The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Domains by Proxy, Inc. and Goodsteed Limited of Scottsdale, Arizona, United States of America and Nicosia, Cyprus, respectively.
The disputed domain names <legorobot.net> and <legostorage.net> (the “Domain Names”) are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2010. On June 4, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On June 6, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 9, 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 amended Complaint on June 10, 2010. The Center verified that the Complaint together with the amended 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 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on July 7, 2010.
The Center appointed Daniel Peña as the sole panelist in this matter on July 16, 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.
Complainant is the owner of LEGO and all other trademarks used in connection with the famous LEGO brand of construction toys and other LEGO branded products.
The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in China and elsewhere.
LEGO opened its flagship store in China at World Shopping Mall in Beijing in September 2007.
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.
Over the years, the business of making and selling LEGO branded toys has grown. For instance, the revenue for the LEGO Group in 2008, was more than USD 1,8 billion.
The Complainant has subsidiaries and branches throughout the world.
LEGO products are sold in more than 130 countries including United States. The Complainant is also the owner of more than 1000 domain names containing the term LEGO.
The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.
The LEGO Group maintains an extensive website under the domain name <lego.com>.
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 all products, packaging, displays, advertising, and promotional materials. Indeed, the LEGO trademark and brand have been recognized as being famous. For instance, according to a list of the official top 500 Superbrands for 2009/10.
The disputed domain names are confusing similar to the Complainant's world famous trademark LEGO, the Respondent has no rights or legitimate interests in the disputed domain names and the disputed domain names have been registered and are being used in bad faith.
The fame of the trademark LEGO has been confirmed in numerous previous UDRP decisions.
The Respondent did not reply to the Complainant's contentions.
In order for the Complainant to prevail and have the disputed domain name transferred, the Complainant must show the following per the Policy, paragraph 4(a):
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant have 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.
Complainant bears the burden of proof for each of these elements.
The Complainant has evidenced registrations for the trademark LEGO in several countries including the United States. The Complainant's trademarks are registered mainly in international class 28 for construction toys.
The disputed domain names contain the Complainant's distinctive trademark LEGO in its entirety. Neither the addition of the prefixes and suffixes nor the inclusion of the generic denomination “.net” alters the fact that the domain names are confusingly similar to the Complainant's trademark.
In this Panel´s view, the expressions “storage” and “robot” are not relevant and will not have any impact on the overall impression of the dominant part of the names.
Therefore, the Panel finds that the contested domain names are confusingly similar to the Complainant's registered trademark. Therefore, the requirements in paragraph 4(a)(i) of the Policy are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the 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.
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, 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 Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
According to the evidence in this case, the Respondent has intentionally chosen domain names based on a registered trademark in order to generate traffic to websites that contain links that leads to sites selling LEGO products, e.g. Amazon.com. By doing this, Respondent is using the LEGO trademark and misleading Internet users to commercial websites and consequently, the Respondent is tarnishing the trademark LEGO.
In the absence of a Response, the Panel accepts the arguments and evidence advanced by the Complainant and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.
Under paragraph 4(b), a respondent has registered and used a domain name in bad faith if, inter alia, respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to respondent's website or other online location by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation or endorsement of respondent's site or of a product or service offered on the respondent's site. Policy, paragraph 4(b)(iv).
It has been evidenced by the Complainant that the Respondent has been contacted on April 8, 2010 through a cease and desist letter, sent by e-mail. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the contested Domain Names infringed the Complainant's rights in said trademark. The Complainant requested a voluntary transfer of the disputed Domain Names and offered compensation for the expenses of registration and transfer fees. No reply was received so two reminders were sent, the first one on April 26, 2010 and a final reminder on April 29, 2010. The Panel considers this fact as a further indication of bad faith vis-à-vis the Respondent.
The Panel also finds that the disputed Domain Names are currently connected to websites containing links that lead to other sites selling LEGO products, such as Amazon.com. Consequently, the Respondent is using the Domain Names 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 the websites.
Finally, in the Panel's view, all these activities carried out by Respondent in relation to a widely-known trademark is a clear indication of bad faith not only in the registration stage but also in the use of the disputed domain names.
The Complainant has established that the disputed domain names have been registered and are being used in bad faith. The third requirement of the Policy has therefore been fulfilled.
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 names, <legorobot.net> and <legostorage.net> be transferred to the Complainant.
Dated: July 28, 2010