The Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Chung Hong Phil of Republic of Korea.
The disputed domain name <legomart.com> is registered with Gabia, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2009. On September 30, 2009, the Center transmitted by email to Gabia, Inc. a request for registrar verification in connection with the disputed domain name. On October 1, 2009, Gabia, 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”).
On October 1, 2009, the Center issued a Language of Proceeding notification, inviting comment from the parties. On October 1, 2009, the Complainant confirmed its request, as submitted in its Complaint, that English be the language of the proceeding. The Respondent did not respond to the Center's Language of Proceeding notification. On October 9, 2009, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available.
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 October 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 30, 2009.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on November 3, 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, based in Denmark, is the owner of the trademark LEGO and all other trademarks used in connection with the famous LEGO brand of construction toys and other LEGO branded products.
The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in the Republic of Korea where the Respondent is domiciled and elsewhere.
LEGO Korea was established as early as back in 1984.
The revenue for the LEGO Group in 2008, was more than USD 1.8 billion. The Complainant has subsidiaries and branches throughout the world.
The Complainant is also the owner of more than 1,000 domain names containing the term “lego”.
The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.
The dominant part of the disputed domain name comprises the word “lego”, which is confusingly similar as well as identical to the Complainant's registered trademark LEGO.
The fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions.
The addition of the top-level domain (TLD) “com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the trademark and the domain name.
By using the LEGO trademark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant's LEGO trademark.
The Complainant has not found that the Respondent has any registered trademark or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using the name “Lego” in any other way that would give him any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by common usage.
It is highly unlikely that the Respondent would not have known of the Complainant's legal rights in the name “Lego” at the time of the registration.
The Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is using the domain name to attempt to attract, for commercial gain, Internet users to the website, 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.
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under Paragraph 14(b) of the Rules it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
In light of the above the Panel may draw such inferences from the Respondent's failure to comply with the Rules as he considers appropriate (see Rule 14(b); see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark or service mark;
(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 has registered the LEGO mark in various countries in connection with numerous classes of goods and services (see Annex 5 of the Complaint). The disputed domain name wholly incorporates the Complainant's distinctive trademark and a descriptive term that does not in this case sufficiently differentiate the trademark from the domain name and as such creates sufficient similarity to be confusingly similar (see paragraph 4(a) of the Policy).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark pursuant to the Policy Paragraph 4(a)(i).
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of proof, several UDRP decisions have held that “once a complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production of this factor shifts to the Respondent to rebut the showing” (see, among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the disputed domain name; the Panel further notes that the Respondent has not, and has never been, commonly known by the domain name. The Panel's view is that these facts must be taken as proven provided that they have not been denied by the Respondent.
The Respondent has not submitted a proper response. Therefore, he has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in respect of the disputed domain name under paragraph 4(c) of the Policy.
Accordingly the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to paragraph 4(b) of the Policy.
Both under past UDRP decisions (see, for instance, Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2), a well-established principle is that when someone registers a domain name, he or she represents and warrants to the registrar that, to his or her knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant's trademarks are very well-known worldwide, it is very likely that the Respondent, at the time of registration of the disputed domain name or thereafter, was aware that he was infringing the Complainant's trademarks.
Bad faith can be presumed based on the fame of the Complainant's marks, such that the Respondent was aware or should have been aware of the Complainant's well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices in various jurisdictions would have made the Complainant's registration known to the Respondent.
The Respondent is, in using the disputed domain name, diverting Internet users to the Respondent's website. The mere fact of diverting users in this misleading manner is further evidence of bad faith (see Big Dog Holdings, Inc. dba Big Dog Sportswear v. Frank Day, Red River Farms, Inc., NAF Claim No. FA 93554).
The conduct described above falls squarely within paragraph 4(b)(iii) of the Policy and accordingly the Panel concludes that the Respondent registered the disputed domain name in bad faith.
In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.
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 <legomart.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: November 17, 2009