WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Tran Quang Ha
Case No. D2011-0989
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Tran Quang Ha of Hanoi, Vietnam.
2. The Domain Name and Registrar
The disputed domain name <legoprice.com> is registered with GoDaddy.com, Inc. (the “Domain Name”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2011. On June 10, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On June 10, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name.
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 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2011.
The Center appointed Olga Zalomiy as the sole panelist in this matter on July 29, 2011. 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.
4. Factual Background
The Complainant is well known for its construction toys, which it sells throughout the world under the mark LEGO since 1953. The Complainant owns numerous trademark registrations for LEGO, including Community Trademark registration No. 000039800 for LEGO, registered on October 5, 1998, and United States (“U.S.”) Trademark Registration No. 1018875, registered on August 26, 1975.
The Complainant is also the registered owner of over 1000 domain names which incorporate the LEGO mark, including the domain name: <lego.com>, which is connected to the Complainant’s official website.
The Respondent registered the Domain Name <legoprice.com> on January 18, 2011. The Domain Name consists of: 1) the word “LEGO”; 2) the word “price”; and 3) the qTLD suffix “com.” The Domain Name directs to a pay-per-click (“PPC”) website displaying sponsored links to various online shops offering various goods and services, including the Complainant’s products.
On March 23, 2011, the Complainant’s representative sent the Respondent a cease and desist letter, advising the Respondent about his unauthorized use of the LEGO trademark and seeking transfer of the Domain Name to the Complainant. In his March 24, 2011, response, the Respondent asked for reimbursement of his expenses for the Domain Name registration, hosting services and expenses incurred in connection with purported website design that he was about to create. The Respondent also stated, “And I considering [sic] too, what could you do me [sic]? You will sue me at Vietnam court?…However, if you send me a small bucks (like a donation to Vietnam poor students), I will transfer it immediately.” On the same day, the Complainant’s attorney advised the Respondent about the transfer procedure, the consequences of his actions and requested confirmation of the Respondent’s costs. The Respondent replied “I can realize [sic] that only in case you pay me 200$ [sic]” and provided his PayPal email address to conclude the transfer. The parties’ negotiations broke down April 7, 2011, when the Respondent wrote the following email:
“First, I never say [sic] that I accepted your proposal, so please re-contact me when you accept the price of 200$[sic]
Secondly, if you want to proceed to court, or do whatever you want, I don’t care, i will draw to the court’s attention, you would to pay [sic] litigation costs and it will be, for sure, greater than 200$ [sic].
Thirdly, I never do anything if I haven’t seen my bucks yet. So if you have intention to process this exchange, please pay me first, at lease [sic] 100$ [sic]
Thanks, and Bon Weekend.”
5. Parties’ Contentions
The Complainant alleges that it is the owner of the well-known trademark LEGO. In Complainant’s view, the Domain Name is identical and confusingly similar to its LEGO trademark and the addition of the suffix “price” does not mitigate the confusion and will have no impact on the overall impression of the Domain Name, as the dominant part of the Domain Name is LEGO. The Complainant claims that the addition of the top-level domain “.com” has no impact on the overall impression of the Domain Name and is, therefore, irrelevant for the purpose of determining confusing similarity.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant claims that it has not found that the Respondent has registered any trademarks or trade names corresponding to the Domain Name. The Complainant alleges that it has given no license or authorization of any kind to the Respondent to use the trademarks.
Further, the Complainant argues that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services and instead, intentionally chose a domain name based on a registered trademark in order to generate traffic to a website displaying sponsored links to various online stores selling, among others, Complainant’s products. According to the Complainant, such use is not considered to be bona fide offering of goods and services.
Finally, the Complainant claims that the Domain Name was registered and is being used in bad faith. The Complainant claims that its LEGO trademark has status as a well-known mark. In the Complainant’s view, the increasing number of infringing domain name registrations indicates that the LEGO trademark has widespread reputation throughout the Community1 and around the world. Further, the Complainant alleges that in its March 23, 2011, cease and desist letter it advised the Respondent that the Respondent’s unauthorized use of the Complainant’s LEGO trademark in the Domain Name violated the Complainant’s rights in the trademark. According to the Complainant, it requested that the Respondent voluntarily transfer the Domain Name to the Complainant and offered to compensate the Respondent’s expenses on the registration and the transfer. The Complainant claims that the Respondent requested USD 200.00 compensation that exceeded the Complainant’s standard compensation amount. The Complainant further alleges that it offered the Respondent USD 150.00 to acquire the Disputed Name and to achieve amiable resolution of the matters, but the negotiations broke down.
The Complainant alleges that the Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent’s website, by creating likelihood of confusion with the Complainant’s mark, as to the source, sponsorship or affiliation. In Complainant’s view, the Respondent receives PPC compensation when visitors to the website at the Domain Name are redirected to other websites via sponsored links displayed on the Respondent’s website. According to the Complainant, the use of the sponsored links is a factor indicating bad faith. In Complainant’s view, it’s unlikely that the Respondent would come up unintentionally with a famous word like “lego” and register the Domain Name containing the word.
The Complainant requests that the Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules, “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.”
In case of respondent’s default, “the respondent’s default does not automatically result in a decision in favor of the complainant.”2 The complainant must establish “each of the three elements required by paragraph 4(a) of the UDRP.”3 Thus, to succeed on its claim, the Complainant must prove that: 1) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) the Respondent has no "rights or legitimate interests in respect of the Domain Name"; and 3) the Domain Name "has been registered and is being used in bad faith." Paragraph 4(a) of the UDRP.
“Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”4
A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. Under Paragraph 1.1 of the WIPO Overview, 2.0, if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. Here, the Complainant has provided evidence of ownership of multiple trademark registrations for LEGO, including the Community Trademark No. 000039800 for LEGO, registered on October 5, 1998, and the U.S. Trademark Registration No. 1018875, registered on August 26, 1975. The Panel, therefore, finds that the Complainant established its rights in the LEGO mark.
The test for confusing similarity should be a comparison between the mark and the domain name, which involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.5 Based on the comparison of the LEGO trademark and the Domain Name, the Panel finds them confusingly similar because the Domain Name incorporates the Complainant’s trademark in its entirety.6 It is a consensus among UDRP panelists that addition of merely generic or descriptive wording to complainant’s trademark, where the mark constitutes the dominant part of the domain name, is insufficient to avoid finding of confusing similarity.7 The Panel finds that the Complainant’s mark in this case clearly constitutes the dominant part of the Domain Name, and the word “price” following Complainant’s famous and distinctive mark LEGO does not create new or different mark. Finally, it is well established that the addition of the top-level domain suffix “.com” or equivalent should be disregarded under the confusing similarity test, as it is a technical requirement of registration.8
Therefore, the Panel finds that the Complainant has proven that the Domain Name is identical to the trademark LEGO in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.9 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.10 Therefore, to satisfy this requirement, the Complainant must make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.11
Paragraph 4(c) of the UDRP provides an open list of circumstances that may demonstrate the rights or legitimate interests of a respondent in a domain name. The Complainant alleges that no such circumstances exist here. The Panel finds that the Complainant presented a prima facie showing that the Respondent lacks rights or legitimate interest in the Domain Names for three reasons. First, the Respondent did not use the Domain Name in connection with a bona fide offering of goods. Second, the Respondent uses the Domain Name for commercial gain and to misleadingly divert consumers to its website. Third, the Respondent has not been commonly known by the Domain Name.
The Complainant claims that the Respondent is not acting as a bona fide reseller of goods. The totality of evidence submitted by the Complainant, weighs in support of this allegation. A printout from the Respondent’s website submitted by the Complainant, reveals that the Respondent uses the “www. legoprice.com” website as a PPC landing page that displays sponsored links to third-party online shops. It is well-established that, “use of a domain name to post parking and landing pages or PPC links would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services."12 Where such links are based on trademark value, such practices are generally considered as “unfair use resulting in misleading diversion. “13 Therefore, it is likely that the Respondent receives commercial value when visitors are attracted to his website by way of the Domain Name. By this use of the Complainant’s name and trade mark in the Domain Name the Respondent is effectively deceiving Internet users. The Panel finds that this is not a bona fide use of the Domain Name.
As to the Complainant’s assertion of “tarnishment” of its mark, the Panel notes that this phrase has a specific legal meaning that does not apply to the case at hand. “Tarnishment in this context normally refers to such conduct as linking pornographic images or wholly inappropriate information to an unrelated trademark.”14 This is not the case in the case at hand.
The Panel finds that the Complainant established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the UDRP requires “a positive finding that both the registration and use were in bad faith.”15 Paragraph 4(b) of the UDRP provides an open list of the circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” The Panel finds that circumstances present in this case correspond to those described in paragraph 4(b)(iv) of the UDRP. In particular, the Panel finds that “by using the domain name, you [a respondent] intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”16
(i). Registration in bad faith
The Panel finds it is likely that the Respondent knew about the Complainant’s widely-known LEGO mark and registered the <legoprice.com> domain name in bad faith.
The Complainant presented sufficient evidence to conclude the LEGO mark is a well known mark. A copy of the 2009/10 official top 500 Superbrands rating provided by the Center for Brand Analysis, showing that LEGO was rated No. 8 among the top 500 brands in the world. Several UDRP panels have found the LEGO mark to be well known.17 In the Panel’s view, the existence of multiple attempts by third parties to trade on the Complainant’s goodwill is an indication of its fame.18 Since the Domain Name incorporating a well-known mark is registered by someone with no legitimate connection to the product, the Panel finds that it is likely that the Respondent registered the Domain Name in bad faith.19
The Panel finds the fact that the Complainant’s trademark was registered long before the Respondent registered the Domain Name to be additional evidence of registration in bad faith. The evidence shows that the Respondent registered the Domain Name thirty five years after the Complainant registered and started using its mark in the Respondent’s country of residence. This is yet another indication of Respondent’s registration of the Domain Name in bad faith.
Therefore, the Panel finds that the Respondent registered the Domain Name in bad faith.
(ii) Use in bad faith
The Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement for the reasons described below.
The Complainant presented a printout from the Respondent’s website, connected to the Domain Name, which shows that the Respondent used the Domain Name to direct Internet users to a sponsored-link parking page or a pay-per-click page offering goods competitive with those of the Complainant and to direct uses to websites offering Complainant’s goods. This type of use generally shows that the owner of such a website makes advertising revenues, and has been considered use in bad faith.20
The Complainant submitted printouts of its attorneys’ correspondence with the Respondent concerning the transfer of the Domain Name. The evidence reveals that the Respondent demanded the sum exceeding reasonable out-of-pocket expenses associated with registration and transfer of a domain name. Moreover, the correspondence shows that the Respondent demanded advance compensation prior to making any good faith effort to transfer the Domain Name to the Complainant. The tone of the correspondence makes it likely that the Respondent was looking for any excuse to get as much money from the Complainant as he could. In this Panel’s view, this is evidence of a bad-faith intent to extort and, as a result, additional evidence of use in bad faith.
Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the UDRP. As a result, the Panel finds that the Complainant established the third element of paragraph 4(a) of the UDRP.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <legoprice.com> be transferred to the Complainant.
Dated: August 11, 2011
1 In the Panel’s view, the word “Community” refers to the European Community.
2 See, Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
9 Paragraph 4(a)(ii) of the UDRP.
16 Paragraph 4(b)(iv) of the UDRP.
18 See, e.g. LEGO Juris A/S v. An Bui, WIPO Case No. D2010-1169, LEGO Juris A/S v. XMGlobal Inc, WIPO Case No. D2010-1168, LEGO Juris A/S v. J.h.Ryu , WIPO Case No. D.2010-1156; LEGO Juris A/S v. Satisfaction Ink, WIPO Case No. D2010-1016; LEGO Juris A/S v. Chris Parent, WIPO Case No. D2010-1015; LEGO Juris A/S v. Domains by Proxy, Inc./ Phoenix Productions, WIPO Case No. D2010-0798; LEGO Juris A/S v. Granite Real Estate/Domains by Proxy, Inc., WIPO Case No. D2010-0819; LEGO Juris A/S v. Heihachi.net, Heihachi Ltd WHOIS-PROTECTION, WIPO Case No. D2010-0821, LEGO Juris A/S v. Maho Jakotyc , WIPO Case No. D2010-0835; LEGO Juris A/S v. Online Toy Superstore, WIPO Case No. D2010-0839; LEGO Juris A/S v. Rampe Purda/Privacy--Protect.org, WIPO Case No. D2010-0840; LEGO Juris A/S v. Dealwave, WIPO Case No. D2010-0881; LEGO Juris A/S v. Isidore Ventures, LLC / WhoisGuard Protected, WIPO Case No. D2010-0660.
19 Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. See also, General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568.