The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Mariusz Zielezny of Palos Hills, Illinois, United States of America.
The disputed domain name <blogolego.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2010. On May 19, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On the same date, the Registrar 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 May 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2010.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 10, 2010.
The Center appointed Mihaela Maravela as the sole panelist in this matter on June 18, 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 Panel notes that the Registrar has confirmed the specific language of the registration agreement to be English. In these circumstances, the Panel is satisfied that English is appropriate as the default language of the proceedings in accordance with paragraph 11 of the Rules.
The following facts have been alleged by the Complainant and not refuted by the Respondent.
The Complainant is the owner of the LEGO trademark, and all other trademarks used in connection with the famous LEGO brand of construction toys and other LEGO branded products.
The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them.
The Complainant is also the owner of more than 1,000 domain names containing the LEGO mark.
The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on the Complainant's products, packaging, displays, advertising, and promotional materials. The LEGO trademark and brand have been recognized as being famous for example in the list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK, which has ranked LEGO as number 8 of the most famous trademarks and brands in the world.
The Domain Name was registered on January 24, 2010.
The Complainant contends that the Domain Name is confusing similar to the Complainant's world famous trademark LEGO and that the addition of the prefix “blogo” is not relevant and does not have any impact on the overall impression of the dominant part of the Domain Name, LEGO, which is instantly recognizable as a world famous trademark.
The Complainant contends that no license or authorization of any other kind, has been given by the Complainant to the Respondent to use the trademark LEGO. The Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant. The Domain Name was at one time connected to a blog displaying LEGO products, but the website which operated at the Domain Name cannot be found to fit the definition for a legitimate fan site since it was clearly commercial. The Respondent is today not using the Domain Name in connection with a bona fide offering of goods or services. The Respondent intentionally chose a domain name based on a registered trademark in order to generate traffic to his website where LEGO products and information were displayed, along with sponsored links.
Also, the Complainant contends that there is no doubt that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark at the point of the registration, and that the Domain Name has been connected to a website with links to several shopping sites where LEGO products are sold, as well as displaying other sponsored links. Consequently, the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website.
The Respondent did not reply to the Complainant's contentions.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Panel must determine whether: (a) the Complainant has a trademark or service mark; and (b) the Domain Name is identical or confusingly similar to that trademark or service mark.
Here, the Complainant has proved it has rights in the LEGO European Community Trademark No. 39800, registered prior to the registration of the Domain Name. The Panel finds that the Complainant has established that LEGO is well-recognized and that the trademark is distinctive. See, e.g. LEGO Juris A/S v. LogoFusion, WIPO Case No. D2006-0270; LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715.
The question of identity or confusing similarity for the purpose of the Policy requires a comparison of the Domain Name to the trademark rights which have been proved.
Here, the Domain Name has two differences from the trademark of the Complainant, LEGO: the addition of the “.com” suffix and the addition of the prefix “blogo”.
The addition of the generic top-level domain suffix (gTLD) “.com” is without legal significance from the standpoint of comparing the Domain Name to the Complainant's trademark since use of a gTLD is required for domain name registrations. “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific enterprise as a source of goods or services. See also Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk, WIPO Case No. D2002-0582 concerning the inclusion of a gTLD.
Many panels have established that the addition of words or letters to a mark used in a domain name may not always alter the fact that the domain name is confusingly similar to the mark. The addition of a generic word to a trademark will not avoid a determination that the disputed domain name is confusingly similar. See Hoffmann-La Roche Inc. v. Lindy Shaw, WIPO Case No. D2008-0985. The fact that a domain name wholly incorporates a complainant's trademark may be sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903. The addition of a generic term does not serve to distinguish the domain name from the trademark, but may instead reinforce the association of a complainant's trademark with a domain name. See Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Ltd., WIPO Case No. D2000-0275; Société Air France v. R Blue, WIPO Case No. D2005-0290.
In this case, apart from the generic top level domain suffix, the Domain Name consists of the Complainant's trademark LEGO and the term “blogo”.
The Panel finds that the term “lego” is the distinctive part of the Domain Name. The term “blogo” – which appears to be a typo of the term “blog” – does not adequately distinguish the Domain Name from the trademark. The term “blog” is descriptive. As other panels have argued, “[m]any, if not most, people will recognize [‘blog'] as the popular or common term for the website functionality more formally described as ‘web log' […]. Adding a descriptive term to a trademark is usually insufficient to avoid a finding of confusing similarity. Standing back and viewing the domain name as a whole, it is clear that many people seeing the domain name will assume that it indicates a ‘blog' about or related to [the Complainant's trademark]”, L'Oreal v. Tracey Johnson, WIPO Case No. D2008-1721. See also L'ORÉAL SA and LANCÔME PARFUMS ET BEAUTE ET COMPAGNIE v. MyFashionFiesta.com LLC, Will Turnage, WIPO Case No. D2009-0729; The Dannon Company Inc. v. Whois Privacy Protection Service, Inc. / Richard Chan, WIPO Case No. D2009-0163.
In the absence of any argument to the contrary from the Respondent, this Panel concludes that the Domain Name is confusingly similar to the Complainant's trademark. See also Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
The consensus view of WIPO panelists concerning the burden of establishing that a respondent does not have any rights or legitimate interests in respect of a domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.)
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name and the Respondent has failed to assert any such rights. (See, e.g. Barbara Brennan Inc. v. Texas International Property Associates, WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser, WIPO Case No. D2008-0210).
By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the Domain Name. The Panel takes for its basis that the Complainant has neither granted the Respondent rights to use its mark to create a blog nor to use it in any other way, and that the Respondent is in no way affiliated with the Complainant. Further, in the Panel's view, it is likely the Respondent was aware of the Complainant at the time it registered the Domain Name, given the worldwide renown of the Complainant's trademark.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
As a result of the worldwide fame of the Complainant's trademark the Panel finds it inconceivable that the Respondent was not aware of the Complainant's rights to LEGO when registering the Domain Name.
The Panel is also prepared to find that the Respondent registered the Domain Name and has used the Domain Name for the operation of click-through websites which provide links to other websites for the purpose of monetary gain. The evidence shows that the Respondent was not authorized or licensed to use the Complainant's trademark. The Respondent has deliberately traded on the goodwill of the Complainant, through the addition of a typo of the common word “blog”, thereby diverting Internet traffic intended for the Complainant's website to the Respondent's websites for the purpose of monetary gain. See LEGO Juris A/S v. David Palmer, WIPO Case No. D2008-1826.
Also, particularly given the notoriety of the Complainant and its trademarks, the Panel agrees with the view expressed in AT&T Corp. v. Linux Security Systems, WIPO Case No. DRO2002-0002, that:
“Most of the time it is quite difficult, if not impossible to actually show bad faith with concrete evidence, particularly given the limited scope of the inquiry in these proceedings; one should not expect to easily find “the smoking gun”. While bad faith cannot be presumed, once [c]omplainant has presented some evidence pointing in that direction, it is then incumbent upon [r]espondent to either respond or explain why its conduct should not be assimilated to bad faith. Panel's understanding of the Policy is that although the initial burden to prove [r]espondent's bad faith in the registration or the use of the disputed [d]omain [n]ame relies squarely on the shoulders of [c]omplainant, such obligation is only to make out a prima facie case, and once it has done so, as [p]anel finds it did in the present case, it is then incumbent upon the [r]espondent to either justify or explain its business conduct (if not to demonstrate the contrary). Failure to do so will, in some circumstances, enable the [p]anel to draw a negative inference. In the case at hand, the [r]espondent has elected (or failed) not to put forward any justification for its registration and use of the [d]omain [n]ame and, in the circumstances, the [p]anel does draw a negative inference out of such omission. See Société Des Bains De Mer Et Du Cercle Des Étrangers à Monaco v. Iggi Networks Media Group, WIPO Case No. D2000-1324 (December 18, 2000), Hebdomag Inc. v. Illuminaty Marketing, WIPO Case No. D2001-0206 [(April 7, 2001)] and InterTrade Systems Corporation v. Donna Lawhorn, FA0204000112488 Nat. Arb. Forum (July 15, 2002).”
Given the above circumstances, the Panel concludes that the 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 <blogolego.com> be transferred to the Complainant.
Dated: July 2, 2010