The Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT Corporate Brand Services AB, Sweden.
The Respondent is PrivacyProtect.org Domain Admin of the Netherlands / ThaiSerVerOnLinE, Mr.Sagsan Phurahong of Thailand.
The disputed domain name <cheap-lego.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2010. On May 6, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On May 7, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 10, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 10, 2010. The Center verified that the Complaint together with the amendment to 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 May 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 1, 2010.
The Center appointed William F. “Bill” Hamilton as the sole panelist in this matter on June 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 June 1 and June 15, 2010, the Center received email communications from the Respondent. The email communications were in a language other than English. The Center advised the Respondent on June 16, 2010 that paragraph 11 of the UDRP Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement subject to the authority of the Panel to determine otherwise. The Registrar confirmed that the language of the Registration Agreement is English. The Respondent has not resubmitted the emails in English or presented to the Panel any argument as to why this proceeding should proceed in English. Accordingly, the Panel determines not to consider the email submissions as they are not in English.
The LEGO mark is one of the world's leading brands and is registered with numerous national authorities around the world. The Complainant commenced the use of the LEGO mark in the United States in 1953. The Complainant owns hundreds of active domain names which incorporate the LEGO mark. LEGO branded products are sold in more than 130 countries around the world. LEGO Juris A/S, v. Anton, WIPO Case No. D2010-0237. The disputed domain name was registered by the Respondent on January 13, 2010.
The Complainant contends the disputed domain name is confusingly similar to its LEGO mark because the Complainant's entire mark LEGO is utilized in the disputed domain name. The prefix “cheap” according to the Complainant increases the likelihood of confusion. The Complainant asserts that that the Respondent has no legitimate rights or interest in the disputed domain name. The Complainant asserts that the Respondent has no bona fide business interest in the disputed domain name, and that the Complainant has not licensed the Respondent in any manner to use the LEGO mark or the disputed domain name. Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith to attract unsuspecting Internet users to the Respondent's landing page only to be redirected other websites offering a variety of consumer products for sale.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy establishes three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) The Respondent's 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 domain name; and
(iii) The Respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
The disputed domain name is confusingly similar to Complainant's well-recognized and well-known LEGO mark. The disputed domain name incorporates the Complainant's renowned LEGO mark entirely. The mere addition of a generic word such as the prefix “cheap” does not dispel the confusing similarity caused by the wholesale adoption into the disputed domain name of the Complainant's LEGO mark. It has been long-established that confusing similarity generally occurs when well-known trademarks are paired with generic prefixes and suffixes. Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488; AmerCable Incorporated v. Edward Van Rossum, WIPO Case No. D2009-1292.
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by respondent, shall be evidence of respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice of the dispute to respondent, respondent's use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has made a prima facie showing the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent has never been licensed or authorized by the Complainant to use the LEGO mark or the disputed domain name. Moreover, it does not appear that the Respondent is commonly known by the disputed domain name or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Respondent has failed to come forth with any demonstration of rights or legitimate interests in the disputed domain name. The Panel accordingly determines that the Respondent has no rights or legitimate interests in the disputed domain name. Audi AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0003.
The LEGO mark is well known throughout the world. It is inconceivable that the Respondent was unaware of the LEGO mark when registering the disputed domain name in 2010. A simple Google® search of “LEGO” would have produced hundreds, if not thousands, of “hits.” Indeed, the disputed domain name suggests to common sense that it was chosen to lure Internet users to a website selling LEGO branded products at a discount.
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 <cheap-lego.com> be transferred to the Complainant.
William F. Hamilton
Dated: June 29, 2010