The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Y, P of Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <legofish.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2009. On December 15, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 16, 2009, GoDaddy.com, Inc. 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 December 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 8, 2010.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on January 13, 2010. 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 various other trademarks used in connection with the LEGO brand for construction toys and other LEGO branded products.
The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in the United States and elsewhere. The Complainant and its licensees commenced use of the LEGO mark in the U.S. during 1953, and the use of the LEGO mark has been continuous since then.
The revenue for the LEGO Group in 2008 was more than USD 1.8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries.
The Complainant is also the owner of more than 1,000 domain names containing the term “lego”.
The trademark LEGO is among the best-known trademarks in the world. Evidence presented by the Complainant shows LEGO as number 8 of the most famous trademarks and brands in the world.
5. Parties' Contentions
A. Complainant
The dominant part of the disputed domain name comprises the word “lego”, which is identical to the Complainant's registered trademark LEGO.
The fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions.
By using the disputed domain name, the Respondent exploits the goodwill and the image of the LEGO trademark, which may result in dilution and other damage for the Complainant's trademarks.
The Respondent does not own any registered trademark or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using the name “Lego” in any other way that would give it any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by common usage.
It is highly unlikely that the Respondent would not have known of the Complainant's legal rights in the name “Lego” at the time of the registration.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain name to attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of his website.
B. Respondent
The Respondent has not submitted any response to the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <legofish.com> is confusingly similar to the Complainant's famous LEGO trademark. The Respondent's addition of the term “fish” is insufficient to distinguish the disputed domain name from relevant LEGO trademarks. The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the circumstances of this case, there are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name.
While the Panel notes that there does indeed appear a picture of a fish and a lego toy on the website at the disputed domain name, all links contained therein appear to be unrelated to a “fish” or lego toys, or otherwise give rise to a basis for a finding of rights or legitimate interests in the disputed domain name. Also, noting the explanation on the Respondent's website regarding the “logo” which states:
The lego piece was lent to me by my co-worker Sue's housemate (thanks!). The fish was purchased at Toronto store ma-zone. As for the name Legofish itself, it's a badly kept secret.
The Panel does not find this statement (also, in light of the Respondent failing to submit a Response or otherwise) to be sufficient grounds for a finding of rights and legitimate interests under the Policy.
The Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name is connected to an online shop selling t-shirts.
It is evident that the Respondent's only purpose in registering the disputed domain name was to divert traffic away from the Complainant's websites to its own website for commercial gain, by creating a likelihood of confusion with the Complainant's mark. Such activity falls squarely within the terms of paragraph 4(b)(iv) of the Policy.
It may also be concluded in the circumstances that the Respondent likely knew of the existence of the Complainant's trademark and its significance in the Canadian market (where the Respondent is domiciled) when the disputed domain name was registered.
Under the circumstances, the Panel finds that the Respondent's conduct constitutes bad faith registration and use, thus fulfilling 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 <legofish.com> be transferred to the Complainant.
Tobias Zuberbühler Sole Panelist
Dated: January 27, 2010
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