WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Bladimir Boyiko Case No. D2009-0437 1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Bladimir Boyiko of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2009. On April 3, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On April 3, 2009, eNom 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 April 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 28, 2009.
The Center appointed Dietrich Beier as the sole panelist in this matter on May 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 numerous trademarks for LEGO worldwide including the Russian Federation, Germany, United States of America to name only a few, for example, DD 653725 LEGO applied for goods and services in classes 16, 25, 28, 41, 9 on August 21, 1990 in Germany, and all other trademarks used in connection with the LEGO brand of construction toys and other LEGO branded products. In the Russian Federation the LEGO has been used for almost 20 years. In the year 2000, for example, LEGO had a regular Sunday television program on the uses of LEGO toys. In addition to the television, the LEGO magazine has been given out each year during spring and summer seasons in shops in the big Russian cities.
The Complainant is also the owner of more than 450 domain names containing the term LEGO.
The trademark LEGO has been used and is known around the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.
Several sources such as the book “The World's Greatest Brands” published by MacMillan Business in 1996 or the book “Famous Brands” published by Markgraaf BV in 1985 consider the LEGO mark as one of the most famous trademarks and brands in the world.
The Domain Name was registered by the Respondent in the year 2007 and is used at the moment for a portal with sponsored links for toys, partly naming LEGO or similar words such as “lagos”.
The Complainant first tried to contact the Respondent in relation to the domain name , on February 17, 2009 through a cease and desist letter. No reply was received so a reminder was sent on February 23, 2009 and then a final reminder was sent on February 27, 2009. The Complainant requested immediate transfer of the Domain Name and offered compensation for the expenses of registration and renewal fees (not exceeding out of pocket expenses).
The Complainant's research has shown that the Respondent is the holder of, in addition to the Domain Name, more than 400 domain names, many of which comprise famous trademarks or misspelling of famous trademarks, e. g., and (DISNEY), (RYAN AIR), (YAMAHA), (SWAROVSKI), (GOOGLE), etc.
In addition to this, the Respondent has been a respondent in several other UDRP cases and lost, for example, Viacom International Inc. v. Bladimir Boyiko, WIPO Case No. D2008-0867 and Gray Television Group, Inc. v. Bladimir Boyiko, WIPO Case No. D2008-0303. 5. Parties' Contentions A. Complainant
The Complainant claims that the dominant part of the domain name comprises the word “lego”, which is identical to the registered trademark LEGO. The Domain Name is confusingly similar to the Complainant's mark LEGO. The prefix “www” is the well-known acronym for “world wide web” and thus has no distinguishing capacity in a domain name context and is therefore confusingly similar to the Complainant's registered trademark LEGO. The prefix “www” does not detract from the overall impression, and the Domain Name must therefore be considered to be confusingly similar with the Complainant's trademark.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any rights or legitimate interests in the Domain Name. Consequently the Respondent may not claim any rights established by common usage.
Furthermore, no license or authorization has been given by the Complainant to the Respondent to use the trademark LEGO.
The Respondent is today 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 a registered trademark in order to generate traffic to the website and through this procedure generate income through sponsored links. By doing this, Respondent is misleading Internet users to commercial websites and consequently, the Respondent is tarnishing the trademark LEGO. No evidence has been found that the Respondent uses the name as a company name or has any other legal right in the name LEGO. The Respondent is trying to sponge off the Complainant's world famous trademark.
The trademark LEGO in respect of toys belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world.
The Respondent is using the Domain Name 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 website. Whether or not the Respondent has influenced what links should be included on the sites is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not the Respondent is actually getting revenue from this page himself.
It is apparent that the Respondent is engaged in a pattern of conduct when it comes to registering famous trademarks as domain names for his own commercial gain. B. Respondent
The Respondent did not reply to the Complainant's contentions. 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 in dispute 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. Identical or Confusingly Similar
The Complainant has established the fact that it has valid trademark rights for LEGO in several classes.
The trademarks of the Complainant are confusingly similar with respect to the second-level domain in question, (i.e., “wwwlego” which is the distinctive part of the domain name since the element “www” is a prefix and a common acronym for “world wide web” which will be understood if it appears in the second-level domain.
The Panel therefore considers the domain name in question to be confusingly similar to the trademark LEGO in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has no rights in the domain name in question since the Respondent is not a licencee of the Complainant nor has the Complainant granted any permission or consent to the Respondent to use its trademarks. Furthermore, the Respondent has no legitimate interest in the disputed domain name since there is no indication that the Respondent is commonly known by the name “wwwlego” or “lego” nor that the Respondent is using the domain name in question in connection with a bona fide offering of related goods or services. For the latter, as the panel in Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe,WIPO Case No. D2007-1695 stated correctly it must be noted that the use of a domain name confusingly similar to complainant's trademark for the purpose of offering sponsored links does not of itself qualify as a bona fide use. Also a non commercial or fair use is not noticeable.
The Panel therefore finds that the respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Due to the nature of the LEGO marks as well-known, if not famous, the Respondent must have been well aware of the Complainant and its trademark when registering the disputed domain name. The Complainant had not authorized the Respondent to make use of its mark. This Panel does not see any conceivable legitimate use that could be made by the Respondent of this particular domain name without the Complainant's authorization.
Furthermore, by combining the prefix “www” and a well known trademark, it is evident to the Panel, that the Respondent has registered the domain name in bad faith.
Also the fact that the Respondent registered several other domain names including well-known trademarks obviously misspelled combined with the prefix “www” such as (Annex 13 of the Complaint) of the trademark GOOGLE contributes to the clear indication that the Respondent registered the disputed domain name primarily with the intention of attempting to attract, for commercial gain, Internet users to a potential website or other online locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of such potential website or location, or of a product or service on such website or location.
The Panel therefore considers the domain name in dispute to have been registered and used in bad faith in accordance with 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, be transferred to the Complainant.
Dietrich Beier
Sole Panelist
Dated: May 20, 2009
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