Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services of Sweden.
Respondent is Trent Clark/Darryl Lowe of Shenzhen, the People's Republic of China.
2. The Domain Names and Registrar
The disputed domain names <legobrick.net> and <legoset.net> are registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2010. On March 30, 2010, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain names. On April 9, 2010, Melbourne IT Ltd 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 Respondent of the Complaint, and the proceedings commenced on April 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 3, 2010.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on May 10, 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 trademark upon which the Complaint is based is LEGO. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the LEGO trademark around the world, including the United States trademark registration No.1018875, registered on August 26, 1975 in international class 28 for inter alia toy building blocks. Complainant also owns other United States trademark registrations for LEGO. In addition, the Complainant is the owner of over 1,000 domain names containing the term LEGO.
According to the documentary evidence and contentions submitted, the Complainant through their predecessors commenced use of the LEGO mark in the United States during 1953 to identify construction toys made and sold by them. The LEGO Group has expanded the use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Panel accepts Complainant's contention that the LEGO trademark is a notorious trademark worldwide.
According to the documentary evidence and contentions submitted, both the domain names <legobrick.net> and <legoset.net> were registered with Melbourne IT Ltd. on December 11, 2009. Complainant sent a cease and desist letter to Respondent on February 19, 2010, which letter was reiterated by email on February 26, 2010. Complainant states that no response from Respondent was ever received.
5. Parties' Contentions
A. Complainant
Complainant argues that the disputed domain names are confusingly similar to the LEGO trademark because the dominant part of the domain names is the word “LEGO”. Complainant also contends that the addition of the suffixes “brick” and “set” is not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO, and that the top-level domain “.net” is not to be taken into consideration.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain names because (i) Respondent may not claim any rights established by common usage corresponding to the disputed domain names; (ii) no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO; (iii) 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; and (iv) both domain names redirect to the web site “lego.mybisi.com” where the Respondent offers the Complainant's products and, by doing this, the Respondent is misleading Internet users to a commercial web site because visitors would be confused into falsely thinking that this is a web site sponsored by the Complainant.
Finally, Complainant contends that Respondent registered and used the disputed domain names in bad faith because (i) Respondent was aware of the rights the Complainant has in the LEGO trademark at the point of the registration and registered the domain names <legobrick.net> and <legoset.net> in view of the considerable value and goodwill of that trademark; and (ii) Respondent is using the disputed domain names to intentionally attempt to attract Internet users to a commercial website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Consolidation of Multiple Domain Names
A preliminary procedural issue to be resolved is whether it is appropriate for the Complainant to have brought this Complaint in respect of two domain names, the holder of each appears to be a distinct person.
Paragraph 3(c) of the Rules provides that “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” The use of the word “holder” rather than “registrant” suggests that the “holder” of a domain name may be someone other than the registrant of it. Therefore, the Rules preclude the bringing of a single complaint in respect of multiple domain names where the holders of the domain names are not the same. See Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim,
WIPO Case No. D2009-1345. As a result, if the “holder” of each of the disputed domain names in this case is the same person, then paragraph 3(c) of the Rules expressly permits this single Complaint to be brought in respect of the two domain names.
Previous panels have permitted a single complaint in respect of multiple domain names for which the registrants did not prima facie appear to be the same person where the circumstances suggested that the registrants were controlled by a single entity or where the different registrants of record were considered to be, in fact, one and the same entity. Panels have found that only one holder exists where the different registrants have the same contact information – such as the same postal address and telephone number (America Online, Inc. v Johuathan Investments, Inc., and AOLLNEWS.COM,
WIPO Case No. D2001-0918), the same postal and email address (Deutsche Telekom AG v. Tyson Rukash / Jonson,
WIPO Case No. D2005-1023), or the same office phone number and website (Société des Hôtels Meridien v. Spiral Matrix / Kentech Inc.,
WIPO Case No. D2005-1196). See Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim, supra.
This Panel finds that there is a common person holding an interest in the disputed domain names because majority of the contact details of the two registrants are the same; only the email addresses differ since each one incorporates one domain name. Moreover, both domain names resolve to the same website, therefore, the Panel finds that the Complaint is properly brought against both of the disputed domain names, despite the fact that the registrant of record for each domain name is different, and will consider that there is only one Respondent.
B. Effect of the Default
The consensus view is that the respondent's default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
In the absence of any Response from the Respondent, the Panel has considered whether the Center has discharged its obligation to “employ reasonably available means calculated to achieve actual notice [of the complaint] to the Respondent” (Paragraph 2 of the Rules). The Panel is satisfied that the Center has discharged that responsibility even if the posted addresses that Respondent has provided to Melbourne IT Ltd. may be incorrect. Therefore, this Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response.
As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith,
WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
C. Identical or Confusingly Similar
The domain names <legobrick.net> and <legoset.net> incorporate the LEGO mark in its entirety. Previous WIPO UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g.,TESLSTRA CORPORATION V. BARRY CHENG KWOK CHU,
WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd,
WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l.,WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,
WIPO Case No. D2007-0282. That is particularly true where the disputed domain names incorporate a well-known trademark as LEGO.
In the instant case, the combination of the suffixes “brick” and “set” with the word “lego” does not affect the overall impression of the dominant part of the disputed domain names because the resulting word has a significant meaning: “legobrick” and “legoset” are words related to the toy building blocks identified by the LEGO trademark. Therefore, in these combinations the word “lego” stands out and may lead the public to believe that there is an association with the well-known LEGO trademark. As decided in other WIPO UDRP cases, “the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone”. LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC., supra. See also Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812.
Also, the addition of the suffix “.net” is non-distinctive because it is required for the registration of the domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429; RX America, LLC v. Mattew Smith,
WIPO Case No. D2005-0540.
Therefore, the Panel finds that the domain names <legobrick.net> and <legoset.net> are clearly confusingly similar to the LEGO trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
D. Rights or Legitimate Interests
The Panel finds as reasonable Complainant's contentions that (i) Respondent may not claim any rights established by common usage corresponding to the domain names; (ii) no license or authorization of any other kind has been given by Complainant to Respondent to use the trademark LEGO; and (iii) it is unlikely that Respondent would not have known of Complainant's legal rights in the name LEGO at the time of the registration given the notoriety of the LEGO trademark and the fact that the domain names used to redirect to the website “www.lego.mybisi.com” where Respondent offered Complainant's products.
The question which arises is whether or not Respondent has a legitimate interest in the disputed domain names by redirecting them to a website where Complainant's products are offered for sale. The majority view in previous WIPO UDRP cases is that a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.3.
Complainant produced as evidence a screen print out of the website “www.lego.mybisi.com” where LEGO products were offered for sale. On May 16, 2010, the Panel visited the same website and noted that the home page contains the label “Fandango Gift Card”. The website “www.fandango.com“ is a movie ticket and theatre site. Therefore, the Panel finds that Respondent is using Complainant's well-known mark to draw Internet users to a website with sponsored links presumably earning revenues from that activity. Even if Respondent were redirecting Internet users to a website where the Respondent offered Complainant's products, Respondent did not adequately disclose the registrant's relationship with Complainant. Therefore, Respondent is not engaged in legitimate noncommercial or fair use of Complainant's mark in the disputed domain name.
In short, Complainant has satisfied its burden of providing sufficient evidence to show that Respondent lacks rights to or legitimate interests in the disputed domain names. In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
E. Registered and Used in Bad Faith
There are two factors in the instant case which are in favor of a finding of bad faith in the registration and use of the disputed domain names. First, the fact that Respondent has chosen as domain names the combination of a widely known trademark with descriptive words related to the registered trademark: “legobrick” and “legoset”. This is a clear indication that Respondent intended to attract Internet users which would look for a website offering LEGO products. The mere fact of diverting users in this misleading manner is evidence of bad faith. See The Gap, Inc. v. YongHoon Lee, SofTech,
WIPO Case No. D2007-0386.
Second, the fact that Respondent originally redirected the Internet users to a commercial website offering Complainant's products without adequately disclosing his relationship with the trademark owner. The change implemented by Respondent after receiving a cease and desist letter from Complainant reinforces the bad faith argument. Respondent is now disclosing sponsored links and this is also evidence of bad faith. See Mudd, USA LLC v. Unasi, Inc.(MUDDPRODUCTS-COM-DOM),
WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unasi, Inc.,
WIPO Case No. D2005-0556.
Therefore, the Panel finds that Respondent desired to free ride on Complainant's reputation and goodwill for commercial gain, and, accordingly, finds that Respondent registered and used the disputed domain names in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <legobrick.net> and <legoset.net> be transferred to the Complainant.
Manoel J. Pereira dos Santos Sole Panelist
Dated: May 27, 2010
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