The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Tech Domain Services Private Limited of Mumbai, Maharashtra, India.
The disputed domain name <legoshopping.com> is registered with Lead Networks Domains Pvt. Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2009. On December 1, 2009, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On December 4, 2009, Lead Networks Domains Pvt. Ltd. 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 December 4, 2009 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 December 7, 2009. The Center verified that the Complaint together with the amendment 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 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 28, 2009.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on January 12, 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.
The Complainant, LEGO Juris A/S, is a Danish corporation greatly recognized worldwide for its construction toys.
The Complainant refers a list of trademarks and applications including the word “lego” around the world, including India.
Also, the Complainant owns more than 1,000 domain names composed by the word “lego” associated to other expressions or not.
The Complainant's trademark LEGO figures as number 8 of the most famous trademarks in the Official Top 500 Superbrands 2009/10, provided by Superbrands UK.
The disputed domain name is <legoshopping.com> and it was registered on July 18, 2005.
The Panel accessed the webpage placed at the disputed domain name on January 15, 2010. The website, entitled “LEGOSHOPPING.COM”, consists of a pay-per-click landing page, displaying sponsored links for third party websites that offer products and services in competition with the Complainant.
The Complainant makes the following contentions:
(i) The Complainant is the owner of several trademark registrations worldwide and of more than 1,000 domain names containing the expression “lego”. The Complainant has been continuously using the LEGO brand since 1953. Over the years, the business of producing and selling construction toys has grown remarkably, so that in 2008 the LEGO Group achieved $1.8 billion in revenue. The Complainant has subsidiaries and branches all over the world and the LEGO products are sold in more than 130 countries. The LEGO brand is one of the most known trademarks around the world, due in part to decades of extensive advertising.
(ii) The disputed domain name is confusingly similar to the Complainant's trademark, because it comprises the word “lego”, which is identical to the registered trademark LEGO. The addition of the suffix “shopping” and of the top-level domain “.com” is irrelevant to distinguish the domain name from the registered trademark.
(iii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been commonly known by the expression “lego”. The Complainant has not authorized or licensed the Respondent to use any of its trademarks in any way. It is unlikely that the Respondent would ignore Complainant's trademark LEGO at the time of registration. The Respondent is not using the domain name in connection with a bona fide offering of goods and services and has registered the contested domain name in order to generate traffic to its website and to get profits from a sponsored links scheme.
(iv) The Respondent has registered and is using the disputed domain name in bad faith. The Respondent has chosen to include the expression “lego” as part of the contested domain name due to its considerable value and goodwill. The Respondent has not answered to the Complainant's efforts to amicably solve the current issue. In addition, the disputed domain name is connected to a website containing sponsored links. Consequently, the Respondent is using the disputed domain name to intentionally attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant's mark.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent 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.
Regardless of the fact that the Respondent failed on submitting a formal reply, the Panel shall consider whether the requirements of the Policy have been met.
The Panel has no doubt that the LEGO trademark is connected with the Complainant and has reached a well-known status.
The Complainant annexed a list of trademark registrations and/or applications including the expression “lego” in several countries, including India.
The trademark LEGO is wholly encompassed within the disputed domain name, which also includes the word “shopping”.
The addition of the suffix “shopping” it is not sufficient to refute the similarity between the disputed domain name and the Complainant's trademark, required under paragraph 4(a)(i) from the Policy.
Furthermore, in a very similar previous WIPO UDRP case, concerning the domain name <lacoste-shopping.com>, the panel stressed that “Compared to the Trademark, the Domain Name <lacoste-shopping.com> completely reproduces the former with the only difference being the mere addition of the generic term “shopping” and the generic top-level term “.com”. However, neither of these two terms is sufficient to differentiate the disputed domain name from the Trademark. Instead, the addition of the generic term “shopping” is more likely to mislead Internet users into believing that the sites linked to the Domain Name are the official sites of the Complainant or in some way associated with the Complainant, when in fact this is not”. (Lacoste Alligator S.A. v. China Bizseas, WIPO Case No. D2009-0493)
Moreover, in another previous case, concerning the domain name <harrodshomeshopping.com>, the panel concluded that “addition of the element “homeshopping” to the element “harrods” does not prevent this likelihood of confusion, as the element “homeshopping” is undistinctive and only suggests that the website or other on-line presence behind the domain name enables the public to purchase goods (from Complainant's department store) on-line”. (Harrods Limited v. Dennis Dorgan, WIPO Case No. D2001-1165).
Therefore, the Panel finds the disputed domain name to be confusingly similar to the Complainant's trademark.
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is 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 at issue.
Based on the Respondent's default and on the prima facia evidence in the Complaint, it is presumed that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed the trademark to the Respondent.
The Respondent is not commonly known by the domain name, which includes a widely well-known trademark.
The domain name - including the Complainant's well-known trademark - is currently been used in connection with a pay-per-click parking page, with commercial links to third party websites offering even competing products (toys). This use cannot be understood to be non-commercial or fair.
As stressed in a previous WIPO UDRP decision, “The Respondent's use of the disputed domain name with the intention to attract Internet users for commercial gain is established by the sponsored links and pop-up advertisements on its website. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is confusingly similar to the VILLEROY & BOCH trademarks and the Complainant's own domain names”. (Akbank Turk A.S. v. Mustafa Ismet Cinar, WIPO Case No. D2009-0642)
Consequently, the Panel is satisfied that Complainant has proven the second element of the Policy.
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The registration of the disputed domain name occurred in 2005, when the Complainant's trademark LEGO was already well-known around the world. Therefore, it is not feasible that the Respondent could ignore the Complainant's reputation and business when it registered the contested domain name.
Furthermore, the Panel is convinced that the addition of the word “shopping” to the trademark LEGO was intentionally made in order to convince consumers that the website is an official LEGO store, creating a likelihood of confusion as to the source of the services offered under the contested domain name.
Also, the disputed domain name is being used in connection with a pay-per-click landing page, displaying sponsored links to third party websites that offer competing products. In doing so, the Respondent:
(i) reinforces the likelihood of confusion with the Complainant's trademark;
(ii) obtains click-trough revenues from this practice; and
(iii) deprives the Complainant from selling its products to someone who is clearly looking for it and, at the same time, promotes products offered by competitors.
For reference on the subject see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Accordingly, the Panel finds that the Complainant has proved that the Respondent registered and is using the disputed domain name in bad faith, satisfying the third element of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <legoshopping.com> be transferred to the Complainant.
Dated: January 22, 2010