WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Above.com Domain Privacy / Ready Asset
Case No. D2014-0727
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 / Ready Asset of Xiamen, China.
2. The Domain Name and Registrar
The disputed domain name <legopack.com> is registered with Above.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 5, 2014. On May 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 2014, 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 May 9, 2014, 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 May 9, 2014.
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 May 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 2, 2014.
The Center appointed Gonçalo M.C. Da Cunha Ferreira as the sole panelist in this matter on June 6, 2014. 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 the owner of the leading global manufacturer of toys under the trade mark LEGO and also of all other trademarks used in connection with it.
Today, LEGO has been registered as trademark in numerous countries all over the world, including in Australia and China, where the Respondent is located.
The Complainant also owns more than 2,400 domain names containing the term "lego", including the country code top-level domain (ccTLD) for Australia ".au" and maintains an extensive web site under the domain name <lego.com>, its official website.
The trademark LEGO is globally recognized and the Complainant has received significant acknowledgements. For instance, in 2000, Fortune magazine and the British Association of Toy Retailers named LEGO the Toy of the Century, and in 2014, according to Consumer Superbrands rating, LEGO was the winner of the category Child Products - Toys and Education.
The disputed domain name <legopack.com> directs Internet users to a 'parked' website that contains sponsored links to other websites: many lead to websites selling the Complainant's products and other lead to websites not connected to the Complainant at all. Furthermore, at the date of this decision, the Panel has accessed <legopack.com> and found that depending on the selected language – Brazilian Portuguese for instance – it leads to local websites, also selling the Complainant's products and other lead to websites not connected to the Complainant at all.
5. Parties' Contentions
The Complainant submits that the disputed domain name <legopack.com> reproduces in its entirety the Complainant's mark LEGO, adding the word "pack".
The Complainant holds exclusive rights in the trademark LEGO and only the Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in Australia and China – where the Respondent is located - and elsewhere.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant's world famous trademark LEGO: the addition of the word "pack" strongly associates with the Complainant's products, given the fact that the trademark LEGO and the word "pack" are often used together since the word pack is short for "package". Also, the addition of the Top-Level Domain ".com" is irrelevant in terms of differentiating the disputed domain name.
The Complainant has not found anything that would suggest that the Respondent has been using LEGO in any way that would give them any rights in the name, specifically any registered trademarks or trade names corresponding to the disputed domain name. The Complainant also states that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith.
Firstly, it is highly unlikely that the Respondent could claim to have been using the word "lego" without being aware of the Complainant's legal rights at the time of the registration considering that the LEGO trademark and brand have been recognized as being famous globally.
Secondly, the Complainant submits that the Respondent has intentionally chosen a domain name based on a famous registered trademark, taking advantage of its strong reputation, exploiting the goodwill and the image of the trademark, and is using the disputed domain name in order to generate traffic and income through a parked pay per click site. The use of the trademark LEGO as a dominant part of the disputed domain name turns it likely for persons seeing the disputed domain name, even without being aware of the content, to think that the disputed domain name is in some way connected to the Complainant ("initial interest confusion").
Finally, the Complainant argues that the Respondent's bad faith is also denoted by the failure to respond to the cease and desist letter sent by the Complainant on March 11, 2014 followed by two reminders, in which it was requested a voluntary transfer of the disputed domain names and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses).
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights". Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has "no rights or legitimate interests in respect of the domain name". Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the "domain name has been registered and is being used in bad faith". Policy, paragraph 4(a)(iii).
A. Identical or Confusingly Similar
In the Panel's view, there are no doubts that the disputed domain name is confusingly similar to the Complainant's well-known mark LEGO.
As alleged by the Complainant, the disputed domain name is confusingly similar to the Complainant's trademark because it fully incorporates said mark with the mere addition of the generic term "pack". Indeed, the addition of the word "pack", often used together with the trademark LEGO strongly increases the similarity and confusion with LEGO.
Furthermore, the addition of the generic Top-Level Domain (gTLD) ".com" being a technical requirement of the registration of a domain name, does not serve as a distinguishing feature for purposes of paragraph 4(a)(i) of the Policy.
It has been held by previous UDRP panels that the addition of a generic term does not limit the risk of confusion between a complainant's trademark and a disputed domain name (Compagnie Générale des Etablissements Michelin and Michelin Recherche et Technique S. A. v. Eijiobara Obara, WIPO Case No. D2012-0047; Merck Sharp & Dohme Corp. v. GlobalCom, Henry Bloom, WIPO Case No. D2011-0700; and Fluor Corporation v. KMLOLO, WIPO Case No. D2010-0377).
It is also well established in previous UDRP cases that, where a domain name incorporates a complainant's trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piercing, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
Accordingly, the requirement of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
Following Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666 "in order for a complainant to prove that a respondent has no rights or legitimate interests in the Disputed Domain Name, UDRP case law has consistently held that it is sufficient for a complainant to prove a prima facie case (see amongst others, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown, the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the panel."
In this case, the Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the LEGO trademark, or a variation thereof. The Respondent did not reply to the Complainant's contentions to demonstrate its rights or legitimate interests, nor did it reply to the cease and desist letter sent by the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
LEGO is undoubtedly a well-known trademark, recognized internationally and for generations. The Panel considers it highly unlikely that the Respondent was not aware of the pre-existing rights of the Complainant when registering the disputed domain name.
The disputed domain name resolves to a 'parked' website that contains sponsored links to other websites, many leading to websites selling the Complainant's products and other leading to websites not connected to the Complainant at all. This, along with not having replied to any of the three letters sent by the Complainant, clearly suggests bad faith on the part of the Respondent.
Having regard to all the circumstances, the Panel finds that there is evidence of bad faith on the part of the Respondent (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Accordingly, the Panel finds that the requirements of bad faith registration and use have been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panelist orders that the disputed domain name <legopack.com> be transferred to the Complainant.
Gonçalo M.C. Da Cunha Ferreira
Date: June 20, 2014