The Complainant is Lego Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Young entrepreneur success, Trian Tego Utomo MSA of Bandung, Indonesia.
The disputed domain names <legocafecorner.com>, <legostarwarssandcrawler.com> and <legostarwarsultimatecollectorsmillenniumfalcon.com> are registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2010. On March 9, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On March 9, 2010, eNom 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 March 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 31, 2010.
The Center appointed Ross Wilson as the sole panelist in this matter on April 7, 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.
The Complainant, a limited company incorporated in Denmark, manufacturers the well-known LEGO construction toys and other related products. Its products which include computer hardware and software, books, videos and computer controlled robotic construction sets, are sold in 130 countries. The revenue for the LEGO group of companies in 2008 was USD 1.8 billion.
The company, through its predecessors, first used the LEGO mark in the United States in 1953 and now has it registered in over a hundred countries including Indonesia. According to Superbrands UK the mark and brand is the eighth most widely-known in the world and it is the most recognisable toy trademark in the world.
The Complainant has a license agreement with Lucasfilm Ltd. to use the trademark STAR WARS incorporated in the LEGO product range. Since the Complainant translated Star Wars into the construction play pattern the line has generated more than one billion dollars in retail sales around the world.
The Complainant issued two cease and desist letters to the Respondent on December 23, 2009 and January 15, 2010 and reminder notices on January 13, 2010 and February 9, 2010, seeking the transfer of the disputed domain names to the Complainant. No response was received.
The disputed domain names were registered on November 18, 2009.
The Complainant asserts that it is the owner of the well-known trademark LEGO and that the disputed domain names are confusingly similar to its registered trademark. It contends that the suffixes used in the disputed domain names do not detract from the overall impression that LEGO is the most dominant part of the disputed domain names.
The Complainant maintains that the Respondent has no rights or legitimate interests with respect in the disputed domain names based on the fact that no license or authorization has been given by the Complainant to the Respondent. The Complainant contends that it is highly unlikely that the Respondent would not have known of the Complainant's legal rights proving that the Respondent's interests could not have been legitimate. The Complainant considers that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services, rather it is using the disputed domain names to intentionally generate Internet traffic to websites with sponsored links and links to shopping sites.
The Complainant asserts that the Respondent registered and is using the disputed domain names in bad faith. The Complainant contends that the Respondent was aware of the trademark rights of the Complainant at the time of registration. Also, by using the disputed domain names the Respondent is not making any legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for its own commercial gain.
The Respondent did not reply to the Complainant's contentions.
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant provided evidence that it has registered rights in the trademark LEGO.
The disputed domain names consist of the Complainant's trademark together with the suffixes “cafecorner”, “starwarssandcrawler” and “starwarsultimatecollectorsmillenniumfalcon”. The first refers to one of the Complainant's product lines and the other two incorporate STAR WARS trademarks that the Complainant uses under a license agreement with Lucasfilm Ltd. and are incorporated in the LEGO product line. While the suffixes appear lengthy they are not distinctive and do not detract from the dominant part of the disputed domain names, which is the instantly recognizable and well-known trademark LEGO. Previous panels have held that confusing similarity exists where well-known trademarks have been adapted with descriptive or generic prefixes and suffixes (see Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009-1661 and Dr. Ing. h.c.F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488. The Panel acknowledges that the gTLD “.com” suffix only indicates that the domain names are registered under that gTLD and cannot be considered distinctive.
It has been held in many previous cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are identical or confusingly similar to the trademark in which it has demonstrable rights. The Complainant therefore has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain names. In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Respondent has chosen to use domain names that contain the Complainant's trademark in its entirety without authorisation by the Complainant. As a consequence, the disputed domain names infer a website related to the services of the Complainant. Instead, the website links to shopping sites and sponsored sites not connected with the Complainant.
The evidence provided by the Complainant indicates that the Respondent has used the Complainant's trademark in the disputed domain names to attract Internet users to an active website to generate revenue. Clearly, no rights or legitimate interests derive from this type of use of another's trademark. Also, the act of redirecting Internet users to other websites by using the reputation and goodwill of the Complainant's trademark does not constitute a bona fide offering of goods and services (see Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085, Madison Square Garden L.P., Radio City Trademarks, LLC v. Great Camanoe Investments Ltd / Belize Domain Names Whois Service Lt, WIPO Case No. D2007-0819, Lance Armstrong Foundation v. Chris Angeles, WIPO Case No. D2005-0888, Baudville, Inc. v. Henry Chan, WIPO Case No. D2004-0059 and Sanofi-aventis v. Milton R. Benjamin, WIPO Case No. D2005-0544).
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain names. Moreover, the Complainant has denied having any connection with the Respondent or providing any license or authorisation at all. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated that “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent”.
Clearly the Respondent is trying to benefit from the reputation of the Complainant's well-known trademark. Previous panels have held that rights and legitimate interests cannot be created where the respondent seeks to create an impression of association with the complainant (see Drexel University v. David Brouda, WIPO Case No. 2001-0067).
Despite the opportunity through this administrative proceeding, the Respondent has chosen not to rebut the Complainant's case or assert any rights in the disputed domain names.
Based on the above, the Panel considers the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names which the Respondent has not rebutted. The Panel is satisfied that the Complainant has proven the second element of the Policy.
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain names as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the domain names in bad faith is evidenced.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain names in bad faith. Evidence shows that the Respondent is attempting to confuse Internet users by attracting them to a website to gain “click-through” revenue. The format of the site strongly suggests that the Respondent obtains “click-through” revenues from the site which implies improper use of the Complainant's mark for commercial purposes (see Nintendo of America, Inc. v. Pokemonplanet.net, Jerry Radl, and Fusion Media Solutions, Inc., WIPO Case No. D2001-1020).
The Complainant has provided evidence that the Respondent must have known of the LEGO trademark because the website associated with the disputed domain names contains material about LEGO and its products. Also, it contains sponsored sites not connected with the Complainant and links to shopping sites. In Ford Motor Company and Land Rover LTD. v. Institution, WIPO Case No. DBIZ2001-00045, a case where bad faith was found, the panel considered that any use of a well-known name will inevitably be associated with the relevant complainant and as such must have been known to or foreseen by the respondent.
In Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031 the panel found that by using disputed domain names to redirect Internet users to websites that host links to external websites, the respondent had registered and used the disputed domain names in bad faith. In that case the panel stated that such use of the contested domain names showed the intention of disrupting the complainant's business and/or for the purpose intentionally attempting to attract for commercial gain Internet users to its websites, by creating a likelihood of confusion with the complainant's marks as to the source, sponsorship, affiliation or endorsement of its websites. As in the present case the Panel considers such activity represents bad faith as envisaged by paragraph 4(b)(iv) of the Policy both in respect to registration and use of the disputed domain names.
Noting that the Respondent has not rebutted any of the Complainant's claims, the Panel considers that there is a strong probability that the Respondent's awareness of the Complainant's business was the motivation for registering and using the disputed domain names. Also, the Panel considers the Respondent's choice of the word “Lego” was not merely coincidental but was a deliberate action to gain some sort of commercial advantage.
On the basis of the above, the Respondent's failure to reply to the Complainant's cease and desist requests and the evidence provided by the Complainant, the Panel is satisfied that the Respondent's conduct falls within paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain names were registered and used 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 names, <legocafecorner.com>, <legostarwarssandcrawler.com> and <legostarwarsultimatecollectorsmillenniumfalcon.com> be transferred to the Complainant.
Dated: April 21, 2010