The Complainant is LEGO Juris A/S, Stockholm, Sweden, represented by Melbourne IT Corporate Brand Services AB, Sweden.
The Respondent is LogoFusion, Ofer Israel, Houston, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <legoisrael.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2006. On March 3, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same date, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 March 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2006. The Respondent sent three email communication(s) to the Center on March 8, 2006, which the Center duly acknowledged.
The Center appointed Peter G. Nitter as the Sole Panelist
in this matter on April 4, 2006. 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 the owner of LEGO and all other
trademarks used in connection with LEGO and LEGO branded products. The Complainant
is also the owner of more than 230 domain names containing the word LEGO.
5. Parties’ Contentions
A. Complainant
The Complainant submits that LEGO is the Complainant’s registered trademark. LEGO is one of the most well-known brands in the world.
According to the Complainant, the dominant part of the disputed domain name is LEGO, which is identical to the Complainant’s trademark. The suffix “Israel” is not sufficient to prevent this. It is likely that visitors will think that “Israel” is a geographic suffix indication for a regional LEGO website.
The Complainant further submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no registered LEGO trademarks. Further, the Respondent is given no license to use LEGO and is in no way connected with the Complainant.
According to the Complainant, the disputed domain name is not being used as a non-commercial fan site for LEGO products as there are Google ads listed at each side. This means that the disputed domain name is being used in order to attract visitors for the commercial gain of the domain holder.
The Complainant submits that as the LEGO trademark is considered to be significant and substantial, there cannot be doubt that the Respondent was well aware of the Complainant’s rights when registering the disputed domain name. By using the domain name, the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain, but is instead misleadingly diverting consumers for his own commercial gain.
B. Respondent
The Respondent submits that the disputed domain name is being used to show how LEGO may be used to create robotics creations.
According to the Respondent, there is no risk of confusion between the disputed domain name and the Complainant’s domain name as it is clear from the text on the website that he is a LEGO fan.
The Google ads are removed and the Respondent submits that the ads have only generated 0,1 United States dollars.
The disputed domain name was neither registered, nor
is it being used, in bad faith. The disputed domain name is, according the Respondent,
used to praise LEGO.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name at issue is not identical to a trademark held by the Complainant, and the question is therefore whether there is confusing similarity.
The Panel agrees with the Complainant that the addition of “Israel” to LEGO is not sufficient to render the domain name dissimilar or to prevent consumer confusion. The Panel further remarks that the minor differences constituted by the addition of “.com” is not sufficient to render the domain name dissimilar or to prevent consumer confusion.
Hence, the Panel finds that there is confusing similarity between the Complainant’s trademark and the domain name at issue.
B. Rights or Legitimate Interests
The Respondent has not contested the Complainant’s allegation that the Respondent lacks any rights or legitimate interests in the contested domain name in any other way than stating that the disputed domain name is being used to praise LEGO.
It is generally difficult for a complainant to prove that a respondent does not have any rights or legitimate interests in the domain name at issue, and on the other hand, it would be simple for the Respondent to demonstrate that he has any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have therefore found it sufficient for a complainant to make a prima facie showing of its assertion in the event of a respondent’s default. The Panel takes for its basis that the Complainant has neither granted the Respondent rights to use its mark to create a fan site nor to use it in any other way, and that the Respondent is in no way affiliated with the Complainant. The world renown of the Complainant makes these assertions easy to accept for the Panel.
The Panel finds that the circumstances mentioned and evidenced by the Complainant are sufficient to establish a prima facie showing that the Respondent has no rights or legitimate interests in the domain name at issue.
As the Respondent has not demonstrated any of the three circumstances that constitute rights to or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy, the Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
As a result of the worldwide fame of the Complainant’s trademark and the Respondent’s own explanation, the Panel finds it inconceivable that the Respondent was not aware of the Complainant’s rights to LEGO when registering the domain name at issue. The Respondent has also alleged that he is a “LEGO fan”, and that the website was established to praise LEGO.
The website resolving to the domain name at issue has contained advertisements. The registration and use of the disputed domain name thus appear to be an attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark. The Panel finds this clear, despite the fact that it has been asserted by the Respondent that the ads have generated minimal income for the Respondent.
As a result of the above, the Panel finds it evidenced that the domain name
at issue was registered and has been used in bad faith by Respondent, pursuant
to the Policy, paragraph 4(b)(iii).
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <legoisrael.com>, be transferred to the Complainant.
Peter G. Nitter
Sole Panelist
Dated: April 19, 2006
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