The Complainant is Lego Juris A/S, of Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Gioacchino Zerbo, of Italy.
2. The Domain Names and Registrars
The disputed domain name <legogames.com> is registered with Tuonome.it.srl and the disputed domain name <wwwlegos.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2009. On April 17, 2009, the Center transmitted by email to Tuonome.it.srl and Dotster, Inc. a request for registrar verification in connection with the disputed domain names. On April 17, 2009, Dotster, Inc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 5, 2009, Tuonome.it.srl 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 28, 2009.
The Center appointed Jon Lang as the sole panelist in this matter on June 8, 2009. 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 the trademark LEGO and several other trademarks used in connection with the LEGO brand in connection with construction toys and other LEGO branded products. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights around the world. The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the United States (“U.S.”) in 1953, to identify construction toys made and sold by them. Their use of the LEGO mark has been extensive, exclusive and continuous since 1953.
The Complainant is also the owner of more than 450 domain names containing the trademark LEGO.
The trademark LEGO is among the most recognized trademarks around the world. Indeed, the book, The World's Greatest Brands, published by MacMillan Business in 1996, lists LEGO as one of the most famous trademarks and brands in the world.
The LEGO Group has expanded its use of the LEGO trademark to, amongst other things, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group maintains an extensive web site under the domain name <lego.com>.
5. Parties' Contentions
A. Complainant
- The dominant part of the disputed domain names, <legos.com> and <legogames.com> (hereinafter together the Domain Names) is the word “lego”, which is identical to the registered trademark LEGO, which has been registered by the Complainant as a trademark and domain name in numerous countries all over the world.
- The Domain Names are confusingly similar to the Complainant's mark LEGO, the addition of the prefix “www” and the suffix “games” (or “.com”) not being relevant except to the extent that the addition of the suffix “games” in fact strengthens the impression that the domain name, <legogames.com>, would have something to do with the Complainant.
- The domain name <legos.com> is a “misspelling” of the term “lego” (“legos”) and as such, it is confusingly similar to the world famous trademark, LEGO. The Complainant has put in huge efforts to prevent the use of the term “legos” including registering the domain name <legos.com> and using an interim page making the consumer aware that they had written the wrong name in the browser. It is obvious that the Respondent has chosen this domain name in order to direct traffic intended for <legos.com>, hence in reality intended for <lego.com>.
- There is a considerable risk that Internet users will perceive the Respondent's Domain Names either as domain names owned by the Complainant or as suggesting that there is some kind of commercial relation with the Complainant.
- The Respondent has no registered trademarks or trade names corresponding to the Domain Names and is not using LEGO in any other way that would give them any rights or legitimate interests in the name.
- No license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO. The Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant.
- The Respondent became the registrant of the domain name <legos.com> on February 17, 2009 and of the domain name <legogames.com> sometime after April 8, 2009, and it is highly unlikely that the Respondent would not have known of the Complainant's rights in the name at the time of the registration.
- The Respondent is not using the Domain Names in connection with a bona fide offering of goods or services but instead seeks to generate traffic to web sites to which they resolve and through this procedure generate income through sponsored links.
- The Complainant sent an initial cease and desist letter concerning <legos.com> via email on February 17, 2009, to the registrant at that time, Ms. Dinoia, informing her of the Complainant's trademark rights in the term “lego” and asking her to transfer the domain name to the Complainant with immediate effect. On the same day, the domain name was transferred to the Respondent. The same thing happened with <legogames.com>, where a cease and desist letter was sent on March 31, 2009, to Ms. Dinoia. No reply was received and the domain name remained with Ms. Dinoia. On April 8, 2009 the Complainant sent a reminder to Ms. Dinoia and when the WhoIs database was checked on April 14, the domain name had been transferred to the Respondent. It is clear that the former registrant received the cease and desist letters sent by the Complainant and that the Respondent was fully aware of the circumstances when taking ownership of the Domain Names.
- The Domain Names are currently connected to websites containing sponsored links and thus the Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its websites.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that the respondent has registered a domain name which is
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that he has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
The word “lego” is included in the Domain Names with the suffix “games” in one case, and the prefix “www” and an additional “s” at the end of “lego”, in the other. Given that the LEGO trademark is fully incorporated into the Domain Names there is clearly similarity. In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,
WIPO Case No. D2004-0488, it was said “Long-established precedent has generally recognised confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes”. The use of the word “games” immediately after LEGO far from distinguishes the domain name, <legogames.com> from the trademark. Indeed, it is quite possible it could increase the scope for confusion. The suffix “www” and additional “s” used in the domain name <legos.com> is unlikely to remove the possibility of confusion that exists by virtue of the use of such a well-known trademark in a domain name. Internet users searching for the LEGO website may well type “wwwlegos.com” either in error or in the mistaken belief that that is the correct URL for the Complainant. That presumably is what the Respondent hopes for.
LEGO is clearly the dominant portion of the Domain Names. This gives rise to the likelihood that Internet users might be confused into concluding that the owner of the Domain Names is also the owner of the trademark to which they are similar or at least that there is some form of association between the Respondent and the Complainant. The inclusion in the Domain Names of the prefix “www”, suffix “games”, and the letter “s”after LEGO does nothing to reduce this confusion. For these reasons, the Panel finds that the Domain Names are confusingly similar to the LEGO trademark.
B. Rights or Legitimate Interests
The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. There must be something more. The Respondent is not licensed in any way by the Complainant. Indeed, there appears to be no affiliation at all. A respondent can show it has rights to or legitimate interests in a domain name in other ways however. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert Internet users. However, the Respondent is not commonly known by the Domain Name and, given the websites to which the Domain Names resolve (containing sponsored links), it cannot be said that there is legitimate noncommercial or fair use. Indeed, in the absence of contrary evidence, this Panel can only assume that the Respondent (or others) derive some commercial benefit from the websites. A respondent can also show that it was using a domain name in connection with a bona fide offering of goods or services. However, it is difficult to accept that promotion of other commercial entities some of whom may be the Complainant's competitors on a website to which a confusingly similar domain resolves, is a bona fide offering of goods or services.
In Drexel University v. David Brouda,
WIPO Case No. D2001-0067, the Panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.” The Domain Names were registered to the Respondent in 2009. The world-wide recognition of the Complainant's mark was well established at the time of registration. It would be difficult to accept that the Respondent did not know of the Complainant's trademark when these were transferred by the original registrant. It would be difficult to accept, given the circumstances of the transfers and the use being made of the Domain Names, that the Respondent has used the Domain Names in a way that could demonstrate, or give rise to, rights or legitimate interests in the Domain Names.
There is no evidence before this Panel to contradict or challenge the contentions of the Complainant and in the circumstances this Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Names. The Panel therefore finds that this element of paragraph 4 of the Policy is established.
C. Registered and Used in Bad Faith
Given the present record, it seems clear that the Respondent was aware of the Complainant and its trademark when the Domain Names were registered. One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. This appears to be the case here. It is in fact difficult to imagine a good faith use by the Respondent in this case. These factors, combined with the manner in which the transfers of the Domain Names took place following the dispatch of the cease and desist letters and the absence of any response to them, and the Respondent's failure to participate in this proceeding, leads this Panel to find that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Names in bad faith.
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 Names, <legogames.com> and <wwwlegos.com> be transferred to the Complainant.
Jon Lang Sole Panelist
Dated: June 29, 2009
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