBP 1,380.
In accordance with paragraph 4(i) of the Policy the Complainant requests the Panel that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs this 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 the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademarks consisting of the terms LEGO and LEGOLAND, e.g. Community trademarks numbers 000039800 "LEGO" (word) and 000054205 LEGOLAND (word), registered both on October 5, 1998 for goods and services in numerous classes, including goods in class 28 (amongst others "games and playthings"). These Community trademarks predate the creation date of the disputed domain name.
Many panels have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates the complainant's trademark in its entirety (e.g. Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. 2014-0039; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070). The Panel shares this view in the case at issue where the Complainant's registered trademarks LEGO and LEGOLAND are fully included in the disputed domain name combined with the gTLD-suffix ".london".
In accordance with the well-established precedents (see point 1.2. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, "WIPO Overview 2.0") a TLD-suffix in the domain name will be as a rule disregarded under the confusing similarity test as it is a technical requirement of registration.
Additionally, this Panel holds that the afore-mentioned rule might be complemented in cases where new gTLDs such as ".london" are involved (cf. Volkswagen AG v. Jan-Iver Levsen, LEVSEN.N.O.V.A. e.K., Case No. D2015-0069 for another new gTLD, i.e. ".limo"). In fact, Internet users will not only adjudge the gTLD ".london" its undisputed technical function, but additionally understand it as referencing the city of London. In the Panel's view, the gTLD ".london" combined with the trademark LEGOLAND is therefore likely to be understood by Internet users as referring to a LEGOLAND-park geographically located in the city of London or near to it. As a result, the gTLD ".london" is not qualified to exclude confusing similarity between the Complainant's trademarks and the disputed domain name but actually increases the confusing similarity in the case at hand.
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests to the disputed domain name. In the Panel's view, based on the allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
Based on the evidence provided by the Complainant, the Respondent is displaying a parking-website under its disputed domain name, through which it generates revenues. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy.
Finally, the Respondent is not commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy, nor has it acquired trademark rights.
It is acknowledged that once the Panel finds 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 disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith.
The Complainant has established that its trademarks have existed for a long time and that it has been active under these marks for many years in particular also in the United Kingdom where the Respondent resides. Therefore, this Panel shares the view that the Respondent knew or should have known that the disputed domain name included the Complainant's LEGOLAND and LEGO trademarks when he registered the disputed domain name.
Furthermore, the Panel is satisfied that the Respondent has not only registered the disputed domain name but also six other domain names following the pattern of combining third parties' trademarks with generic terms (i.e. <smirnoff.london>, <harveynichols.london>, <ragandbone.london>, <sipsmith.london>, <aspinal.london> and <aspinaloflondon.london>). This Panel therefore finds that the registration of the disputed domain name has the purpose to prevent the Complainant from reflecting its trademarks in the disputed domain name.
Finally, the Complainant has filed evidence that the Respondent offered to the Complainant to sell the disputed domain name in return of the amount of GBP 1,380 prior to the Complainant's filing of the Complaint. The Panel admits this as further evidence of the Respondent's bad faith in the sense that he registered the disputed domain name primarily for the purpose of selling or otherwise transferring the domain name to the Complainant who is the owner of the trademark, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name (amounting to USD 49 for a ".london" domain name), pursuant to paragraph 4(b)(i) of the Policy.
In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to the Policy.
The Complainant has thus established all three elements necessary under paragraph 4(a) of the Policy in order to obtain an order that the disputed domain name should be transferred.
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 <legoland.london> be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: March 16, 2015