The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Jeffrey Archer, Jeffrey Archer of Knoxville, Tennessee, United States of America (“United States” or “US”).
The disputed domain name <legowearudsalg.com> (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 June 26, 2017. On June 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 27, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2017.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on August 4, 2017. 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 following facts are undisputed.
The Complainant manufactures and distributes construction toys and other branded products, including clothing under the name “LEGO Wear”. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States. Clothing under the name “LEGO Wear” is sold in more than 1,000 children’s clothing shops, department stores and other specialty shops.
The Complainant is the owner of a number of registrations for the trademark LEGO in various jurisdictions, including but not limited to various United States trademarks (word marks) LEGO, the earliest of which dates back to 1975, for goods in class 28 and numerous national and regional trademark registrations for goods in inter alia classes 25 and 28 (hereinafter in singular referred to as the “Trademark”).
Furthermore, the Complainant owns close to 5,000 domain names incorporating the Trademark, for instance <lego.com>, <legowear.com> and <legowearshop.com>.
The Domain Name was registered by the Respondent on March 5, 2017. The Domain Name resolves to a website on which various clothing and apparel is offered (the “Website”).
Insofar as relevant, the Complainant contends the following.
The Domain Name reproduces the Trademark. In addition to the Trademark, the Domain Name also comprises the suffixes “wear” and “udsalg”. The word “udsalg” is the Danish word for “sale”. The use of the suffixes contributes to the confusion that the Complainant is affiliated with the Domain Name. The Complainant refers to the UDRP case LEGO Juris A/S v. Helmut Eder / Modern Tech Limited, WIPO Case No. D2014-1829, in which the panel concluded that the suffixes “wear” and “onlineshop”, used in combination and alone are not distinctive elements and do not have sufficient impact on the domain names in that matter to avoid a confusing similarity with the Trademark.
The Respondent is not sponsored by or affiliated with the Complainant in any way. No license or authorization of any kind has been given by the Complainant to the Respondent to use the Trademark.
The Trademark has the status of a well-known trademark with a substantial and widespread reputation throughout the world.
Consequently, the Respondent is using the Domain Name to intentionally attempt to attract Internet users to its own 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.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name 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 Domain Name; and
(iii) the Domain name has been registered and is being used in bad faith.
The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the aforementioned trademark.
The Complainant has shown that it has rights in the Trademark.
The Domain Name incorporates the Trademark and adds the words “wear” and “udsalg” (Danish for “sale”). The Panel finds that the dominant part of the Domain Name is “lego” and that the elements “wear” and “udsalg” do not prevent a finding of confusing similarity, since the Complainant offers – amongst many other products for children – children’s clothing. In addition, as the Complainant and its products are clearly linked to Denmark the descriptive Danish language element “udsalg” does not reduce either the confusing similarity.
The addition of “.com” is largely irrelevant in the determination of the confusing similarity between the signs, see cases Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Also see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903: “[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”
Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial 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.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “LEGO Wear” is the Respondent’s name or that the Respondent is commonly known as “LEGO Wear”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s marks, or to apply for or use any domain name incorporating any of the Complainant’s trademarks.
In the present case, the question whether the Respondent is using the Domain Name in connection with a bona fide offering of goods or services, has to be assessed in light of the decision in Oki Data Americas, Inc. v. ASD, Inc., supra (regarding the domain name <okidataparts.com>).
In order for the use to be qualified as a “bona fide offering of goods or services”, the offering of the goods or services must meet several requirements, referred to as the “Oki Data criteria”.
Those include, at minimum, the following:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the website of the domain name to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- the respondent must not try to corner the market in all domain names, thus it must not deprive the trademark owner of reflecting its own mark in a domain name;
- the website of the domain name must accurately disclose the respondent’s relationship with the trademark owner; it may not, for example, falsely suggest that the respondent is the trademark owner, or that its website is the official site, if, in fact, it is only one of many sales agents. See, e.g., Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website’s use of the complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website).
From the screenshot that was provided by the Complainant, it appears that the Website does not accurately disclose the (lack of) Respondent’s relationship with the Complainant. Therefore, the Website falsely suggests that the Website is an official site. Furthermore, it is unclear whether the Domain Name is used to sell the trademarked goods of the Complainant.
Given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions “non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090).
Therefore, the Panel is satisfied that the second element of the Policy is met.
In light of the evidence filed by the Complainant and the absence of a reply, the Panel finds that the Complainant’s Trademark and activities are well known throughout the world.
In the Panel’s view there is no other plausible explanation why the Respondent registered the Domain Name, other than the Respondent being aware of the Complainant and the Trademark.
This behavior of the Respondent fits the example of paragraph 4(b)(iv) of the Policy, i.e., that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent’s website or location or of a product or service on the Respondent’s website or location.
Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the registration and use of the Domain Name by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was 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, <legowearudsalg.com> be transferred to the Complainant.
Willem J. H. Leppink
Sole Panelist
Date: August 16, 2017