WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lego Juris A/S v. Whois Privacy Services Pty Ltd / Dzone Inc., Yeonju Hong
Case No. D2012-2442
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 Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Dzone Inc., Yeonju Hong of Seoku, Gwangju, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <legohogwarts.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2012. On December 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 19, 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 and an amended Complaint on the same date.
The Center verified that the Complaint together with the amendment to the Complaint and 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 December 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2013.
The Center appointed Thomas D. Halket as the sole panelist in this matter on January 29, 2013. 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 following facts are alleged by the Complainant and not disputed by the Respondent. Complainant is LEGO Juris A/S. It is based in Denmark and is the owner of LEGO, and other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products. The Complainant has subsidiaries and branches throughout the world and LEGO products are sold in more than 130 countries, including Australia. The trademark LEGO is well-known, due in part to decades of advertising depicting the LEGO mark on all products, packaging, displays, advertising, and promotional materials. Indeed, the LEGO trademark and brand have been recognized as being famous. The Complainant is also the owner of more than 1,000 domain names containing the term “lego”.
The dominant part of the Domain Name comprises the word “lego”, which is identical to the registered trademark LEGO. The Respondent has not been found to have any registered trademarks or trade names corresponding to the Domain Name. Nor has it been found to have been using LEGO in any other way that would give it any rights or legitimate interests in the Domain Name. No license or other authorization has been given by the Complainant to the Respondent to use the trademark LEGO. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. Indeed, the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, but they are rather using it for a parked pay-per-click site.
5. Parties’ Contentions
(a) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(c) The Domain Name was registered and is being used by the Respondent in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: “(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.”
A. Identical or Confusingly Similar
The Domain Name is confusingly similar to the Complainant’s trademark LEGO. The addition of the suffix “hogwarts” does not impact the overall impression of the dominant part of the name, LEGO and is therefore not relevant to this Panel’s determination. It is firmly established that confusing similarity exists when well-known trademarks are paired with different kinds of prefixes and suffixes. See, e.g., Dr. Ing.h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488.
B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent’s only use of the Domain Name or of the LEGO trademark is that it uses the Domain Name for a parked pay-per-click site. These allegations have not been disputed by Respondent and this Panel accordingly accepts them. Because of the very way a parked pay-per-click site draws viewers, such use by itself alone cannot be the basis of a finding that the Respondent has any rights or legitimate interests in the Domain Name. Under these circumstances, the Panel finds the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy the following circumstances, in particular but without limitation, 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 [respondent] 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.”
It is undisputed that Respondent’s only use of the Domain Name is as a parked pay-per-click page. The Respondent is thereby using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites. Although it has not been alleged or established whether the Respondent is actually deriving revenue from the page, that is not relevant to a determination of bad faith use. Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 is exemplary on that point. The respondent there claimed that the site was created by the registrar, that he had no knowledge of the content and that he had actually not received any money from the web site. The panel rejected these arguments, holding,
[T]hese facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.
From the facts it appears that similar circumstances are present here. Since the Respondent’s use of the Domain Name thus violates paragraph 4(b)(iv) of the Policy, the Panel finds that the Domain Name has been registered and is being used 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 Domain Name <legohogwarts.com> be transferred to the Complainant.
Thomas D. Halket
Date: February 8, 2013