The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Sandi Innocent of Monee, Illinois, United States of America (the "USA").
The disputed domain name <legomonsterfighters.xyz> (the "Domain Name") 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 July 28, 2015. On July 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 30, 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 August 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 27, 2015.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on September 14, 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 owner of the famous trademark LEGO for construction toys and all other trademarks used in connection with it. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the USA.
Moreover, the Complainant is the owner of close to 4,300 domain names containing the term LEGO. The trademark LEGO is among the best-known trademarks in the world. In the official top 500 Superbrands for 2015 list, provided by Superbrands UK, LEGO is shown as winner in the category "Child Products - Toys and Education". Moreover, the Reputation Institute nominated the LEGO Group as number 10 on their list of "the World's Most Reputable Companies" 2014.
The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.
The Respondent has registered the Domain Name on February 11, 2015. The website is active and directs Internet users to another commercial website, namely "www.ebay.com" offering various products from a wide range of different brands, besides the Complainant's products.
The Complainant contends the following:
- it reproduces the words of the Complainant's trademark in its entirety;
- the adjunction of the terms "monster fighters" serves to underscore and increase the confusing similarity between the Domain Name and the Complainant's trademark. In fact, the term "monster fighters" specifically relates to the Complainant's product line "Lego Monster Fighters" a themed LEGO set introduced in May 2012.
- the Complainant has never given to the Respondent any license or authorization to use LEGO trademark, nor is it an authorized dealer;
- it is unlikely that the Respondent was not aware of the Complainant's legal right on the LEGO brand at the time of the registration of the domain name;
- the Respondent is not using the name LEGO as a company name or has any other legal rights in the name, it is quite clear that the Respondent is simply trying to sponge off the Complainant's world famous trademark.
- the Respondent could not ignore the strong notoriety and world renown of the Complainant's trademark when he registered the contested Domain Name;
- the Complainant tried to settle the matter amicably sending a cease and desist letter to the Respondent by postal mail and e-mail, without receiving any answer;
- the Respondent is not using the Domain Name in connection with a bona fide; the Respondent has intentionally chosen the Domain Name based on the registered trademark in order to generate traffic and income through a website that is commercial through links incorporated in pictures of the Complainant's LEGO products directing Internet users to another commercial website, namely "www.ebay.com", offering various products from a wide range of different brands, besides the Complainant.
The Respondent did not reply to the Complainant's contentions.
The Complainant has trademark registrations for LEGO all over the world. Therefore, it has been proven that the Complainant has rights in the LEGO trademark.
The Domain Name <legomonsterfighters.xyz> incorporates LEGO which constitutes the Complainant's trademark.
The addition of the words "monsterfighters" in the Domain Name at issue does not render the contested Domain Name dissimilar to the trademark of the Complainant, on the contrary it increases the confusing similarity between the Domain Name and the Complaintant's trademark. In fact, the term "monster fighters" specifically relates to the Complainant's product line "LEGO MONSTER FIGHTERS," a themed LEGO set introduced in May 2012.
There are numerous UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant's mark and only adds a generic word along with it (see, i.e., Deceininck NV, Thyssen Polymer GmbH v. Beloussov Dimitriy, WIPO Case No. D2007-0347; Société des Bains de Mer et du Cercle des Etrangers à Monaco v. LaPorte Holdings, LLC., WIPO Case No. D2005-0526).
Additionally, the Panel does not typically consider, when analyzing the identity or similarity, the gTLD suffix – in this case ".xyz" – because it is a necessary component of the disputed domain name and does not give any distinctiveness (see, i.e., Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant's trademark.
The Respondent has not filed any response in this case. There is prima facie indication in the evidence provided to the Panel that there are no rights or legitimate interests on the part of the Respondent in the Domain Name, see paragraph 4(c) of the Policy.
Specifically, on the basis of the evidence filed before the Panel, the Respondent has not received any license or authorization from the Complainant to use the famous trademark LEGO, nor has it been authorized to register and use the Domain Name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
The Domain Name is exploited by the Respondent to generate traffic and income by re-directing Internet users to another commercial website, namely "www.ebay.com", offering various products from a wide range of different brands, besides the Complainant's products.
The Respondent must have been aware of the existence of the LEGO mark and the related trademarks owned and used by the Complainant. In all likelihood, only someone who was familiar with the Complainant's mark would have registered a domain name inclusive of such mark.
The Panel is of the opinion that the Respondent has registered the Domain Name with the intent to profit from the reputation of the famous trademark of the Complainant by choosing a domain name that is confusingly similar to the Complainant's mark.
Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel believes that the Complainant has demonstrated that the 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 Domain Name <legomonsterfighters.xyz> be transferred to the Complainant.
Nicoletta Colombo
Sole Panelist
Date: September 28, 2015