WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Manohar Khaira
Case No. D2017-1834
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Manohar Khaira of Euless, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <legolandvacationrentals.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 September 21, 2017. On September 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 27, 2017. On the same day an email was received from the Respondent which led to the suspension of the proceeding. The proceedings were recommenced on October 31, 2017 and in accordance with the Rules, paragraph 5, the due date for Response was November 13, 2017. The Respondent did not submit any response. The Center notified the Respondent of the commencement of Panel Appointment Process on November 21, 2017.
The Center appointed Steven A. Maier as the sole panelist in this matter on November 28, 2017. 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 is a company incorporated in Denmark. It is the manufacturer of construction toys under the name and mark LEGO and is concerned in the operation of theme parks under the name and mark LEGOLAND.
The Complainant is the registrant of numerous trademarks for the names LEGO and LEGOLAND throughout the world. The registrations for the latter mark include, for example:
- United States trademark number 2334535 for the word mark LEGOLAND, registered on March 28, 2000 in Classes 35, 41 and 42;
- European Union Trade Mark number 000054205 for the word mark LEGOLAND, registered on May 10, 1998 in Classes 9, 16, 25, 28, 41 and 42, for goods and services which include "temporary accommodation".
The disputed domain name was registered on May 13, 2017.
The Complainant has provided evidence by way of screenshots that the disputed domain name has been used to resolve to a website at "www.oceansidecoastalvacationrental.com" which appeared to offer vacation properties in Southern California for rental.
According to the Center's file, the Respondent indicated in response to the Complaint in this proceeding that it would relinquish the disputed domain name in exchange for "reasonable and fair compensation." The Complainant offered to pay the Respondent $20 in respect of registration fees, but the Respondent replied "I expect a generous offer not just $20."
5. Parties' Contentions
The Complainant submits that its brands "Lego" and "Legoland" are well known throughout the world. It states that its products are sold in over 130 countries and that the LEGOLAND theme parks receive over 1.4 million visitors per year. The Complainant states that, in addition to its extensive trademark rights, it is the owner of almost 5,000 domain names containing the term "lego" and more than 400 containing the term "legoland", including <legolandvacations.com>. The Complainant submits that its marks are among the best known in the world and provides evidence of significant brand recognition and awards relating to the "Lego" name.
The Complainant states that it maintains a website at "www.legoland.com" and that it uses the LEGOLAND trademark for services including hotels.
The Complainant submits that the disputed domain name is identical or confusingly similar to its LEGO and LEGOLAND trademarks. The Complainant contends that the disputed domain name contains both the trademarks LEGO and LEGOLAND together with the descriptive terms "vacation rentals", which is apt only to increase the likelihood of confusion in view of the Complainant's stake in the operation of LEGOLAND theme park and its use of that trademark in connection with services including hotels.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never authorized the Respondent to use the marks LEGO or LEGOLAND and has found no evidence that the Respondent has ever operated under either of those names. The Complainant submits that the Respondent is not making any bona fide use of the disputed domain name, because it is using it to direct to a website that competes with the Complainant's business and also because it does not provide any disclaimer indicating that the website has no connection with the Complainant.
The Complainant alleges that the disputed domain name was registered and is being used in bad faith. The Complainant says that its LEGO and LEGOLAND trademarks are widely known and that the Respondent must have been aware of them when it registered the disputed domain name. The Complainant argues that the Respondent misleadingly uses the disputed domain name for a website that offers rental properties in competition with the Complainant's activities and that it thereby disrupts the Complainant's business. The Complainant also contends that, by using the disputed domain name, the Respondent intentionally attracts Internet users to its website for commercial gain by misrepresenting a connection with the Complainant. Finally, the Complainant refers to the correspondence with the Respondent referred in in section 4 above and asserts that the Respondent's conduct amounts to further evidence of bad faith.
The Complainant requests the transfer of the disputed domain name.
Apart from the email of November 27, 2017 (forwarded again on November 30, 2017), the Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainant must establish that each of these elements is present, even in a case such as there where the Respondent has not responded to the Complaint.
A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in the marks LEGO and LEGOLAND and the Panel finds these marks to be widely recognized by the public and distinctive of the Complainant and its goods and services, including the LEGOLAND theme parks. The disputed domain name comprises the term "legoland", which includes one, and is the same as the other, of the Complainant's trademarks, together with the term "vacation rentals" which is descriptive of a service. In the view of the Panel, the addition of this term is not effective to distinguish the disputed domain name from the Complainant's trademarks LEGO and LEGOLAND. Furthermore, since the Complainant's trademark LEGOLAND is registered and has been used for purposes including accommodation services, the confusing nature of the disputed domain name is enhanced. In the circumstances, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant's submissions set out above give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this proceeding and has not, therefore, submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel concludes that the Respondent has no rights or legitimate interests in respect of any of the disputed domain name
C. Registered and Used in Bad Faith
The Panel accepts the Complainant's evidence that its trademarks LEGO and LEGOLAND are widely known to the consuming public and also that the Complainant has used the mark LEGOLAND in connection with accommodation services. The Respondent has provided no explanation for its choice of the disputed domain name, which the Panel finds will inevitably be associated by a significant number of Internet users with the Complainant and its theme park services. The Panel infers in the circumstances that the Respondent registered the disputed domain name in the knowledge of the Complainant's trademarks and with the intention of unfairly taking advantage of the Complainant's goodwill associated with those marks by misrepresenting that any website linked to the disputed domain name was owned, operated or endorsed by the Complainant.
The Panel further finds that the Respondent has used the disputed domain name for the purpose of a website offering vacation rentals in Southern California that has no connection whatsoever with the Complainant. In the view of the Panel, therefore, the Respondent has used the disputed domain name misleadingly to attract Internet users to that website for commercial gain by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent's website (paragraph 4(b)(iv) of the Policy). Further or in the alternative, the Panel infers from the correspondence between the parties that the Respondent registered the disputed domain name with the intention of selling the disputed domain name to the Complainant for a sum in excess of its documented out‑of-pockets costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy).
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
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, <legolandvacationrentals.com> be transferred to the Complainant.
Steven A. Maier
Date: December 8, 2017