WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Flomicris Flomicris
Case No. D2011-1660
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Flomicris Flomicrisof Galati, Romania.
2. The Domain Name and Registrar
The disputed domain name <legotransformers.net> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2011. On September 30, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 30, 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.
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 October 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2011.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 17, 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 the well-known manufacturer of construction toys sold globally under the LEGO trademark. The Complainant is the owner of multiple registered trademarks for the word mark LEGO covering numerous territories worldwide including, for example, European Community Trademark registration number 39800 filed on April 1, 1996 and registered on October 5, 1998 for goods and services in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42.
The disputed domain name was registered on July 16, 2011 and points to a commercial website displaying sponsored links redirecting visitors to various online shops and displaying products manufactured both by the Complainant and by the Complainant’s competitors.
On August 12, 2011 the Complainant’s representatives wrote to the Respondent setting out the Complainant’s rights and requesting that the Respondent transfer the disputed domain name to the Complainant. The Complainant's representatives also attempted to contact the Respondent via an online form. The Respondent did not reply to these approaches or to subsequent reminders issued by the Complainant's representatives.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the fame of its trademark has been confirmed in numerous previous decisions under the Policy. The Complainant states that the dominant part of the disputed domain name comprises the word “lego”, which is identical to the Complainant's trademark and that the suffix “transformers” is generic and does not detract from the overall impression created by the inclusion of the Complainant's trademark. The Complainant also points out that it sells power supplies or transformers (with evidence provided) such that the said suffix strengthens the impression that the disputed domain name belongs to, or is affiliated with Complainant. The Complainant also submits that anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant.
The Complainant states that it has neither found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name nor anything that would suggest that the Respondent has been using LEGO in any other way that would confer any legitimate rights in the name upon the Respondent. The Complainant submits that no licence or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO. The Complainant notes that the Respondent is not an authorised dealer of the Complainant's products and has never had a business relationship with the Complainant.
The Complainant asserts that it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name LEGO at the time when the disputed domain name was registered and that, on the contrary, it is the fame of the Complainant's trademark that motivated the Respondent to register the disputed domain name. The Complainant states that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but instead has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a commercial site displaying links redirecting visitors to different online shops. The Complainant notes that the Respondent is not a reseller but rather is in receipt of revenue when a visitor clicks on the links provided on the website associated with the disputed domain name. The Complainant also points out that the website concerned contains no disclaimer as to the fact that there is no relationship between the Complainant and the Respondent.
The Complainant notes that the Respondent failed to reply to its correspondence and asserts that such a circumstance may be considered relevant in a finding of bad faith. The Complainant submits that the Respondent's use of sponsored links is a factor indicating bad faith as the Respondent is using the Complainant's trademark to attract visitors to his website. The Complainant also asserts that the Respondent is using the disputed 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.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated to the satisfaction of the Panel that it has rights in the registered trademark LEGO. The disputed domain name incorporates this term in its entirety, together with the word “transformers”. The top level domain “.net” may be disregarded for the purposes of comparison, as is customary in cases under the Policy. The Panel is satisfied that the Complainant's trademark is distinctive and well-known.
Numerous previous cases under the Policy have found that where a well-known trademark is incorporated in its entirety within a domain name, the addition of a generic word will generally not distinguish that domain name from the trademark (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409). The dominant part of the disputed domain name is the Complainant’s trademark and not the word “transformers”. Furthermore, the Complainant has provided evidence that it also sells transformers under the LEGO trademark such that this word is itself associated with that trademark in the minds of the Complainant’s customers. In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that accordingly the first element under the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial 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.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In the present dispute, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that the Respondent is not commonly known by the disputed domain name, that the Respondent has no licence or other authorization from the Complainant to use its well-known LEGO trademark, and that the Respondent has been using the disputed domain name for a website consisting of sponsored links which in many cases refer to the goods of the Complainant's competitors.
It is well established that this type of use of a domain name, which in effect trades off the Complainant’s trademark, is not bona fide. The Respondent’s use of the disputed domain name in this manner cannot confer any rights or legitimate interests upon it. The Respondent has chosen not to explain its conduct or to set out evidence of any rights or legitimate interests and thus has failed to rebut the prima facie case made by the Complainant. In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the second element under the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have 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.”
In the present case, based on the contentions and evidence supplied by the Complainant, the Panel considers it more probable than not that the Respondent registered the disputed domain name with intent to target the Complainant's well-known trademark for use with a website containing sponsored links pointing in many cases to the Complainant's competitors, the traffic to which would be maximized by the use of the trademark within the disputed domain name. The Respondent then proceeded to use the disputed domain name in this manner, as demonstrated by the screenshots produced by the Complainant. Such registration and use cannot be considered to be in good faith.
The Respondent has been given various opportunities to explain the intent behind its registration and use of the disputed domain name and to set out any alleged good faith motivation. The Respondent could either have replied in such terms to the Complainant’s various approaches or could have filed a Response in the present case. That it chose not to do so can of itself be regarded as an indicator of registration and use in bad faith (America Online, Inc. v. Viper, WIPO Case No. D2000-1198).
Finally on this topic, the Panel accepts the Complainant's contention that by using the disputed domain name, the Respondent has 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 of the Respondent’s website and therefore that the disputed domain name has been registered and used in bad faith.
Accordingly the third element under the Policy has been established.
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 <legotransformers.net> be transferred to the Complainant.
Andrew D. S. Lothian
Dated: November 29, 2011