WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Above.com Domain Privacy / Belcanto Investment Group Limited
Case No. D2013-0626
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondents are Above.com Domain Privacy of Victoria, Australia; and Belcanto Investment Group Limited of Charlestown, Nevis, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <friendslego.com> (the "Domain Name") 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 April 5, 2013. On April 5, 2013, the Center transmitted a request by email to the Registrar asking for registrar verification in connection with the Domain Name. On April 9, 2013, the Registrar transmitted its verification response to the Center by email, disclosing the registrant and the contact information for the Domain Name which differed from the named Respondent and the contact information in the Complaint. The Center sent an email to the Complainant on April 9, 2013, providing it with the information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Center also sent an email to the Complainant on April 9, 2013 regarding the confirmation on communications, which the Complainant confirmed on the same date. The Complainant filed an amendment to the Complaint on April 9, 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 April 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2013. On April 16, 2013 the Center received an informal email from the Respondent. On April 16, 2013 the Center sent notification of a possible settlement communication to the parties. On April 16, 2013 the Complainant confirmed its intention to suspend the proceedings in an email. The proceedings were suspended from April 16, 2013 until May 16, 2013. On May 15, 2013 the Complainant confirmed its intention to reinstate the proceedings in an email. The proceedings were reinstated on May 16, 2013 and the new due date for the Response was May 31, 2013. The Respondent did not submit any further formal response. Accordingly, the Center notified the parties by email on June 3, 2013 that it would commence the Panel appointment process.
The Center appointed Geert Glas as the sole panelist in this matter on June 7, 2013. The Panel found that it was properly constituted. The Panel 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 is LEGO Juris A/S, a global manufacturer of children's construction toys and other products under the brand name LEGO.
The Complainant is the owner of the trademark LEGO and other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products throughout the world, including Australia, where Above.com Domain Privacy is located, and in Saint Kitts and Nevis, where Belcanto Investment Group Limited is located.
The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in Australia and elsewhere.
The Complainant's trademark LEGO is one of the most recognized trademarks in the world. According to Superbrands UK, who compiled the official top 500 Superbrands for 2012, LEGO is ranked No. 31 of the most famous trademarks and brands in the world.
The Complainant also owns more than 1,000 domain names containing the term “Lego”, including the domain names <friends.lego.com> and <legofriends.com>.
The Domain Name was registered on February 12, 2013. According to the evidence submitted by the Complainant, the Domain Name has been used as a website for a parked pay-per-click site featuring sponsored links to third-party commercial websites.
The Complainant sent a cease and desist letter to the Respondent on March 11, 2013, but did not receive any response.
5. Parties’ Contentions
The Complainant requests the transfer of the Domain Name on the following grounds:
(i) the Domain Name is identical or confusingly similar to a trade or service mark in which the Complainant has rights
The Complainant contends that the Domain Name is confusingly similar to its well-known trademark LEGO. The fact that the trademark LEGO is well-known has been confirmed in numerous previous UDRP panel decisions.
The Complainant submits that, by using the trademark LEGO as a dominant part of the Domain Name, there is a considerable risk that the public will perceive that the Respondent's Domain Name is owned by the Complainant or will think that there is some kind of commercial relationship with the Complainant. The term “friends” does not detract from this overall impression.
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant contends that it has never licensed or authorized the Respondent to use its LEGO trademark and that the Respondent is not an authorized dealer in the Complainant's products.
The Respondent is neither known by the Domain Name, nor has the Complainant found any evidence that would suggest that the Respondent has been using LEGO in a way that would give it legitimate rights in the name.
Moreover, the Respondent is not using the Domain Name in connection with a bona fide offering of goods and services. It has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a parked pay-per-click website. The Respondent is misleading Internet users to accessing commercial sites and is therefore tarnishing the trademark LEGO.
(iii) the Domain Name was registered and is being used in bad faith
The Complainant contends that:
- the Respondent is using the Domain Name to intentionally attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its websites;
- it is highly unlikely that the Respondent was not aware of the Complainant's rights in this well-known trademark at the time of registration; and
- the Respondent's failure to respond to Complainant's cease and desist letter indicates registration and use in bad faith.
The Complainant requests that the Domain Name be transferred to the Complainant.
The Respondent has not responded to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant proves each and all of the following three elements in order to prevail in these proceedings:
(i) the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of numerous registered trademarks for the name “Lego” throughout the world. The fact that the LEGO trademark is well-known has been confirmed in several previous UDRP panel decisions.
The Domain Name incorporates the Complainant's trademark in its entirety and differs from Complainant's trademark only in that the term "friends" has been added. Several UDRP panels have held that wholly incorporating a complainant's registered trademark in a domain name may be sufficient to establish confusing similarity for the purposes of the Policy, particularly where the trademark is highly recognizable and famous (see, e.g., AT&T Corp. v. William Gormally, WIPO Case No. 2005-0758; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. 2001-0903; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). In addition, it is well-established that adding a generic or descriptive term to a registered trademark does not prevent the domain name from being confusingly similar to that registered trademark (see, e.g., Microsoft Corporation v. J. Holiday Co, WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; and Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694).
In the case at hand, the Panel finds that adding the generic word “friends” to the LEGO trademark and registering the resulting Domain Name does not lessen the confusing similarity between the Domain Name and the LEGO trademark (see, e.g., Lego Juris A/S v. Thomas Plaut , WIPO Case No. D2012-1822; and LEGO Juris A/S v. SAKCHAI SRION, WIPO Case No. D2012-0604). Because the Complainant offers several of its products under the name "Lego friends", the addition of the word “friends” is even more likely to heighten this confusion and to cause consumers to believe that the Domain Name is effectively affiliated with, linked to or connected to the Complainant.
The addition of the generic top level domain ".com" is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the Complainant's trademark and the Domain Name (see, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; and Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382).
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
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the policy (see, e.g., Document Technologies Inc. V. International Electronic Communications Inc., WIPO Case No. D.2000-0270 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”, paragraph 2.1).
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
The Respondent has failed to respond to the Complaint and has therefore failed to provide any evidence of its rights or legitimate interests in the Domain Name.
Based on the evidence submitted by the Complainant, the Panel finds that there is no evidence that the Respondent has been commonly known by the Domain Name or has been authorized to use the LEGO trademark.
Moreover, previous UDRP panel decisions have confirmed that using a domain name to generate traffic to a pay-per-click parking website, thereby diluting or tarnishing the reputation of a complainant's trademark, cannot be considered a bona fide offering of goods and services, or a noncommercial or fair use of the domain name (see, e.g., Florida Department of Management Services v. Anthony Gorss, WIPO Case No. D2009-1194; Telekom AG v. Dong Wong, WIPO Case No. D2005-0819; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
Based on the evidence provided by the Complainant, the Panel finds that the second element under paragraph 4(a)(ii) of the Policy has been established.
C. Registered and Used in Bad Faith
(i) Registered in bad faith
Given that the LEGO trademark is well-known and widely used, the Panel is of the view that it is highly unlikely that the Respondent did not know of the Complainant's trademark at the time the Domain Name was registered.
Several UDRP panels have ruled that bad faith is established where a complainant's trademark has been shown to be well-known or in wide use at the time of registering a domain name (see e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; and Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435).
(ii) Used in bad faith
As the Domain Name was selected and used by Respondent by way of a pay-per-click website, the Panel finds that the Respondent's attempt thereby is to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's trademark.
The Panel concurs with the understanding of several other UDRP panels that the use of a domain name to direct traffic to a website that offers sponsored links to other websites is evidence of bad faith (see Volvo Trademark Holding AB v. Unais, Inc., WIPO Case No. D2005-0556). It does not matter whether the respondent is the beneficiary of these commercial gains or whether the commercial gains accrue elsewhere. It is sufficient that a third party stands to reap the profits of the respondent's wrongful conduct (see Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912).
(iii) Failure to respond to the cease and desist letter
The Respondent's failure to respond to the Complainant's cease and desist letter (and the subsequent reminders) is an additional indication of bad faith to this Panel (see News Group Newspapers Limited and News Network Limited v. Momm Amed la, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460).
In light of the above, the Panel concludes that the Domain Name was registered and is being used in bad faith.
Accordingly, the Panel finds that the third element under paragraph 4(a)(iii) of the Policy has been established.
For all the above reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <friendslego.com> be transferred to the Complainant.
Date: June 21, 2013