WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Domains By Proxy, LLC/ Hu Xiaoping
Case No. D2013-0109
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America/ Hu Xiaoping of Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <flashlego.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2013. On January 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2013, the Registrar 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 January 18, 2013 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 January 18, 2013.
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 January 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2013.
The Center appointed David Stone as the sole panelist in this matter on February 19, 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 Complainant LEGO Juris A/S is a leading global manufacturer of toys under the trade mark LEGO. LEGO products are sold in more than 130 countries, including in the United States of America and in Canada where the Respondents are respectively located. The Complainant owns trade mark registrations around the world for the mark LEGO in relation to various goods and services.
The Complainant also owns more than 1000 domain names containing the term LEGO.
The disputed domain name <flashlego.com > was registered on December 10, 2012. The disputed domain name <flashlego.com> directs to a “parked pay-per-click” website, containing sponsored links to other websites.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to its registered trade mark LEGO. The disputed domain name incorporates the Complainant’s mark in its entirety with the addition of the prefix “flash”. The Complainant submits that the addition of “flash” will not have any impact on the overall impression of the dominant part of the disputed domain name.
The Complainant contends that there is no evidence to suggest that the Respondent has been using LEGO in any way that would give it legitimate interests or rights in the disputed domain name, and consequently that the Respondent may not claim any rights established by common usage. The Complainant further contends that the Respondent is not in any way affiliated with the Complainant or authorised or licensed to use the LEGO trade mark.
The Complainant submits that LEGO is a well-known trade mark worldwide, and that it is highly unlikely that the Respondent would not have known of the Complainant’s rights in the trade mark at the time of the registration.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith.
The Respondent is using the disputed domain name to generate traffic and income through a site containing sponsored links. Further evidence of the Respondent’s bad faith is represented by the failure to respond to the cease and desist letter sent by the Complainant on January 3, 2013.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 provided evidence that it has prior registered trade mark rights in the mark LEGO around the world, including in the United States of America and Canada. From the evidence supplied, the Panel finds that LEGO is a well-known mark, at least in relation to toys. Several other UDRP panels have made similar findings: see LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680.
The disputed domain name incorporates the Complainant’s trade mark in its entirety with the prefix “flash”. Previous UDRP panels have held that adding common terms to a registered trade mark and registering the result as a domain name does not mitigate the confusing similarity between the domain name and the mark: see LEGO Juris A/S v. Thomas Plaut, WIPO Case No. D2012-1822; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Deutsche Telekom AG v. Gems N Pearls International Holding, WIPO Case No. D2005-0820. In any event, Flash is also a LEGO brand superhero minifigure. The confusion is therefore amplified by the addition of “flash” rather than reduced.
Accordingly, the Panel finds that the Complainant has established the first element under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Guidance regarding establishing rights or legitimate interests is provided in paragraph 4(c) of the Policy.
Three circumstances are identified that would establish rights or legitimate interests:
(i) bona fide prior use;
(ii) common association with the domain name; and
(iii) legitimate noncommercial use.
The Complainant has made a prima facie case that none of these circumstances applies. The Respondent did not exercise its right to respond substantively in these proceedings. Thus, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other argument supporting rights or legitimate interests.
Consequently, the Panel finds that the Complainant has established the second element under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides guidance regarding establishing bad faith.
Four non-exhaustive circumstances are identified where the respondent’s intention in registering a domain name may be evidence of bad faith. These intentions may be summarized as follows:
(i) to sell the domain name to the rights-holder at a profit;
(ii) to prevent the rights holder from registering a domain name;
(iii) to disrupt the business of a competitor; and
(iv) to divert Internet traffic for commercial gain.
Given that the LEGO trade mark is well-known, the Panel finds that in all likelihood the Respondent would have been aware of the Complainant’s trade mark at the time the disputed domain name was registered. Previous UDRP panels have made a finding of bad faith where the complainant’s trade mark was shown to be well-known or in wide use at the time of registration of the disputed domain name (SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
The website at the disputed domain name is a “parked” website. In previous UDRP cases, under specific circumstances, the “parking” of a web site may be sufficient to demonstrate a finding of bad faith; see Serta Inc. v Charles Dawson, WIPO Case No. D2008-1474; LEGO Juris A/S v. Shu Lin/Transure Enterprise Ltd/Above.com Domain Privacy, WIPO Case No. D2010-1648.
The website at the disputed domain name contains “pay-per-click” links to various websites, some of which are based on the trade mark name. The Panel finds that this diverts Internet traffic from the Complainant’s websites, contrary to the Policy.
Applying the comments of the panelist in Lego Juris A/S v. Ni How, WIPO Case No. D2012-2218, this is not a bona fide use within the meaning of the Policy. The Panel therefore finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the web site at the disputed domain name (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant's mark as per paragraph 4(b)(iv) of the Policy.
The Respondent’s failure to respond to the Complainant’s cease and desist letter is an additional indication of bad faith (News Group Newspapers Limited and News Network Limited v Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc v Azumano Travel, WIPO Case No. D2000-1598; America Online Inc. v Antonio R. Diaz., WIPO Case No. D2000-1460).
Accordingly, the Panel finds that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
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 <flashlego.com> be transferred to the Complainant.
Date: February 22, 2013