The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Sales Department, Midlothian, Virginia, United States of America.
The disputed domain name <legonext.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2010. On March 12, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 15, 2010, 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 March 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 8, 2010. Following receipt of the Respondent's default, the Respondent sent an email communication to the Center stating: “What is this?”. The Center acknowledged receipt of the Respondent's email communication on April 9, 2010 and informed the Respondent that an administrative proceeding relating to the disputed domain name had been commenced against it pursuant to the UDRP. The Center further informed the Respondent that it was in the process of appointing the Administrative Panel from its published list and that such Administrative Panel would be informed of the Respondent's default and would decide in its sole discretion whether to consider any late Response the Respondent might file in this case.
The Center appointed Ross Wilson as the sole panelist in this matter on April 15, 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.
On April 17, 2010 the Respondent emailed the Center requesting the Complainant's representative to make contact indicating that “we can resolve this in one day”. Based on the Respondent's apparent offer to settle the dispute the Panel issued a Procedural Order on April 20, 2010 requesting the Complainant to indicate whether or not it wished to suspend the proceedings to explore a possible settlement between parties. The Complainant replied on the same day stating that it would not request a suspension, however, if the Respondent indeed agreed to voluntary transfer the disputed domain name it would immediately request a suspension of proceedings.
On April 21, 2010 the Respondent advised the Complainant that it had found the Complainant's cease and desist letter that had been sent earlier and that it would be willing to transfer the disputed domain name for USD 482.00 to “cover all expenses”. On April 22, 2010 the Complainant advised that it wished to proceed with the dispute as it does not buy from third parties domain names which it believes infringe its trademark rights.
The Panel proceeded to decide the case based on the information before it.
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 including the United States. 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 its mark is now registered in over a hundred countries. According to Superbrands United Kingdom's official top 500 superbrands for 2009-2010 the LEGO mark and brand is the eighth most famous in the world.
The Complainant emailed a cease and desist letter to the Respondent on January 14, 2010 and two reminders seeking the transfer of the disputed domain name to the Complainant. No response was received until after the present administrative proceedings were commenced.
The disputed domain name was registered on January 14, 2006.
The Complainant asserts that it is the owner of the well-known trademark LEGO and that the disputed domain name is clearly confusingly similar to its registered trademark. It contends that the suffix used in the disputed domain name does not detract from the overall impression that LEGO is the most dominant part of the disputed domain name.
The Complainant considers that the Respondent cannot claim any rights in the word “lego” established by the Respondent's common usage. The Complainant argues that based on its investigations it found the Respondent has not registered any trademarks or trade names corresponding to the disputed domain name and that it has not been using the word “lego” in any other way that would give it legitimate rights.
The Complainant also maintains that the Respondent has no rights or legitimate interests with respect to the disputed domain name based on the fact that no license or authorization has been given to the Respondent by the Complainant.
The Complainant contends that it is highly unlikely that the Respondent would not have known of the Complainant's legal rights in the LEGO trademark proving that the Respondent's interests could not have been legitimate.
According to the Complainant the Respondent is selling the Complainant's products and has taken no steps to prevent confusion. It is highly likely that visitors to the Respondent's website would be confused into falsely thinking that this is a website sponsored by the Complainant. In this case the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to his company's website. By these actions the Respondent is misleading Internet users to a commercial website and consequently the Respondent is tarnishing the trademark LEGO.
The Complainant contends that the Respondent's bad faith is evident in the fact that the Respondent was well aware of the trademark rights of the Complainant at the time of registration since it uses the Complainant's brand and logotype on its website as well as displaying and selling the Complainant's products. Also, bad faith is evidenced by the Respondent making no effort of disclosing the non-existing relationship between the parties. By using the disputed domain name the Respondent is not making legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for its own commercial gain.
The Respondent did not formally 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:
(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 extensive evidence that it has registered rights in the trademark LEGO.
The disputed domain name consists of the Complainant's trademark together with the suffix “next”. The suffix “next” is not considered relevant or distinctive and does not detract from the dominant part of the disputed domain name which is the instantly recognizable 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. Rjeen Rayanch, WIPO Case No. D2004-0488. The Panel acknowledges that the gTLD “.com” suffix only indicates that the domain name is 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 name is 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 name. 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 a domain name that contains the Complainant's trademark in its entirety without authorisation by the Complainant. As a consequence, the disputed domain name infers a website related to the services of the Complainant. Instead, the website uses the Complainant's brand and logotype to display and sell the Complainant's products for the benefit of the Respondent.
The evidence provided by the Complainant indicates that the Respondent has used the Complainant's trademark in the disputed domain name 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 and 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 would not choose such a name unless it was seeking to create an impression of association with the complainant (see Drexel University v. David Brouda, WIPO Case No. D2001-0067).
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 name. 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 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”.
Despite the opportunity through this dispute process, the Respondent has chosen not to rebut the Complainant's case or assert any rights in the disputed domain name.
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 name 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 name 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 name 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 name in bad faith. Evidence shows that the Respondent is attempting to confuse Internet users by attracting them to a website to gain a commercial advantage. The Complainant has provided evidence that the Respondent must have known of the LEGO trademark because the website associated with the disputed domain name contains material about LEGO and its products.
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 name. 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.
Finally, because Respondent offered to sell the domain name to Complainant “for valuable consideration in excess of any out-of-pocket costs directly related to the domain name” the Respondent has “used” the domain name in bad faith as defined in the Policy (see World Wrestling Federation Entertainment Inc. v. Michael Bosman, WIPO Case No. D1999-0001).
On the basis of the above and when considered together with the fact that the Respondent has no rights or legitimate interests in the disputed domain name, 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 name was 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 domain name <legonext.com> be transferred to the Complainant.
Dated: April 29, 2010