The Complainant is LEGO Juris A/S of Billund, Denmark, of Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is N/A, Hu Lim of Shanghai, Peoples' Republic of China.
2. The Domain Name and Registrar
The disputed domain name <legomusem.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2009. On October 30, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On November 2, 2009 Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 November 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 25, 2009.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on November 30, 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
Complainant
The Complainant LEGO Juris A/S is the owner of the trademark LEGO and all other trademarks used in connection with the famous LEGO brand of construction toys and other LEGO branded products.
The LEGO trademark is an international trademark, famous in the world and its use has been extensive, exclusive and continues since 1953 by the above-mentioned owner in the toy and games market.
The LEGO trademark has been used and registered in China because it has been present in the toy and games market in that country for the last 15 years. In fact LEGO has opened its flagship store in China at the World Shopping Mall in Beijing in September 2007. The Complainant, made a special mention of this matter due to the fact that China, is the domicile of the Respondent according the WhoIs domain name information.
The Complainant mentioned in their Complaint that they are the owners of more than one thousand domain names containing the term LEGO and provided a list which includes all the information of the domain names.
The Complainant express that The LEGO Group has expanded the use of the LEGO trademark to other areas, such as computer hardware and software, books, video and computer controlled robotic construction sets.
The LEGO Group also maintains an extensive web site under the domain name <lego.com>.
It is relevant for this case, to quote the statement made by the Complainant: “As shown, the mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered in the whole Community to be significant. According to the provisions of Article 6bis of the Paris Convention for [P]rotection of Industrial Property (‘PC'), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement of Trade-Related Aspects of Intellectual Property Rights (‘TRIPS Agreement'), the statute of a well-known trademark provides the owner of such a trademark the right to prevent any use of the well-known trademark or confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO goes far beyond toys and goods similar to toys.”
The Complainant argues that the disputed domain name is identical or confusingly similar to their trademark according to Policy, paragraph 4(a)(i), Rules paragraphs 3(b)(viii), (b)(ix)(1), because the dominant part of the disputed domain name is the word “LEGO” as <legomusem.com> which is identical to the registered trademark LEGO. The addition of the suffix “musem” (a misspelling of the term museum) is not relevant and will not have any impact on the overall impression of the dominant part of the name LEGO, instantly recognizable as a word famous trademark.
The Complainant asserts that the Respondent has no rights or legitimate interest in respect of the domain name, according to the Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2). And finally the Complainant states that the disputed domain name was registered and is being used in bad faith, according to Policy, paragraph (a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3).
Because the Respondent failed to submit a Response and therefore any evidence, these factual allegations are undisputed and accepted as true in this Proceeding.
B. The Respondent is an individual with an address in China.
The disputed domain name was registered on August 4, 2009.
5. Parties' Contentions
A. Complainant
The Complainant based their case in the following grounds:
A.a. The domain name is confusingly similar to the trademarks in which the Complainant has rights:
The Complainant asserts that the main part of the disputed domain name <legomusem.com>, includes the word “LEGO”, which is identical to the Complainant's world wide registered trademark LEGO. The Complainant brought to the proceedings an extensive list that provides the trademark registration information of the word “LEGO” across the world.
The Complainant argues that the domain name is confusingly similar to the Complainant's trademark LEGO and the addition of the suffix “musem” (a misspelling of the term museum) is not relevant and will not have any impact on the overall impression of the dominant part of the domain name “LEGO”, which can be recognizable as a world famous trademark. Also, as an example, the Complainant mentioned the case, Dr. Ing. h.c F. Porsche AG v Rojeen Rayaneh,
WIPO Case No. D2004-0488 in which it was stated that is a long-established precedent that confusing similarity is generally recognized when famous trademarks are paired up with different kinds of generic prefixes and suffixes.
The Complainant also asserts that the addition of the Top Level Domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the trademark and the domain name.
A.b. The Respondent has no rights or legitimate interests in respect of the domain name; Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2)
The Complainant argues that the Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name. , notwithstanding, the Respondent did not present to this proceeding evidence that could rebutt Complainant's claims.
The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way that would give him any legitimate rights in the name.
The Complainant clearly established that the Respondent has not a license or authorization of any other kind in order to register or use the trademark LEGO as a part of the disputed domain name <legomusem.com>.
The Complainant argues that the Respondent registered the domain name on August 4, 2009 and the mere registration of a domain name, that includes a world famous trademark such as LEGO, does not give the owner, a right or a legitimate interest in respect of the domain name.
The Complainant also argues that at present, the Respondent is not using the domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on registered trademarks in order to generate traffic, and therefore income, to his web sites through sponsored links which redirect the Internet users to competitive good or services of toys and games (the main market of the trademark LEGO). The Complainant presented to this Panel as evidence, the printouts of the contents that the Respondent published on the website at the disputed domain name.
A.c. The disputed domain name has been registered and is being used in bad faith. (Policy, paragraph 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
The Complainant argues that they first tried to contact the Respondent on September 18, 2009, through a cease and desist letter. At that point the disputed domain name was pointing to a websitewith pornographic content, the Complainant presented as evidence of this fact, the printouts of the website.
The Complainant says that the Respondent did not reply, but the content of the webpage changed to sponsored links, so it is apparent that the Respondent did received the cease and desist letter but did not answer it, following which, the Complainant resolved to begin the UDRP proceedings.
Also, the Complainant argues that the fact that the Respondent after receiving the letter changed the content to sponsored links, is an act of bad faith, because “knowing the importance of the trademark and being aware of it” the Respondent is using the domain in order to intentionally attempt to attract, for commercial gain Internet users to the website, by creating a likelihood of confusion with the Complainant's trademark as to source, sponsorship, affiliation or endorsement of the website at the disputed domain name.
The Complainant finally summarizes that LEGO is a worldwide famous trademark. There is no doubt that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the disputed domain name the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly, diverting consumers for his own commercial gain. Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and used the disputed domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions and did not present an argument or evidence in this case.
6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A respondent, in cases such as the present case, is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See among other WIPO cases, the following examples: Microsoft Corporation v. Freak Films Oy,
WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. Mark Freeman,
WIPO Case No. D2000-1080. Notwithstanding the silence of the Respondent, the Panel must decide with the elements present in the case.
A. Identical or Confusingly Similar
The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights: (Policy, paragraph 4(a)(i) Rules, paragraph 3(b)(ix)(1).
The Complainant is the owner of the famous trademark LEGO and presented to the Panel a list of the trademark registration information of the word LEGO as trademark in most of the countries of the world, included but not limited to China, as evidence of their trademark rights. The domain name in question is clearly confusingly similar to the Complainants registered trademark LEGO. The suffix “musem” does not detract from the overall impression and that the disputed domain name must be considered confusingly similar with the Complainant's trademarks.
For the Panel, enough evidence is presented by the Complainant, and considers that the main part of the disputed domain name is an exact reproduction of the trademark LEGO, which belongs to the Complainant.
Also, the misspelt word “musem” that the Respondent used as the suffix for the disputed domain name does not bring enough distinctiveness to the main part of the domain name which is the world wide famous trademark LEGO.
Other panelists also share the opinion that any suffix or word connected with a world wide famous trademark may not be enough to give to such domain name distinctiveness as a domain name so as to avoid a finding of confusing similarity under the Policy.
Numerous UDRP panels have recognized that adding a generic word or words to a trademark may be insufficient to give any distinctiveness to the domain name in dispute (see Groupe Auchan v. Jakub Kamma,
WIPO Case No. D2007-0565; Heineken Brouwerijen B.V. v. Mark Lott,
WIPO Case No. D2000-1487; and America Online, Inc. v. East Coast Exotics,
WIPO Case No. D2001-0661).
Based on prior UDRP decisions, and the Panel's own judgment, it is fair to arrive to the conclusion that the addition to the domain name of the word “musem” is not sufficient to avoid confusing similarity with the Complainant's trademark LEGO. Therefore the disputed domain name <legomusem.com> is confusingly similar to the Complainant's trademark LEGO. In addition, the top-level domain “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant's trademark and the disputed domain name.
For all the above mentioned reasons, the Panel finds that the Complainant has proven its trademark rights in the mark LEGO which has been exactly included in the main part in the disputed domain name; that the inclusion of the suffix “musem” creates confusing similarity to the domain name and therefore the condition of paragraph 4(a)(i) is fulfilled.
B. Rights or Legitimate Interests
In this case, the Respondent is in default and did not present any argument or evidence that could be used to establish that it has rights or legitimate interests in the disputed domain name.
Also, the Respondent did not present in this case any evidence of demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the domain name. The Panel has accepted this as true, due to the fact that the Respondent did not present any evidence or argument that could be used to prove the contrary that it has a trademark or trade names corresponding to the <legomusem.com> domain name. The Complainant has also argued that they did not find anything that would suggest that the Respondent has been using LEGO in any other way that would give them legitimate rights in the name and the Respondent did not present any evidence to prove the opposite. To the contrary, the Respondent's conduct by pointing the disputed domain name, first to a pornographic web page and after being notified by the Complainant's cease and desist letter, changing the web page from a pornographic one to a sponsored link page with hyperlinks that connect the Internet user to LEGO trademark competitive goods or services, does not correspond to the use of disputed domain name in connection with a bona fide offering of goods or services.
The Complainant argues that they do not have any kind of relationship with the Respondent, therefore the Respondent has not been authorized to register and use as a part of a domain name, their trademark LEGO. The Panel has recognized that the Respondent is not affiliated with the Complainant in any way, nor has it been authorized to register or use the Complainant's LEGO trademark or to seek registration of any domain name incorporating said mark. See case: Dr. Ing. h.c. F. Porsche AG, supra.
It is important to underline, that the Respondent has established at the disputed domain name, a website with competitive toys and games links that could not be considered by this Panel as a fair use of the website itself or a bona fide offering of goods or services.
The silence of the Respondent can support the conclusion that the Respondent has no rights or legitimate interests in respect of the disputed domain name; see, LEGO Juris A/S v. Private, Registration/Dhoe Dot,WIPO Case No. D2009-0753, see also Singapore Airlines Limited v. European Travel Network,
WIPO Case No. D2000-0641.
Considering the circumstances of this case, the Panel finds that the Complainant has demonstrated in this case, that the Respondent has no rights to or legitimate interests in the disputed domain name, therefore the Complainant has been able to satisfy its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith.
Due to the nature and use of the trademark LEGO as famous marks, this Panel could not understate the fact, that the Respondent must have been well aware of the Complainant and its trademarks when registering the domain name.
A visit made by the Panel itself, to the disputed domain name at the website: “www.legomusem.com” exposed the following: “Legomusem.com Buy this domain. The domain legomusem.com may be for sale by its owner!” Also the website published a list of sponsored listings with Complainant's competitive goods or services with links that redirect the traffic to games and toys links. This is evidence of what the Policy defines as bad faith; Because the inclusion of sponsored listings in the website, is evidence of use in order to intentionally attempt to attract, for commercial gain and what other panelist have interpreted as an act of bad faith.
The presence of a search page or parking page, alone, does not support a findingof bad faith by itself, see the panelist opinion in the Finm eccanica S.p.A. v. Moniker Privacy Services / Guillermo Lozada,
WIPO Case No. D2008-0884, where the panel noted that in itself, parking a domain name for financial gain is not a violation of the Policy and maybe, in such cases, recognized as a bone fide offering of services, e.g.Mariah Media Inc. v. First Place® Internet Inc.,
WIPO Case No. D2006-1275. Liability under the Policy may attach when the Respondent has registered the domain name then placed it on a parking service, which redirects the user to a website advertising goods or services competitive with Complainant,]”, see for example Cloer Elektrogeräte GmbH v. Motohisa Ohno,
WIPO Case No. D2006-0026; Villeroy & Boch AG v. Mario Pingerna,
WIPO Case No. D2007-1912. The present case, is just another example, of the prior mentioned cases, where the Respondent has published through the disputed domain name, a web page that contains links that direct any Internet user to competitive sites of goods or services of the Complainant's trademark.
Although not raised in the Complainant's discussion of bad faith, the Complainant has provided printouts of web pages of <legomusem.com> that provide links to competing goods and services; the Panel confirmed this fact with the above mentioned visit.
The Respondent's website redirects Internet users to services that compete with the Complainant goods and other services links. A number of prior UDRP panel decisions support an indication of bad faith registration and use when the domain name incorporates a trademark that is famous and in which the Respondent does not have rights or legitimate interests. See The American Kennel Club Inc. v. Aaron Clayton,
WIPO Case No. D2007-0543; See also GROUPE CANAL+ SA v. CDN Properties Incorporated,
WIPO Case No. D2009-0457.
According to the arguments, the documents and all the evidence presented by the Complainant in this case, it is sufficient for this Panel to support the bad faith registration and use of domain name by the Respondent, under the Policy paragraph 4(a)(iii) of the Policy.
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 <legomusem.com> be transferred to the Complainant.
Ada L. Redondo Aguilera Sole Panelist
Dated: December 14, 2009
Stay updated! Get new cases and decisions by daily email.
