The Complainant is LEGO Juris A/S of Billund, Denmark represented by Melbourne IT Digital Brand Services AB of Stockholm, Sweden.
The Respondent is pcmaniabg of Sofija, Bulgaria. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2011. On June 22, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On June 25, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 June 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2011.
The Center appointed Olga Zalomiy as the sole panelist in this matter on July 26, 2011. 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 a Danish company that makes and sells construction toys, computer hardware and software, books, videos and other products that are branded under the mark LEGO. The Complainant has provided evidence of ownership of several trademark registrations for LEGO, including European Community Trademark No. 000039800 for LEGO registered on October 5, 1998.
The Complainant is also the registered owner of over 1000 domain names which incorporate the LEGO mark, including: which directs to the Complainant’s official website. The website offers LEGO products for sale and also contains a distinctive LEGO logo and colors.
The disputed domain name was registered on February 21, 2011. The disputed domain name consists of: 1) a prefix “bg”, 2) a hyphen, 3) the word “LEGO”, and 4) a qTLD suffix “.com.” It directs to a website offering Lego toys for sale. The website’s look includes Lego logotype and colors.
In 2010, the Respondent registered a domain name that is similar to the disputed domain name. The domain name directed to a website identical to Respondent’s current website. The resulting dispute between the parties was resolved in the Complainant’s favor in LEGO Juris A/S v. pcmaniabg, Paisiy Aleksandrov,WIPO Case No. D2010-1965. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is identical and confusingly similar to its LEGO trademark. In the Complainant’s view, the addition of a hyphen and a prefix “bg,” which gives reference to the Respondent’s country of Bulgaria, does not mitigate the confusion. Instead, the Complainant claims, it will contribute to the confusion by suggesting a reference to a Bulgaria-based affiliate of the Complainant. Further, the Complainant alleges that the addition of the top-level domain “.com” has no impact, and is irrelevant for the purpose of determining confusing similarity.
The Complainant claims that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant claims that it has not found that the Respondent has registered any trademarks or trade names corresponding to the disputed domain name. The Complainant alleges that it has given no license or authorization of any kind to the Respondent to use the trademarks. Further, the Complainant alleges that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, because the Respondent’s website which offers Lego products for sale lacks an accurate description of the Respondent’s relationship with the Complainant. Moreover, the Complainant claims that it previously won a case against the Respondent, who registered a domain name .
The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant claims that its LEGO trademark has status as a well-known mark. In the Complainant’s view, the increasing number of infringing domain name registrations indicates that the LEGO trademark has widespread reputation throughout the Community.1 In the Complainant’s view, there is no doubt that the Respondent was aware of the Complainant’s rights in the trademark, because, on its website, the Respondent uses a brand and logotype which resemble the LEGO logotype, and LEGO’s color and building brick pattern. Further, the Complainant states that the Respondent’s failure to respond to the Complainant’s March 11, 2011, cease and desist letter and its April 19, 2011, reminder to respond, is relevant in a finding of bad faith.
The Complainant alleges that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to the Respondent’s website, by creating likelihood of confusion with the Complainant’s mark, as to the source, sponsorship or affiliation. The Complainant refers toWIPO Case No. D2010-1965, supra, between the Complainant and the Respondent, concerning use of the domain name, to support its contention of bad faith use of the disputed domain name.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to Paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In case of a respondent’s default, “the respondent’s default does not automatically result in a decision in favor of the complainant”.2 The complainant must establish “each of the three elements required by paragraph 4(a) of the UDRP”.3 Thus, to succeed on its claim, the Complainant must prove that: 1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) the Respondent has no “rights or legitimate interests in respect of the domain name”; and 3) the domain name “has been registered and is being used in bad faith”, paragraph 4(a) of the UDRP.
“Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”4 A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. Under Paragraph 1.1 of the WIPO Overview 2.0, if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. Here, the Complainant has provided evidence of ownership of multiple trademark registrations for LEGO, including European Community Trademark No. 000039800 for LEGO, filed on April 1, 1996, and registered on October 5, 1998, in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, and 42. Therefore, the Panel finds that the Complainant established its rights in the LEGO mark.
The test for confusing similarity should be a comparison between the mark and the domain name.5 “Application of the confusing similarity test under the UDRP […] involve[s] a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”.6 A comparison of the LEGO trademark and the disputed domain name shows that they are confusingly similar. First, the disputed domain name incorporates the Complainant’s trademark in its entirety.7 Second, it is well-established that the addition of geographical wording is insufficient to avoid confusing similarity.8 Therefore, the addition of the two-letter country code corresponding to Bulgaria,9 the country of the Respondent’s residence, does not dissipate confusion between the LEGO mark and the disputed domain name. Prior panels have held that a ccTLD code or ISO is a non-distinctive element, and its addition does not avoid confusing similarity.10 Finally, it is well-established that the addition of the top-level domain suffix “.com” or equivalent should be disregarded under the confusing similarity test, as it is a technical requirement of registration.11
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical 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 Complainant must show that the Respondent has no rights or legitimate interests in the disputed domain name.12 Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.”13 Therefore, to satisfy this requirement, the Complainant must make out a prima facie case, that the Respondent lacks rights or legitimate interests in the domain name.14
Paragraph 4(c) of the UDRP provides an open list of circumstances which demonstrate rights or legitimate interests of a respondent in a domain name. The Complainant alleges that none of such circumstances exist here. The Panel finds that the Complainant presented a prima facie showing that the Respondent lacks rights or legitimate interest in the disputed domain name for three reasons. First, the Respondent did not use the disputed domain name in connection with a bona fide offering of goods. Second, the Respondent uses the disputed domain name for commercial gain and to misleadingly divert consumers to its website. Third, the Respondent has not been commonly known by the disputed domain name.
The Complainant alleges, and the Respondent does not disprove, that there is no relation between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Nevertheless, the Respondent’s website incorporates the Complainant’s logo and colors, and offers Lego products for sale.
There is no indication before the Panel that the Respondent is commonly known by the disputed domain name or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name. On the contrary, printouts from the Respondent’s website presented by the Complainant show that the website was designed to appear as a website affiliated with or authorized by the Complainant. The design and feel of the website is similar to the Complainant’s official “www.” website. The Respondent’s website displays the Complainant’s LEGO logotype at the top of the page, and contains no disclaimers concerning the absence of any relationship between the companies. Moreover, the Respondent’s website is a carbon copy of its earlier website “www.” which was found to be infringing on the Complainant’s rights just several months prior to this case.
Finally, it is unlikely that the Respondent has been commonly known by the disputed domain name. The Complainant alleges, the Respondent does not disprove, and a previous panel in the 2010 case between the same parties found, absence of any indication of such information.
The Panel, therefore, finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with Paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The third element of Paragraph 4(a) of the UDRP requires “a positive finding that both the registration and use were in bad faith.”15 Paragraph 4(b) of the UDRP provides an open list of the circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” The Panel finds that circumstances present in this case correspond to those described in Paragraph 4(b)(iv) of the UDRP. In particular, the Panel finds that “by using the domain name, [a respondent] intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” (i) Registration in bad faith
The Panel finds it is likely that the Respondent knew about the Complainant’s widely-known LEGO mark and registered the domain name in bad faith.
The LEGO mark has been found to be a widely-known mark on numerous occasions.16 In the Panel’s view, existence of multiple attempts by third parties to trade on the Complainant’s goodwill is an indication of its fame.17 Several UDRP Panels have found the LEGO mark to be well-known.18 Furthermore, the Complainant presented a copy of the 2009/10 Official TOP 500 Superbrands rating provided by the Center for Brand Analysis, showing that LEGO was rated No. 8 among the top 500 brands in the world. Since the disputed domain name incorporating a well-known mark is registered by someone with no legitimate connection to the product, it is likely that the Respondent registered the disputed domain name in bad faith. The fact that the Respondent registered the almost identical infringing domain name just several months prior to the registration of the disputed domain name, this supports a finding of registration in bad faith.
In addition, the Complainant’s trademark was registered long before the Respondent registered the disputed domain name. The Complainant provided a copy of printout from a search of the WhoIs database of the Registrar conducted on June 22, 2011, and an extract from the Community Trademark database, the database of trademarks that are valid across the European Union.19 The evidence shows that the Complainant registered its LEGO mark on October 5, 1998, thirteen years prior to registration of the disputed domain name. Therefore, the Panel finds that this indicates that the Respondent knew about the existence of the Complainant’s marks prior to registration of the disputed domain name.
Therefore, the Panel finds that the Respondent registered the disputed domain name in bad faith. (ii) Use in bad faith
The Panel finds that the Respondent intentionally attempted 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 the Lego products for the reasons described below.
The Complainant claims that the disputed domain name is likely to confuse potential consumers into believing that the Respondent is affiliated with, or endorsed by, the Complainant. The Panel finds this contention reasonable, because the LEGO mark is incorporated in the disputed domain name in its entirety; the Respondent’s website re-creates the look, feel, colors and the logo of the Complainant; and the Complainant’s products are offered for sale on the Respondent’s website. Critically, the Panel finds that the second attempt to trade on the LEGO mark’s fame, confirms use in bad faith.
Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith. As a result, the Panel finds that the Complainant established the third element of paragraph 4(a) of the UDRP. 7. Decision
For 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.
Olga Zalomiy
Sole Panelist
Dated: July 27, 2011
1 In the Panel’s view, the word “Community” refers to the European Community.
2 See, Paragraph 4.6 of the WIPO Overview, 2.0.
3 Id.
4 Paragraph 4.6 of the WIPO Overview, 2.0.
5 Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
6 Paragraph 1.2 of the WIPO Overview, 2.0.
7 See, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105.
8 Paragraph 1.9 of the WIPO Overview, 2.0.
9
10 Paragraph 1.9 of the WIPO Overview, 2.0; See also, Paragraph 1.9 of the WIPO Overview, 2.0. See, e.g., LEGO Juris A/S v. pcmaniabg, Paisiy Aleksandrov,WIPO Case No. D2010-1965 between the Complainant and the Respondent, finding the addition of “BG” ISO code to LEGO mark in the domain name does not dissipate confusion between the LEGO mark and the domain name.
11 See, Paragraph 1.2 of the WIPO Overview, 2.0.
12 Paragraph 4(a)(ii) of the UDRP.
13 Paragraph 2.1 of the WIPO Overview, 2.0.
14 See, paragraph 2.1 of the WIPO Overview, 2.0.
15 Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
16 LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator,WIPO Case No. D2010-1260; LEGO Juris A/S v. Reginald Hastings Jr.,WIPO Case No. D2009-0680.
17 See, e.g., LEGO Juris A/S v. An Bui,WIPO Case No. D2010-1169; LEGO Juris A/S v. XMGlobal Inc.,WIPO Case No. D2010-1168; LEGO Juris A/S v. J.h.Ryu,WIPO Case No. D2010-1156; LEGO Juris A/S v. Satisfaction Ink,WIPO Case No. D2010-1016; LEGO Juris A/S v. Chris Parent,WIPO Case No. D2010-1015; LEGO Juris A/S v. Phoenix Productions,WIPO Case No. D2010-0798; LEGO Juris A/S v. Granite Real Estate,WIPO Case No. D2010-0819; LEGO Juris A/S v. H, Heihachi Ltd WHOIS-PROTECTION,WIPO Case No. D2010-0821; LEGO Juris A/S v. Maho Jakotyc,WIPO Case No. D2010-0835; LEGO Juris A/S v. Online Toy Superstore,WIPO Case No. D2010-0839; LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840; LEGO Juris A/S v..Dealwave,WIPO Case No. D2010-0881; LEGO Juris A/S v. Isidore Ventures, LLC / WhoisGuard Protected,WIPO Case No. D2010-0660.
18 Id.
19 Office for Harmonization in the Internal Market.
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