The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Romuald Rudnicki of Wroclaw, Poland, represented by Kancelaria Radców Prawnych Gabriela Bar & Malgorzala Rojowska s.c., Poland.
The disputed domain name <legoland.tv> is registered with eNom.
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 e-mail to eNom a request for registrar verification in connection with the disputed domain name. On May 6, 2010, eNom transmitted by e-mail 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 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2010. The Response was filed with the Center on May 27, 2010.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on June 4, 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.
Regarding the language of the proceeding, the Center ascertained from the Registrar that the language of the Registration Agreement is English. Accordingly, the Panel determines that pursuant to paragraph 11(a) of the Rules the language of the proceeding is English, i.e. the language of the Registration Agreement.
The Complainant, which is a Danish company, is the owner of one of the world's most famous trademarks, LEGO, and also of the LEGOLAND trademark (together, the “Trademarks”) which are registered as a word mark in several classes in many countries, including Poland (registration number 46740 for the LEGO trademark, registration number 56846 for the LEGOLAND trademark). The LEGO group sold in 2008 in more than 130 countries, including Poland, more than USD 1.8 billion worth of LEGO branded construction toys. The LEGO Group is also an investor and shareholder in theme parks using the LEGOLAND trademark. The Complainant or its predecessors have commenced using the LEGO trademark in 1953 and it has been used extensively and continuously worldwide since then. In addition, the Complainant is the owner of more than 1,000 domain names containing the LEGO mark (including <lego.pl> and <lego.tv>) and of the <legoland.com> and <legoland.pl> domain names.
The disputed domain name was registered by the Respondent on January 25, 2010.
The Complainant sent to the Respondent on April 5, 2010 a cease and desist letter, a first reminder on April 13, 2010, and a final reminder on April 28, 2010.
(i) The Complainant contends the Trademarks are well-known marks within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property (confirmed and extended by Articles 16.2 and 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights).
(ii) The Complainant submits that the disputed domain name is confusingly similar to the LEGO trademark and identical to the LEGOLAND trademark and that the use of the ccTLD “tv” does not have any impact on the overall impression of the dominant part of the domain name.
(iii) The Complainant contends since the Complainant's adoption and extensive use of the Trademarks predates the registration date of the disputed domain name, the burden is on the Respondent to establish rights or legitimate interests in the disputed domain name, and that the Respondent has no registered trademarks or trade names corresponding to the disputed domain name nor any rights or legitimate interests in respect of the disputed domain name.
(iv) The Complainant submits that because LEGO is a famous trademark, it is highly unlikely that the Respondent would not have known of the Complainant's rights in the disputed domain name at the time of registration.
(v) The Complainant contends that the Respondent's bad faith registration and use of the disputed domain name is established by the fact that the Respondent had received no authorization, license or permission to use it, that the Respondent had constructive notice of the Complainant's Trademarks due to their being famous, and by the fact that the disputed domain name, by the mere possibility of attracting Internet's users to the Respondent's web site, creates a likelihood of confusion with the Complainant's famous marks as to the source, sponsorship, affiliation or endorsement of the Respondent's web site, and that passive holding amounts to bad faith use.
(vi) The Complainant requests that the disputed domain name be transferred to the Complainant.
(i) The Respondent contends that he replied to the Complainant's cease and desist letter in an e-mail dated May 5, 2010.
(ii) The Respondent submits that the disputed domain name is similar but not identical to the Trademarks as it includes the suffix “tv”.
(iii) He contends that he selected the disputed domain name because it was available with the “tv” ccTLD, out of passion for the LEGO branded toys and with the intention of establishing a web site for private use only to document the educational development of his son (born on February 26, 2010), to express his interests (hobby) and to create an Internet photo gallery for his child.
(iv) Further, he contends he has not used the disputed domain name nor offered it for sale to the Complainant.
(v) The Respondent submits he makes a legitimate noncommercial and fair use of the disputed domain name, without intent for commercial gain.
(vi) The Respondent submits that the transfer requested by the Complainant should be denied.
The Respondent avers in his Response that the disputed domain name is similar to the Trademarks. The Panel finds not only that the similarity is confusing but that the disputed domain name is actually identical to the LEGOLAND trademark.
The addition of generic terms, such as “.com” or as here, “.tv”, does not ordinarily serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367, Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672 and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
Accordingly, the Panel finds that the disputed domain name is identical to the LEGOLAND trademark, and confusingly similar to the LEGO trademark, despite the addition of the generic suffix “tv”, which does not have any impact on the overall impression of the dominant part of the disputed domain name.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
There is no evidence in the record in this case that persuades the Panel that the Respondent has any rights or legitimate interests in the disputed domain name. The Complainant credibly states that the Respondent has no rights or legitimate interests in the disputed domain name and the Panel finds that this contention is not rebutted in the Respondent's Response.
The use of the disputed domain name does not appear to the Panel to be in connection with a legitimate noncommercial or fair use, or to be without the intent to misleadingly divert customers for commercial gain: The contract (in Polish), dated March 3, 2010, for the provision of Internet services, submitted by the Respondent as an annex to his Response, states in its paragraph 6 that “the Reserver agrees to the inclusion of, and is bound to maintain on his web page, advertisements ordered by the Provider” (translated from Polish).
On balance, the Panel is entitled to infer that the Respondent has no rights or legitimate interests in the disputed domain name and as a consequence, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. The fourth is the intentional attempt “to attract, for commercial gain, Internet users to [the Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site or location or of a product or service on [the Respondent's] web site or location.”
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant's arguments that the Respondent has acted in bad faith.
In this case, the Respondent actually avers in his Response that he chose the disputed domain name precisely because of his passion for the LEGO toys.
There is thus no doubt left that the Respondent not only must have been aware of the Complainant's trademark rights at the time he registered the disputed domain name (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) but that he was actually aware of them.
The Panel also notes that the Center's web site lists 41 cases in 2009 and already at least a dozen decided cases in 2010 in which the Complainant is the named complainant, which confirms that indeed the number of instances in which the Complainant has to combat cybersquatting is on the rise.
Moreover, the Respondent is holding passively the disputed domain name. It is well established since Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, that the mere passive holding of a domain name may in appropriate circumstances constitute bad faith use.
The Panel finds in the evidence submitted by the Respondent that he allowed his web site developer to insert advertisements on the web page thus attracting Internet users to the disputed domain name for the purpose of commercial gain by creating a likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site. See InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075, and LIN Television Corporation v. Home In USA and Home In USA, Inc., WIPO Case No. D2000-0257.
The Panel also notes that the Respondent does not seem to have considered registering and using a domain name featuring his child's name, which would have been consistent with his declared intended private use, but rather proceeded to register a domain name featuring the famous LEGO mark. The alleged connection between .tv and a photo gallery seems also far-fetched to the Panel.
The Panel is not persuaded that the e-mail of May 5, 2010, claimed to have been sent by the Respondent as a reply to the Complainant's cease and desist letter, was actually ever sent. Annex 5 to the Response does contain a draft letter in English from the Respondent to the Complainant's counsel, dated May 4, 2010, but this is a mere attachment to an e-mail from the Respondent to his counsel, dated May 21, 2010, and not an e-mail with any convincing indication to this Panel of it having been sent. Moreover, the Complainant had no reason not to disclose this e-mail if it had been sent. It has been noted in earlier cases that the failure of a respondent to respond to a cease and desist letter, or to a similar attempt at contact, is relevant in a finding of bad faith. See News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
The Panel concludes that the requirement of paragraph 4(a)(iii) of the Policy is satisfied in this case and that under the above-mentioned circumstances the Complainant has met its burden under the Rules, paragraph 4(b)(iv), because its appears from the evidence that the Respondent has registered and is using the disputed domain name 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 name <legoland.tv> be transferred to the Complainant.
Dated: June 18, 2010