Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Taejang Toonglo of Chiangrai, Thailand.
The disputed domain name <bestcheaplego.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2010. On March 25, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 25, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 20, 2010.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on April 29, 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 trademark upon which the Complaint is based is LEGO. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the LEGO trademark around the world. On May 2, 2010, the Panel checked the United States Patent and Trademark Office database available online and found that United States of America trademark No.1018875 LEGO was registered on August 26, 1975 in International class 28 for inter alia toy building blocks, and that the mark has been assigned to Complainant. Complainant also owns other United States trademark registrations for LEGO. See LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC., WIPO Case No. D2009-0924; Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070. In addition, Complainant is the owner of over 1,000 domain names containing the term LEGO.
According to the documentary evidence and contentions submitted, Complainant through their predecessors commenced use of the LEGO mark in the United States in 1953 to identify construction toys made and sold by them. The LEGO Group has expanded the use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Panel accepts Complainant's contention that the LEGO trademark is a notorious trademark worldwide.
The Panel also notes that the notoriety of the LEGO trademark has been confirmed in previous WIPO decisions. See LEGO Juris A/S v. John Davies, WIPO Case No. D2010-0160; Lego Juris A/S v. Hu Liang/Dolego, WIPO Case No. D2009-0848; LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Stop2Shop, G V, WIPO Case No. D2009-0784; LEGO Juris A/S v. Private, Registration / Dohe Dot, WIPO Case No. D2009-0753; LEGO Juris A/S v. EcomMutual, WIPO Case No. D2009-0685; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680; LEGO Juris A/S v. Deng Yi Xia, WIPO Case No. D2009-0644; LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564; Lego Juris A/S v. Gioacchino Zerbo, WIPO Case No. D2009-0500; LEGO Juris A/S v. Mike Morgan, WIPO Case No. D2009-0438; LEGO Juris A/S v. Bladimir Boyiko, WIPO Case No. D2009-0437; LEGO Juris A/S v. Domainproxyagent.com and Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0381; LEGO Juris A/S v. Zhijun Guo, WIPO Case No. D2009-0184; LEGO Juris A/S v. P N S Enterprises, WIPO Case No. D2009-0170; LEGO Juris A/S v. David Palmer, WIPO Case No. D2008-1826; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; and LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692.
According to the documentary evidence and contentions submitted, the domain name <bestcheaplego.com> was registered with GoDaddy.com, Inc. on December 16, 2009. Complainant sent a cease and desist letter to Respondent on February 19, 2010, which letter was reiterated by email on February 26, 2010. Complainant states that no response from Respondent was ever received.
Complainant argues that the disputed domain name is confusingly similar to the LEGO trademark because the dominant part of the domain name <bestcheaplego.com> is the word “lego”. Complainant also contends that the addition of the prefix “bestcheap” is not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO, and that the top-level domain “.com” is not to be taken into consideration.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent may not claim any rights established by common usage corresponding to the disputed domain name; (ii) no license or authorization of any other kind has been given by Complainant to Respondent to use the trademark LEGO; (iii) it is highly unlikely that Respondent would not have known of Complainant's legal rights in the name LEGO at the time of the registration; and (iv) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
Finally, Complainant contends that Respondent registered and used the disputed domain name in bad faith because (i) Respondent was aware of the rights Complainant has in the LEGO trademark at the point of the registration and registered the domain name <bestcheaplego.com> in view of the considerable value and goodwill of that trademark; and (ii) Respondent is using the disputed domain name to intentionally attempt to attract Internet users to a commercial website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website.
Respondent did not reply to Complainant's contentions.
The consensus view is that the respondent's default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
The disputed domain name <bestcheaplego.com > incorporates the LEGO mark in its entirety. Previous WIPO UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., TELSTRA CORPORATION LIMITED v. BARRY CHENG KWOK CHU, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282. That is particularly true where the disputed domain name incorporates a well-known trademark as LEGO.
In the instant case, the combination of the prefix “bestcheap” with the word “lego” does not affect the overall impression of the dominant part of the disputed domain name because the resulting word has a significant meaning: “best cheap LEGO”. As decided in other WIPO UDRP cases, “the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone”. LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC., supra. See also Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; RX America, LLC v. Mattew Smith, supra. Furthermore, the LEGO trademark stands out in <bestcheaplego.com> and leads the public to think that the disputed domain is somehow connected to the owner of the registered trademark.
Therefore, the Panel finds that the <bestcheaplego.com> domain name is clearly confusingly similar to the LEGO trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
The Panel is convinced that Complainant has done enough to establish a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain name, and by defaulting Respondent has failed to provide the Panel with any evidence of Respondent's rights to or legitimate interests therein. In addition, none of the three nonexclusive methods for the sole panelist to conclude that Respondent has rights or a legitimate interest in the disputed domain name (paragraph 4(c) of the Policy) shows a result in favor of Respondent.
In fact, the Panel finds as reasonable Complainant's contentions that (i) Respondent may not claim any rights established by common usage corresponding to the disputed domain name; (ii) no license or authorization of any other kind has been given by Complainant to Respondent to use the trademark LEGO; and (iii) it is unlikely that Respondent would not have known of Complainant's legal rights in the name LEGO at the time of the registration given the notoriety of the LEGO trademark.
This case is similar to others under the Policy in which a respondent has registered and used a domain name incorporating a third party trademark for the purpose of directing Internet users to a website that contains sponsored links to other websites where goods or services of the trademark owner and third parties are advertised and/or offered for sale. As decided in LEGO Juris A/S v. Lothar Evers, WIPO Case No. D2009-1711, “[t]he domain name registrants in these cases are presumed to earn revenues from click-throughs to advertisers listed on their websites. As a general rule, panels have found that such use does not constitute fair commercial use of a trademark in a domain name.”
The Panel finds that Respondent is using Complainant's well-known mark to draw Internet users to a website with sponsored links presumably earning revenues from that activity. Therefore, Respondent is not engaged in legitimate noncommercial or fair use of Complainant's mark in the disputed domain name.
In short, Complainant has satisfied its burden of providing sufficient evidence to show that Respondent lacks rights to or legitimate interests in the disputed domain name. In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
The fact that Respondent has chosen as domain name a widely-known trademark is per se a clear indication that registration of the disputed domain name was made in bad faith even in the case of the present combination of words because the domain name <bestcheaplego.com> has a particular meaning intended to attract Internet users which would look for a website offering Lego products. In the circumstances, the mere fact of diverting users in this misleading manner is evidence of bad faith. See The Gap, Inc. v. YongHoon Lee, SofTech, WIPO Case No. D2007-0386. Therefore, the Panel finds that Respondent desired to free ride on Complainant's reputation and goodwill for commercial gain, and, accordingly, finds that Respondent registered the disputed domain name in bad faith.
Complainant asserts that when a cease and desist letter was first sent to Respondent the disputed domain name was pointing to a website containing sponsored links, and that sometime after Respondent redirected the domain name to the website “www.wordpress.com”. On May 2, 2010 the Panel visited the website to which <bestcheaplego.com> resolves and found that the disputed domain name is currently connected to a website with sponsored links.
The Panel concurs with the understanding of several other WIPO panels that the use of a domain name to point to a website that offers sponsored links to other websites is an evidence of bad faith, particularly if, as in the instant case, Complainant owns a well-known trademark. See Mudd, (USA) LLC v. Unasi, Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unais, Inc., WIPO Case No. D2005-0556. In short, the manner in which Respondent has used and is using the disputed domain name demonstrates that the disputed domain name was and still is being used in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <bestcheaplego.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Dated: May 13, 2010