The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Corporate Brand Services AB, Sweden.
The Respondent is Rampe Purda of Hailuoto, Finland.
The disputed domain names <legode.com>, <legoindygames.com> and <legouniverese.com> are registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2010. On May 25, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 26, 2010, 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. On May 27, 2010, the Center invited the parties to comment on the language of proceedings in both Finnish and English. On May 28, 2010, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. 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 June 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 23, 2010.
The Center appointed George R. F. Souter as the sole panelist in this matter on June 29, 2010. The Panel finds that it was properly constituted and owing to the circumstances of record accepts the Complainant's request that English be the language of these proceedings. 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 has been shown evidence of widespread registrations internationally of the complainant's LEGO mark.
The complainant is the owner of the well-known LEGO mark for construction toys. Its turnover in 2008 was more than USD 1.8 billion. The Complainant has subsidiaries and branches throughout the world, and Lego products are sold in more than 130 countries.
In the official top 500 Superbrands for 2009/10, provided by Superbrands UK, LEGO appears as number 8 in the list of the most famous trademarks and brands in the world.
The Complainant alleges: “The fame of the trademark LEGO has been confirmed in numerous previous UDRP decisions, for example see; case No. D2008-1692, case No. D2008-1715 and case No. D2009-0680. The addition of the suffixes “de”, “universe”, “indygames” are not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO, instantly recognizable as a world famous trademark”, and that, consequently, the disputed domain names are confusingly similar to the Complainant's LEGO trademark.
The Complainant also alleges that it: “has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Names. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in the names. Consequently the Respondent may not claim any rights established by common usage”.
In connection with bad faith, the Complainant alleges: “ The Domain Names LEGOde.com and LEGOuniverese.com are currently connected to websites with sponsored links …Consequently, the Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its websites.”
The domain name <legoindygames.com> is currently inactive, but the Complainant points out that “passive holding, under certain circumstances, may be seen as use in bad faith.”
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain names be transferred to the Complainant or be cancelled:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
LEGO is clearly a well-known mark. Successive panels in proceedings under the Policy have been consistent in regarding inconsequential additions to a well-known trademark in a domain name as insufficient to escape the finding that the disputed domain names are confusingly similar to well-known trademarks involved, and the Panel so finds in the present case.
The Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain names in these proceedings, and the Panel draws the appropriate conclusion based on the Complainant's making a prima facie case. There appear to be no circumstances attached to the Respondent's name or address which might lead to any right or legitimate interest nor are any circumstances under paragraph 4(c) of the Policy. In all these circumstances, the Panel decides that the Complainant succeeds under this heading.
The Respondent's name in the present proceedings is well-known to the panel. In U.S. Natural Resources, Inc. v. Rampe Purda / Privacy—Protect.org, WIPO Case No. D2010-0720, the disputed domain name comprised the complainant's established mark plus inconsequential admissions, and was used on a pay per click website which could have had the effect of luring potential customers of the complainant to its competitors. In Hertz System, Inc. v. Rampe Purda / Privacy--Protect.org, WIPO Case No. D2010-0636, the same methodology was employed, as is the case in the present proceedings with respect to the disputed domain name <hertzcarrental.com>.
This pattern of abusive behaviour by the Respondent, in the Panel's opinion, leads to the decision that both registration and use in bad faith has also occurred in the present case with respect to the disputed domain names <legode.com> and <legouniverese.com>. In connection with the disputed domain name <legoindygames.com>, the risk of its also being used abusively is, in the Panel's opinion, so great that the panel has no hesitation in deciding that this is a case in which passive holding of a domain name by the respondent must be regarded as constituting both registration and use 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 <legode.com>, <legouniverese.com> and <legoindygames.com> be transferred to the Complainant.
George R. F. Souter
Dated: July 13, 2010