WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Contact Privacy Inc. Customer / Gunnlaugsson Magnus
Case No. D2012-0291
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Contact Privacy Inc. Customer of Toronto, Canada / Gunnlaugsson Magnus of Bergen, Norway.
2. The Domain Name and Registrar
The disputed domain name <where-to-buy-lego.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 14, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same date, Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 23, 2012 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 amendment to the Complaint on February 23, 2012.
The Center verified that the Complaint together with the amendment to 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 February 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2012.
The Center appointed Michael Treis as the sole panelist in this matter on March 21, 2012. 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.
On March 23, 2012, the Respondent submitted a Supplemental Filing with the Center. The Panel has decided to admit this Supplemental Filing.
The due date for the Panel to forward its Decision to the Center was extended to April 18, 2012.
4. Factual Background
Complainant owns the rights to the trademark LEGO in Canada and elsewhere. It was first registered in Canada in 1957 (Registration No. TMA 106457). The trademark has been used intensely in the United States of America and Canada and elsewhere since 1953. The trademark LEGO is among the best known trademarks in the world.
The Respondent registered the disputed domain name on September 2, 2011. With its Complaint, the Complainant has shown that the disputed domain name has been used as a link to the website “www.learningthings.com” where a broad range of educational products are promoted and where the Internet users can add products to a virtual shopping cart. However, the Panel notes that the disputed domain name is currently not active.
Complainant has not granted Respondent any license or other authorization to use the trademark LEGO for or in the context of the disputed domain name.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to Complainant’s trademark LEGO.
Complainant alleges that Respondent doesn’t have any rights or legitimate interests in respect of the disputed domain name. Complainant believes that it’s obvious that the Respondent has been aware of Complainant’s trademark LEGO and Complainant’s exclusive right to it. Complainant asserts that it’s the fame of the trademark that has motivated the Respondent to register the disputed domain name. Respondent has intentionally chosen a domain name based upon a registered trademark in order to generate traffic to the commercial site “www.learningthings.com” that offers a range of educational products but that is not related to LEGO. Complainant further states that there isn’t any evidence that the disputed domain name is used in connection with a bona fide offering of goods or services, or that Respondent uses the disputed domain name as a company name, or that it has any other legal right in the name LEGO.
Complainant contends that the disputed domain name was registered and used in bad faith as Respondent uses it with the purpose of diverting Internet traffic and misleading Internet users.
Complainant seeks the transfer of the disputed domain name from Respondent to Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions within the due date for Response, but in its Supplemental Filing of March 23, 2012, which the Panel has admitted, it affirms that the disputed domain name had been registered by mistake and that he had no intention to violate the Complainant’s rights in relation to its trademarks, but that he “wants to work for Lego and not against it”.
6. Discussion and Findings
Paragraph 15(a) of the Rules states that the 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”.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements in order to succeed with the Complaint:
i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and
ii) Respondent [and registrant] of the domain name has no rights or legitimate interests in respect of the domain name; and
iii) the domain name has been registered and is being used in bad faith.
Complainant carries the burden of proof of each of the above elements.
Respondent did not respond within the time period established by the Rules for the submission of a response in these proceedings, is therefore in default and in accordance with paragraph 14(b) of the Rules, “the Panel shall draw such inferences there from as it considers appropriate”.
A. Identical or Confusingly Similar
The Panel considers the disputed domain name <where-to-buy-lego.com > to be confusingly similar to Complainant’s trademark LEGO.
The only distinctive element of the disputed domain name is the trademark LEGO. The other elements, namely the word combination ”where-to-buy”, merely describe the process of searching for the goods marked LEGO and these words therefore don’t distinguish the disputed domain name from Complainant’s famous mark LEGO. Rather, by choosing this disputed domain name, the Respondent has itself indirectly shown that it considers the trademark LEGO to be extremely well-known. Otherwise, it would at least have added the word “toys” or a similar word to describe what kind of products LEGO stands for. The Respondent has apparently not considered this to be necessary, as the word LEGO stands for itself in this disputed domain name, i.e. it’s supposedly immediately understood by the public.
Since the only distinctive element of the disputed domain name corresponds to the Complainant’s trademark, and since the other elements of the disputed domain name, i.e. “where-to-buy” point to this trademark and put it in focus, the Panel finds that disputed domain name is confusingly similar to Complainant’s trademark LEGO.
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides three non-exclusive methods for determining whether or not Respondent has any rights or legitimate interests vested in the domain name.
According to paragraph 4(c) of the Policy, rights or legitimate interests in the domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared 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) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Respondent failed to timely respond and consequently to provide evidence as to whether it has rights or legitimate interests in the disputed domain name, which the Panel according to paragraph 14(b) of the Rules may consider against Respondent having rights or legitimate interests in the disputed domain name. The Panel moreover finds that Respondent’s Supplemental Filing fails to provide any basis for the finding of Respondent’s rights to, or legitimate interests in, the disputed domain name.
The Panel found no evidence which would indicate that Respondent’s use of the disputed domain name corresponds to any of the above mentioned cases in which Respondent’s rights or legitimate interests could be at hand. In particular there is no evidence that Respondent used the disputed domain name in connection with a bona fide offering of goods or services before this dispute arose. Likewise, there is no evidence that Respondent has been known by the disputed domain name. Respondent registered the disputed domain name well after Complainant registered its trademarks.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The trademark LEGO is well-known and highly reputed. The choice of the disputed domain name <where-to-buy-lego.com> shows that Respondent is aware that Complainant’s trademark LEGO enjoys great popularity and goodwill among many consumers. Otherwise, it would not have assumed that the public might seek for the specific toys manufactured by the Complainant by means of this question. The very character of the disputed domain name shows that Respondent intends to exploit the fame and goodwill of the LEGO trademark by diverting Internet traffic intended for Complainant to its website. The Panel finds Respondent is using the disputed domain name to attract, for commercial gain, Internet users to another commercial website “www.learningthings.com”. In doing so, the Respondent creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. This is likely to cause considerable harm to Complainant and its trademark. The use of this disputed domain name is misleading consumers who are seeking information about Complainant’s goods in the Internet by using the questions “where-to-buy-lego?” and who thereby arrive at Respondent’s website could assume that there is some kind of relationship between Complainant and Respondent. It is, therefore, a typical case of domain name squatting which causes substantial harm to Complainant, and which corresponds to the scenario described in paragraph 4(b)(iv) of the Policy which shall be evidence of the registration and use of a domain name in bad faith.
The statement made by the Respondent in its Supplemental Filing does not change this assessment, even if it affirms that it did not have the intention to violate the rights of the Complainant. The fact remains that the disputed domain name incorporates the trademark of the Complainant, whether the Respondent had intended this or not, and that it could easily have ascertained that the registration and use of the disputed domain name would require the Complainant’s authorization. The Respondent did also fail to respond the Complainant’s demand letter of November 15, 2011 and to the two reminders. It simply ignored the Complainant’s demands until the Complainant initiated the current UDRP proceedings. This kind of dilatory tactics fit the pattern of behaviour of domain name registrants in many cases of domain name squatting and it corroborates the finding that the Respondent has registered and used the disputed domain name in bad faith. It is therefore proper that the Respondent, albeit belatedly, has apologized to the Complainant. This expression of regret does however not cause this Panel to decide the case differently.
The Panel therefore finds that the Respondent has registered and used the disputed domain name in bad faith.
For 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 <where-to-buy-lego.com> be transferred to the Complainant.
Dated: April 16, 2012