Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Reiner Stotte of Ohio, United States of America.
2. The Domain Name and Registrar
The disputed domain name <legotraum.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2010. On April 1, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On April 1, 2010, eNom, Inc. transmitted by email to the Center its verification response confirming that 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 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2010. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on May 4, 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. On May 17, 2010, the Panel checked the United States Patent and Trademark Office database available online and found that United States trademark No.1018875 LEGO was registered on August 26, 1975 in International class 28 for, inter alia, toy building blocks, and that the mark has been assigned to Complainant. Complainant also owns other United States trademark registrations for LEGO. In addition, Complainant is the owner of over 1,000 domain names containing the term LEGO.
According to the documentary evidence and contentions submitted, 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, the domain name <legotraum.com> was registered with eNom, Inc. on November 8, 2009. Complainant sent a cease and desist letter to Respondent on November 30, 2009, which letter was reiterated by email on December 9, 2009, January 12, 2010 and finally on March 2, 2010. Complainant states that no reply from Respondent was ever received.
5. Parties' Contentions
A. Complainant
Complainant argues that the disputed domain name is confusingly similar to the LEGO trademark because the dominant part of the domain name is the word “lego”. Complainant also contends that the addition of the suffix “traum” (which means “dream” in German) 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 “.com” is not to be taken into consideration.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent may not claim any rights established by common usage corresponding to the domain name at issue; (ii) no license or authorization of any other kind has been given by Complainant to Respondent to use the trademark LEGO; (iii) it is highly unlikely that Respondent would not have known of Complainant's legal rights in the name LEGO at the time of the registration; and (iv) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
Finally, Complainant contends that Respondent registered and used the disputed domain name in bad faith because (i) Respondent was aware of the rights Complainant has in the LEGO trademark at the point of the registration and registered the domain name <legotraum.com> in view of the considerable value and goodwill of that trademark; and (ii) Respondent is using the disputed domain name to intentionally attempt to attract Internet users to a commercial website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website.
B. Respondent
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. 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.
This Panel finds that there are no exceptional circumstances foreseen for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant. 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 Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; 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.
B. Identical or Confusingly Similar
The domain name <legotraum.com> incorporates 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.,Telstra 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 name incorporates a well-known trademark as LEGO.
In the instant case, Respondent has registered a domain name which combines the word “lego” with the suffix “traum”, which means “dream” in German. It has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark generally results in determination of confusing similarity to the registered trademark. The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2006-1137; Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Cologne Zone,
WIPO Case No. D2001-1039; The Elisabeth Taylor Cosmetics Company v. NOLDC, Inc., WIPO Case No. D2006-0800; Accor v. Yossi Hasidim,
WIPO Case No. D2001-0392. However, the Panel notes that, the term “traum” is not necessarily immediately recognizable as a dictionary term, except for German speaking people.
In support of this argument, Complainant cites Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,
WIPO Case No. D2004-0488, in which the panel made reference to a “long-established precedent that confusing similarity is generally recognized when well-know trademarks are paired up with different kinds of prefixes and suffixes”. See also LEGO Juris A/S v. Zhijun Guo,
WIPO Case No. D2009-0184; LEGO Juris A/S v. Reginald Hastings Jr,
WIPO Case No. D2009-0680. In fact, 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. This Panel agrees that, if the dominant portion of a well-known mark and a disputed domain name is the same, then confusion may be likely notwithstanding peripheral differences.
Also, the addition of the suffix “.com” 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 <legotraum.com> domain name is confusingly similar to the LEGO trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The Panel finds that Complainant has done enough to establish a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain name, and by defaulting Respondent has failed to provide the Panel with any evidence of Respondent's rights to or legitimate interests therein.
In fact, the Panel finds as reasonable Complainant's contentions that (i) Respondent may not claim any rights established by common usage corresponding to the domain name at issue; (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.
Complainant further contends that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services for a number of reasons. According to Complainant's contentions and documentary evidence, Respondent initially used the disputed domain name for fraud, to take orders from customers for LEGO products that were then never delivered. As a result, the site was shut down by the Internet Service Provider at the request of Complainant, on November 11, 2009. Thereafter, the disputed domain name began pointing to the home web site of ROHRS, a real estate company with the web addresses “www.rohrsnation.com” and “www.georgialandsellers.com”.
On May 17, 2010 the Panel attempted to access a website to which the disputed domain name might resolve and found out that the domain name was inactive. Therefore, the Panel has not found any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights 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.
D. Registered and Used in Bad Faith
This Panel agrees with previous Policy decisions to the effect that “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,
WIPO Case No. D2006-0464. See also Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270; Reuters Limited v. Global Net 2000, Inc.,supra. Also, as indicated in another UDRP case, “it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products”. BOUYGUEs v. Chengzhang, Lu Ciagao,
WIPO Case No. D2007-1325.
The conduct of Respondent since he was served of a cease and desist letter by Complainant does not show a result in favor of Respondent. In fact, Respondent initially used the disputed domain name to take orders from customers for LEGO products that were then never delivered. Thereafter, the disputed domain name began pointing to the home web site of ROHRS, a real estate company. Finally, the disputed domain name seems now to be inactive.
The consensus view in the WIPO URDP Panel decisions has been that “[t]he lack of active use of the domain name does not as such prevent a finding of bad faith”, and that a panel must examine such circumstances as “complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 3.2). See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 Net Power, Inc.,WIPO Case No. D2000-0022; J. García Carrión, S.A. v. María José Catalán Frias,
WIPO Case No. D2000-0239; Bayer Aktiengesellschaft v. Henrik Monssen, WIPO Case No. D2003-0275; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,
WIPO Case No. D2006-0483; MasterCard International Incorporated v. North Tustin Dental Associates, supra.
The Panel is of the opinion that, in light of the circumstances of the instant case, the conduct of Respondent evidences bad faith registration and use. As a matter of fact, the majority of the facts referred to above are present and, accordingly, the Panel concludes that the disputed domain name was used and is still being used in bad faith.
Therefore, 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 name <legotraum.com> be transferred to Complainant.
Manoel J. Pereira dos Santos Sole Panelist
Dated: May 25, 2010
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