WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Above.com Domain Privacy / Siripong Soonklang
Case No. D2013-1795
1. The Parties
The Complainant is LEGO Juris A/S, of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Above.com Domain Privacy, of Beaumaris Australia / Siripong Soonklang of Pakkret, Thailand.
2. The Domain Name and Registrar
The disputed domain name <legoground.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2013. On October 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 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 October 23, 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 October 24, 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 October 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2013.
The Center appointed Kaya Köklü as the sole panelist in this matter on November 20, 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.
In accordance with the Rules, paragraph 11(a), and since the parties have not agreed otherwise, the Panel finds that the language of the administrative proceedings is the language of the Registration Agreement (i.e. English).
4. Factual Background
The Complainant is the owner of the famous LEGO trademark commonly known in relation to construction toys. The Complainant has subsidiaries and branches throughout the world and its products are sold in more than 130 countries.
The LEGO trademark is protected in many jurisdictions worldwide, e.g. in the European Union (registration no. 000039800 of 1996), Australia (no. B129.258 of 1960), Canada, (no. 106.457 of 1957), Denmark (no. 604-1954 of 1954), China (no. 75.682 of 1976), Japan (no. 520.470 of 1958) and the United States of America (no. 1,018,875 of 1975).
The Complainant additionally owns more than 1,000 domain names containing the trademark LEGO. The Complainant operates its main website at <lego.com>.
The disputed domain name was created on August 23, 2013.
According to the current WhoIs record, the Respondent appears to be in individual from Thailand.
As evidenced by the Complainant, the disputed domain name was used to direct visitors to a website linked to Amazon.com where various products of the Complainant’s competitors were offered for sale. At the time of the Decision, the disputed domain name was not actively used anymore.
According to the provided documents in the case file, the Complainant tried to contact the Respondent on October 1, 2013 through a cease and desist letter requesting a voluntary transfer of the disputed domain name. However, the Respondent did not reply.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant’s famous LEGO trademark as it fully incorporates the Complainant’s firm name and trademark. The Complainant argues that the additional word “ground” as a general term does not prevent a finding of confusing similarity between the disputed domain name and the LEGO trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a license or any other permission to the Respondent to use its LEGO trademark. The Complainant further asserts that the Respondent has never used and does not intend to use the LEGO trademark in connection with a bona fide offering of goods and services. It is also alleged that the Respondent has not been commonly known by the disputed domain name.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant believes that due to the wide recognition of the LEGO trademark, the Respondent must have known the Complainant and its LEGO trademark when registering the disputed domain name. Additionally, the Complainant believes that the failure of the Respondent to reply to the cease and desist letter should further indicate its bad faith use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to the trademark 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may as appropriate accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
Furthermore, it is noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the LEGO trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding the mark LEGO. As demonstrated in the Complaint, the Complainant is the owner of a large number of word and figurative LEGO trademarks.
Although not identical, the disputed domain name fully incorporates the Complainant’s LEGO trademark.
The disputed domain name differs from the LEGO trademark only by the addition of the generic term “ground”. In the Panel’s view, the additional word “ground” does not negate the confusing similarity between the Complainant’s trademark and the disputed domain name. The Panel finds that the incorporation of the term “ground” does not create a new distinctiveness separate from the Complainant’s LEGO trademark.
The Panel further notes that the mere addition of the generic top-level domain name (gTLD) “.com” has no distinguishing effect and may as a general principle not to be considered when assessing identity or confusing similarity between a domain name and a trademark (in line with prior UDRP panels concerning the use of a gTLD within disputed domain names, cf. V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Google Inc. v. Nijat Hassanov, WIPO Case No. D2011-1054).
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements in paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement by providing uncontested prima facie evidence that the Respondent has no trademark, valid license or any similar right to use the Complainant’s LEGO trademark in the disputed domain name.
The Panel further finds that the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
The Panel also believes that the Respondent is not commonly known by the terms “lego” and “ground” or any other combination thereof.
Furthermore, the Panel is prepared to find that the Respondent is not using the disputed domain name in a bona fide manner. The Panel is convinced that the Respondent must have been aware of the Complainant’s registered trademark, and that the Respondent has deliberately used the LEGO trademark in the disputed domain name in order to divert Internet users seeking information on the Complainant or on its products to another website in order to gain illegitimate commercial benefit. The Panel believes that this obviously does not constitute a bona fide offering of services under the Policy.
Based on the findings above, the Panel believes that in the present case the Complainant has made a prima facie case and the evidence available in the case file does not provide a basis for the Panel to find any rights or legitimate interests of the Respondent.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
First, the Panel believes that the Respondent must have been well aware of the LEGO trademark when it registered the disputed domain name on August 23, 2013. At the date of registration, the famous LEGO trademark was already established and known worldwide, including in Thailand, where the Respondent appears to be located.
Second, the Panel believes that the Respondent has registered and used the disputed domain name in bad faith by attempting to trade on the goodwill and reputation of the Complainant’s trademark. The Panel is convinced that the Respondent’s main purpose is to create a likelihood of confusion among customers for commercial gain or any other illegitimate benefit.
Furthermore, the Panel finds that the Respondent’s failure to respond to the Complaint’s cease and desist letter as well as to the Complaint as such additionally supports the conclusion that it has registered and used the disputed domain name in bad faith in order to mislead Internet users and gain commercial profit.
Overall, the Panel believes that the above demonstrates a typical cybersquatting case.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied 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 <legoground.com> be transferred to the Complainant.
Date: December 3, 2013