The Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT Corporate Brand Services AB of Sweden.
The Respondent is EcomMutual of the United States of America.
The disputed domain name <legowatch.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2009. On May 26, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On May 26, 2009, GoDaddy.com, Inc. 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 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 19, 2009.
The Center appointed Anne-Virginie La Spada-Gaide as the sole panelist in this matter on July 2, 2009. 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's trademark LEGO is a trademark for construction toys. The LEGO mark has been used in relation to such goods for decades in many countries throughout the world. The mark has been recognized as being famous in at least to publications on famous marks (The World's Greatest Brands, MacMillan Business, 1996, and Famous Brands, Markgraaf BV, 1985.
The Complainant maintains an extensive website under the domain name <lego.com>.
The Complainant alleges to be the owner of the trademark registrations for LEGO, and submits as evidence an internal listing of its trademark registrations worldwide. The Complainant's licensees are authorized to exploit the Complainant's trademark rights in the United States and elsewhere.
The Domain Name was registered on October 23, 2008. The Domain Name resolves to a parking page with sponsored links on the website of the Registrar GoDaddy.com.
On January 13, 2009, the Complainant sent a letter to the Respondent, notifying it that the registration of the Domain Name violated Complainant's trademark rights. Respondent was requested to transfer the Domain Name to the Complainant.
By email of January 26, 2009, Respondent replied thus:
“Sorry to have caused any trouble.
We are actually working with the national distributor for the new Lego Watches in the US, Diverse Marketing and Optimum Fulfillment.
We planned to create a destination for watches. Not a big deal if we can't”.
On February 2, 2009, the Complainant wrote by email to the Respondent that the Complainant never allowed its licensees or partners to register domain names in their own names, and reiterated its transfer request.
No reply was received, and the Complainant sent a reminder on February 20, 2009. At this point, the Respondent had deactivated the Domain Name, according to the Complainant, but a few days later the Domain Name was active again and resolved to a page containing sponsored links.
The Complainant contends that the Domain Name is confusingly similar to trademarks in which it has rights, that the Respondent has no rights or legitimate interests to the Domain Name, and that the Domain Name has been registered and is being used in bad faith. Consequently, the Complainant requests the transfer of the Domain Name.
The Respondent did not file a response to the Complaint.
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the 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 domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith.
The Complainant provided a listing of its trademark registrations as evidence of its rights in the mark LEGO. The Complaint did not include any copy of registration certificates nor any print-out from an official on-line trademark registry. In the Panel's opinion, internal listings do not normally constitute appropriate evidence of trademark rights. In the present case however, given the notoriety of the mark LEGO, and the fact that in several prior decisions panelists were satisfied that the Complainant owned the rights to the mark LEGO (see for example Lego Juris A/S v. Mike Morgan, WIPO Case No. D2009-0438), the Panel considers as sufficiently established that the Complainant owns trademark registrations for the trademark LEGO.
The Domain Name consists of the mark LEGO and of the word of the common language “watch”, which can mean “timepiece” or “surveillance”.
The presence of the common term “watch” in the Domain Name is not sufficient to distinguish it from the Complainant's mark. It is widely admitted that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question (see e.g., Terex Corporation v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0733, Billabong International Limited, GSM (Operations) Pty Ltd, GSM (Trademarks)Pty Ltd, GSM (Europe) Pty Ltd, GSM (NZ Operations) Ltd v. Mookie Lei,, WIPO Case No. D2008-0101).
The Panel holds therefore that the Domain Name is confusingly similar to trademarks in which the Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy.
The Respondent is not a licensee of the Complainant, nor has the Complainant granted to the Respondent an authorization to use its trademark or the Domain Name. Moreover, there is no indication that the Domain Name would correspond to the Respondent's name.
In its reply of January 26, 2009 to the Complainant's demand letter, the Respondent contended that it was “actually working with the national distributor for the new Lego Watches in the US, Diverse Marketing and Optimum Fulfillment”. The Complainant states in the Complaint that it had not heard of such cooperation. The Respondent did not file any reply to the Complaint and thus did not substantiate its claim that it had been working for a distributor of the Complainant's goods. The Complainant alleges moreover (as it wrote to the Respondent on February 2, 2009) that it does not authorize its partners to register domain names in their own names. It does not appear likely, therefore, that Respondent could claim any legitimate interest in respect of the Domain Name.
Finally, as correctly noted by the panel in Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe, WIPO Case No. D2007-1695, the use of a domain name confusingly similar to the complainant's trademark for the purpose of offering sponsored links does not of itself qualify as a bona fide use.
The condition of paragraph 4(a)(ii) is therefore satisfied.
In view of the notoriety of the mark LEGO, it must be assumed that the Respondent was aware that the disputed Domain Name reproduced a protected trademark of the Complainant.
The Respondent obviously used the Domain Name to intentionally attempt to divert Internet traffic to websites unrelated to the Complainant, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website. This constitutes bad faith registration and use of the Domain Name in application of paragraph 4(b)(iv) of the Policy (see AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230).
It is not relevant to know whether the Respondent itself derived income on a pay-per-click basis from the links listed in the parking site to which the Domain Name resolved. As correctly noted by the panel in Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, paragraph 4(b)(iv) of the Policy requires the Respondent to intend to attract Internet users “for commercial gain”, but this gain does not need to be derived by the Respondent itself. As the panel in this case stated: “The Respondent cannot infringe the Complainant's rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct”.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <legowatch.com> be transferred to the Complainant.
Anne-Virginie La Spada-Gaide
Dated: July 16, 2009