The Complainant is LEGO Juris A/S, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is APF Media, California, United States of America.
The disputed domain name <officiallego.com> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2009.
The Center transmitted its request for registrar verification to the Registrar on August 14, 2009. The Registrar replied the same day, stating that it had received a copy of the Complaint; that the Domain Name was registered with it by the Respondent as registrant; that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the registration; that the Domain Name would expire on April 14, 2010 and would remain locked during this proceeding subject to expiry; that the registration agreement was in English; and that the Domain Name was registered to the Respondent on April 14, 2009.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 19, 2009. The notification appears to have delivered successfully in hard copy to the Respondent's postal address as recorded in the Registrar's Whois database. In accordance with paragraph 5(a) of the Rules, the due date for the response was September 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 9, 2009.
The Center appointed Jonathan Turner as the sole panelist in this matter on September 18, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel finds that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
The Complainant owns the trademark LEGO, which is registered in numerous countries around the world, and licenses its use by the Lego group of companies for construction toys and other products. The Complainant operates a website at “www.lego.com”, the home page of which has the title “The Official Web Site of LEGO® products”
The Respondent registered the Domain Name in April 2009 and has directed it to a web page displaying sponsored links to other websites. The Complainant sent the Respondent a cease and desist letter on May 22, 2009, and reminders on June 4, 2009, and July 9, 2009, but did not receive any reply.
The Complainant contends that it has rights in the mark “LEGO” and that the Domain Name is confusingly similar to this mark. The Complainant submits that the addition of the word “official” to its mark does not distinguish the Domain Name, particularly as the Complainant's homepage has the title mentioned above.
The Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant states that it has not found anything which would suggest that the Respondent is using the mark LEGO in any way which would give it legitimate rights. The Complainant points out that it has not licensed the Respondent to use any of its trademarks. The Complainant submits that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services but rather to divert Internet users by sponging off the Complainant's world famous trademark.
Finally, the Complainant alleges that the Domain Name was registered and is being used in bad faith. According to the Complainant, the Respondent is using the Domain Name intentionally to attempt to attract Internet users to its website for commercial gain by creating a likelihood of association with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website.
The Complainant requests a decision that the Domain Name be transferred to it.
The Respondent did not reply to the Complainant's contentions.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(b) of the Rules the Panel shall draw such inferences from the Respondent's default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
The Panel finds that the Complainant has registered rights in the mark LEGO.
The Panel further finds that the Domain Name is confusingly similar to this mark. The addition of the prefix “official” and the generic top level domain suffix do not avoid confusion. Many Internet users would assume that the Domain Name identifies an official website of the Complainant's group.
The first requirement of the UDRP is satisfied.
The Panel finds on the evidence that the Respondent has not used or made demonstrable preparations to use the Domain Name or a corresponding name for a bona fide offering of goods or services. The Panel does not regard the Respondent's website as providing any genuine service. In any event, the direction of the Domain Name to this website is not a bona fide use of the Domain Name, but on the contrary is a bad faith attempt to divert Internet users for commercial gain by confusion with the Complainant's mark.
The Respondent is not commonly known by the Domain Name and is not making a legitimate non-commercial or fair use of the Domain Name. On the evidence, the Panel finds that there is no other basis on which the Respondent could claim a right or legitimate interest in respect of the Domain Name.
The second requirement of the UDRP is satisfied.
The Panel finds on the evidence that the Respondent has used the Domain Name intentionally to attract Internet users to its website for commercial gain, namely click-through commissions on sponsored links, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of that website.
In accordance with paragraph 4(b)(iv) of the UDRP, this constitutes evidence of bad faith registration and use. There is no evidence in the file displacing this presumption. The Panel therefore concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied.
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, <officiallego.com>, be transferred to the Complainant.
Dated: September 25, 2009