WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Above.com Domain Privacy / Domain Admin, Huanglitech
Case No. D2010-0908
1. The parties
Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Corporate Brand Services AB, Sweden.
Respondents are Above.com Domain Privacy / Domain Admin, Huanglitech of Beaumaris, Victoria, Australia and Shenzhen, People’s Republic of China.
2. The Domain Names and Registrar
The disputed domain names <creatorlego.com>, <legoclubtv.com>, <legopowerminer.com>, and <shop-lego.com> are registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2010. On June 3, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain names. On June 4, 2010, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 7, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On June 9, 2010, Complainant suspended the proceedings. Complainant filed an amendment to the Complaint and request to reinstitute the proceedings on June 28, 2010. 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 Respondent of the Complaint, and the proceedings commenced on June 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 20, 2010.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on August 2, 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.
4. Factual Background
Complainant is the owner of the LEGO mark, used in connection with construction toys. Complainant and its licensees, through their predecessors, began use of the LEGO mark in the United States (“U.S.”) in 1953. Complainant has subsidiaries and branches throughout the world, and products bearing the LEGO brand are sold in more than 130 countries, including Australia, where Complainant’s subsidiary LEGO Australia was established in 1962.
Complainant is the owner of numerous registered trademarks worldwide, including in Australia, for marks including the mark LEGO for use in connection with toys, books, computer software, computer games and other products. Complainant attached to the Complaint as Annex 6 an extensive list of its trademark registrations. Complainant is also the owner of more than 1,000 domain names containing the term LEGO, including <lego.com>.
The disputed domain names were all registered in October 2009. On December 10, 2009, Complainant sent a cease and desist letter to the registrant named in the WhoIs information. Complainant received no response despite two reminders sent in January 2010. During this period, the WhoIs information changed to reflect the registrar, Above.com’s, contact details.
5. Parties’ Contentions
Complainant contends that the disputed domain names incorporate Complainant’s mark in its entirety, are identical to and/or confusingly similar to Complainant’s trademarks, that Respondent has no rights or legitimate interests in the disputed domain names and that the disputed domain names were registered and are being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion And Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to 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.”
A. Identical or Confusingly Similar
Complainant has demonstrated that it owns strong rights in the trademark LEGO. The disputed domain names incorporate Complainant’s trademark in its entirety. The addition of the words or phrases “clubtv,” “powerminer,” “shop,” and “creator,” do not avoid a finding of confusing similarity. Indeed, Complainant markets a product line named “Power Miners,” maintains an online shop at <lego.com> and also maintains a fan club named “LEGO Club”. Moreover, the addition of the top-level domain “.com” does not add any distinctive subject matter for the purpose of evaluating confusing similarity.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Complainant contends that Respondent is not a franchisee, affiliated business or licensee of Complainant, and that Respondent is not an authorized agent of Complainant. Complainant further contends that it has not authorized Respondent to register the disputed domain names or to otherwise use Complainant’s marks.
The available record suggests that Respondent is not and has not been commonly known by the disputed domain names. Respondent is operating websites at the disputed domain names that simply generate sponsored links to Complainant’s website and those of its competitors, selling services in direct competition with Complainant. Respondent is clearly attempting to confuse consumers by use of Complainant’s trademark in the disputed domain names to lure Internet users to the websites, and thereby benefit commercially from “click-through” advertising fees. Such use does not constitute a bona fide, legitimate use of the disputed domain names.
Accordingly, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed 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 the complainant, for valuable consideration in excess of the documented out of pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent’s website 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 the respondent’s website or location of a product or service on the respondent’s website or location.
Respondent was most likely aware of Complainant’s trademark rights at the time of registering the disputed domain names. The LEGO mark is a famous mark, and it is highly likely that this fame motivated Respondent to register the disputed domain names. This is supported by the fact that Respondent is offering links on the website at the disputed domain name to Complainant’s website and to websites of Complainant’s competitors.
The submitted evidence demonstrates that Respondent is deliberately trading off the goodwill associated with Complainant’s marks and Internet traffic intended for Complainant’s website for Respondent’s commercial gain by creating a likelihood of confusion with Complainant’s mark. Such use evidences Respondent’s bad faith.
The Panel finds that Respondent has registered and used the disputed domain names in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <creatorlego.com>, <legoclubtv.com>, <legopowerminer.com>, and <shop-lego.com> be transferred to Complainant.
Lynda J. Zadra-Symes
Dated: August 9, 2010