The Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is n/a, Domain For Sale of Cambodia.
The disputed Domain Name <legokidsworld.com> is registered with Everyones Internet, Ltd. dba resellone.net.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2010. On February 4, 2010, the Center transmitted by email to Everyones Internet, Ltd. dba resellone.net a request for registrar verification in connection with the disputed domain name. On February 4, 2010, Everyones Internet, Ltd. dba resellone.net 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 February 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 4, 2010.
The Center appointed Lana I Habash as the sole panelist in this matter on March 16, 2010. 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.
Although, the Respondent failed to duly submit a Response within the period specified by the Center in accordance with the Rules, the Respondent did communicate with the Complainant coping to the Center by e-mail on February 9, 2010 and with the Center on February 10, 2010, March 5, 2010, and March 17, 2010. The Panel reviewed the communications and would like to consider them in rendering this Decision.
The Complainant, LEGO Juris A/S is a Danish company best known for the manufacture of LEGO brand toys and other products, and is the owner of the Trademark LEGO and all other associated Trademarks with it, as it has been using the Trademark LEGO since 1953 and has had the first application in 1996 and registered in 1998, as demonstrated in the list of Trademarks owned by the Complainant submitted with the Complaint. The Trademark LEGO is recognized as a well-known Trademark and ranked number 8 in the list of the Super Brands published by Superbrands UK for the year 2009/2010. The Complainant is also the owner of more than 1000 domain names containing the Trademark LEGO.
The disputed Domain Name <legokidsworld.com> was first created and registered on October 2, 2009 by the Respondent, and updated on December 9, 2009; the disputed Domain Name is still held by the Respondent.
The disputed Domain Name points to a website that contains sponsored links.
On November 27, 2009, the Complainant sent a cease and desist letter to the Respondent, to which the latter has responded that the Respondent “considered that they had the right to the Domain Name and that, if the Complainant wanted the Domain Name, they would have to pay for it”. The Complainant replied citing the UDRP and explaining that the Respondent is in breach of their Registrant Agreement, to which the Respondent's response was “thank you for informing us. We are now in the process of changing domain name”. Based on this response, the Complainant then asked the Respondent to unlock the domain name and send the authorization code so that the Domain Name could be transferred to the Complainant; the response from the Respondent was “Not that easy. We will keep that domain for sale… it's our own to have GTLD domain. If you wish to have it work... pay more please. Do a white label trade guy… not to frighten someone to steal their domain”.
In the communications, the Respondent replied: “We have the right to keep this domain name “inactive”… not being use”. Also, Respondent referenced that the domain name vodka.com had sold for millions, indicating that this was the kind of money the Respondent was expecting in order to give up the Domain Name.
The Complainant replied that it was not willing to pay anything more than out of pocket expenses and cited some of the many UDRP cases that the Complainant has been successful in.
Considering that the efforts to transfer the disputed Domain Name amicably failed, the Complainant filed the Complaint.
The Respondent communicated several times with the Complainant and the Center offering to transfer the disputed Domain Name for USD 60. The Complainant did not respond to such offer.
The Complainant contends the following:
- The dominant part of the disputed Domain Name comprises the word “Lego”, which is identical to the trademark LEGO, which has been registered by the Complainant as a trademark (and used in domain names) in numerous countries all over the world including Cambodia;
- The disputed Domain Name is confusingly similar to the Complainant's trademark LEGO despite the suffix “kidsworld”. Moreover, the Complainant contends that this addition is more of a reason to link the disputed Domain Name with the Complainant, as the latter's primary focus is toys and other products for kids;
- The addition of the top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed Domain Name;
- Web users are likely to mistake the disputed Domain Name to be the Complainant's; there is a likelihood of confusion including an obvious association with the Trademark of the Complainant (initial interest confusion);
- The Complainant's trademark is at risk of being tarnished by being mistakenly connected to the website to which the disputed Domain Name resolves; the disputed Domain Name used to resolve to a website that is confusingly similar to the official LEGO website, then negotiations to sell the disputed Domain Name to the Complainant failed, the Respondent changed it to the sponsored links website;
- The Respondent has no registered trademarks or trade names corresponding to the domain name and has not been using the LEGO trademark in any other way such that would give them any rights or legitimate interests in the disputed Domain Name;
- No license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO;
- The Trademark LEGO is a well known trademark, and as such should be awarded global protection not just in connection with a limited list of products and/or services;
- It is highly unlikely that the Respondent would not have known of the Complainant's rights in the name LEGO at the time of registration of the Domain Name suggesting that it is the fame of the trademark that has motivated the Respondent to register the disputed Domain Name;
- The Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent has intentionally used the LEGO trademark to generate traffic to a website and generate income through sponsored links.
The Respondent did not reply to the Complainant's contentions, and did fail to duly submit a Response within the time limit specified by the Rules. However, in an email addressed to the Complainant with a copy to the Center on February 9, 2010, contended that they have stopped using the disputed Domain Name since the previous communication. In subsequent emails to the Center with a copy to the Complainant, the Respondent contends that they would agree to the transfer of the disputed Domain Name to the Complainant against a fair amount of money, considering that they had paid for the registration; in one incident the Respondent stated that they would consent to the transfer against an amount of USD 60.
Prior to addressing the three elements prescribed by the Policy, the Panel must first address what might appear as a unilateral consent to transfer on part of the Respondent. In various previous UDRP Cases, where the Respondent has made a unilateral consent to transfer the disputed Domain Name, although in the absence of an official settlement between the parties, the Panel found that this unilateral consent is sufficient to render a decision granting the Complainant the sought out remedy of transfer; see Google Inc. Herit Shah, WIPO Case No. D2009-0405, and Iberostar Hoteles y Apartamentos, S.L v. Roger Schoefert, WIPO Case No. D2008-1604.
However, in the Case at hand, the Respondent is not actually consenting to the transfer unconditionally, but rather is negotiating a bargain that would result in the Complainant paying an amount more than the “out of pocket expenses” for the transfer of the disputed Domain Name, as prescribed by the Policy (Paragraph (4(b) of the Policy). In the absence of a response by the Complainant accepting such terms for the transfer, the Panel is compelled to consider the elements and decide on the merits of the Case, where an affirmative finding under the three elements must be established.
The Complainant has provided a long list of trademarks along with excerpts from the OHIM website evidencing the various EU Trademark registrations held by the Complainant. The Panel is also satisfied that the Complainant has established that LEGO is a well-known trademark.
The disputed domain name contains the Complainant's mark LEGO in its entirety, with the added suffix “kidsworld”. The Panel is of the view that the addition of the suffix “kidsworld” does not detract from the distinctiveness of the dominant part of the disputed Domain Name; in numerous UDRP Decisions, Panels have found that the fact that a domain name incorporates a complainant's registered mark in its entirety is sufficient to establish confusing similarity for the purpose of the first element of the Policy (See Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273).
As for the addition of the generic top level domain “.com”, this should not affect a finding of confusing similarity (See LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Stop2Shop, G V, WIPO Case No. D2009-0784).
Moreover, the Panel agrees with the Complainant contention that this particular suffix is likely to cause at least initial interest confusion, considering that the brand LEGO is always associated with kids' toys and products.
Therefore, the Panel finds that the Complainant has established the first element of the Policy, paragraph 4(a).
The Complainant is required to make a prima facie case of lack of rights or legitimate interest in the disputed Domain Name on part of the Respondent. The failure to submit a response by the Respondent in some cases supports a finding of lack of such rights. In this case, and according to the statement of fact provided by the Complainant, the Respondent alleged in its response to the cease and desist letter that it does have a legitimate interest in the disputed Domain Name, but without elaborating on such rights or interests.
Considering the facts at hand, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed Domain Name. The mere registration of a domain name does not give rise to a “legitimate interest”. It is evident that the Respondent attempted to use the good will of the Trademark LEGO to divert Internet users to other websites, in the hope of financial gain generated from listing and sponsoring links to such websites. Such practice has been found by Panels not to constitute a bona fide offering of goods and services giving rise legitimate use, particularly considering the worldwide fame of the trademark LEGO (See WIPO Case No. D2001-0067 and WIPO Case No. D2009-0564).
As the Panel discussed under the first element, the Complainant has successfully demonstrated the worldwide reputation of the Trademark LEGO, therefore it is unlikely that the Respondent was not aware of the proprietary rights of the Complainant in the Trademark and subsequently in the disputed Domain Name; a fact that the Respondent did not contest in any of its communications with the Complainant or the Center.
In fact, the Respondent's insistence in such communications that it is willing to transfer the disputed Domain Name to the Complainant against a certain dollar amount that exceeds the out-of-pocket expenses associated with the transfer constitutes a classic case of cybersquatting, and is one of the examples provided by the Policy of such circumstances indicating registration and use in bad faith:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
In addition to the fact that the Respondent is attempting to sell the disputed Domain Name to the Respondent, the Respondent is using the disputed Domain Name to direct users via initial interest confusion to other websites, linked to from the website where the disputed Domain Name resolves, in hope for commercial gain, as explained above.
Therefore, and in light of the above mentioned facts, the Panel finds that the Respondent has registered and is using the disputed Domain Name in bad faith.
For all 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 <legokidsworld.com> be transferred to the Complainant.
Lana I Habash
Dated: April 6, 2010