The Complainant is LEGO Juris A/S, of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondents are Domain Admin, PrivacyP, of Queensland, Australia; and Andrey Zvezdin, of Moscow, the Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2012.
On October 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 15, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 16, 2012.
The Center verified that the Complaint together with the amendment to 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 October 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2012. One of the Respondents sent several informal communications to the Center on October 23, 2012, on October 25, 2012, on October 29, 2012 and on November 7, 2012, respectively.
The Center appointed Christophe Caron as the sole panelist in this matter on November 21, 2012. 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, LEGO Juris A/S, based in Denmark, is an important company of toys’ construction.
The Complainant uses its numerous trademarks, notably composed of the term “lego”, to designate all its activities.
The Complainant is the owner of several LEGO international trademarks and multiple LEGO trademarks around the world, such as the LEGO trademark No. 42,932, in International class 28, registered in the Russian Federation, on April 20, 1971 and duly renewed.
The term “lego” is also the Company’s name.
Complainant also developed a presence on the Internet and is the owner of several domain names which contain the term “lego”, such as , , etc.
The disputed domain name was registered on January 10, 2012. This domain name resolves to a Russian website that is a copy of an official website of the Lego Company.
Moreover, a cease and desist letter was sent on May 30, 2012 by the Complainant to one of the Respondents (PrivacyP) in order to settle the dispute, but that Respondent did not reply to this letter. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions and arguments.
The Complainant argues that the dominant part of the disputed domain name comprises the word “lego”, which is identical to the trademark LEGO which has been registered by the Complainant in numerous countries all over the world.
According to the Complainant, the disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO.
The fame of its trademark has been confirmed in numerous previous UDRP decisions.
The additions of the suffix “friends” and of the generic top-level domain “.info” are not relevant and will not have any impact on the overall impression of the dominant part of the domain name, LEGO, instantly recognizable as a world famous trademark.
Moreover, the term “lego” is used at the first position of the domain name .
The Complainant argues further that it has not found that the Respondents have any registered trademarks or trade names corresponding to the disputed domain name and states that the Respondents are not authorized to use the trademark LEGO. The Complainant adds that it is highly unlikely that the Respondents would not have known of the Complainant’s legal rights in LEGO trademark at the time of the registration. According to the Complainant, it is rather obvious that it is the fame of the trademark LEGO that has motivated the Respondents to register the disputed domain name.
In addition, the Complainant states that by using the disputed domain name , the Respondents are not making a legitimate noncommercial or fair use without intent for commercial gain but rather Respondents are misleadingly diverting consumers for its own commercial gain. Consequently, the Respondents should be considered to have registered and to be using the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondents
Respondents did not send an official Response but rather several informal communications to the Center.
According to the email dated October 29, 2012, the first Respondent (Domain Admin PrivacyP) states that PrivacyP provides a WhoIs privacy service for domain name owners and that it is not the current owner of the disputed domain name.
According to the email dated October 23, 2012 and October 25, 2012, the second Respondent (Mr. Andrey Zvezdin) explains that the disputed domain name was created for information and “resale” purposes only.
He states that no product was ever sold through the website. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, complainant must prove each of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant have rights; and
(ii) Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of several LEGO international trademarks and multiple LEGO trademarks around the world, such as the local LEGO trademark No. 42,932, in International class 28, registered in the Russian Federation on April 20, 1971 and duly renewed.
This Panel finds that the disputed domain name reproduces the Complainant’s trademarks. Furthermore, this Panel believes that since the term “lego” is included in the disputed domain name, the likelihood of confusion is accentuated by the notoriety of the LEGO trademark.
In this Panel’s opinion, the addition of the term “friends” in the disputed domain name is not relevant and leads the public to believe that the Complainant is the owner of the disputed domain name. Moreover, the Complainant already operates the domain names and .
The Panel therefore finds that the disputed domain name is confusingly similar to many registered trademarks in which Complainant has rights. Thus, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainant has made a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain name by stating that Respondents have never been known by the disputed domain name, are not making a legitimate noncommercial or fair use of the disputed domain name and that Complainant has never given an assignment of its trademark rights or goodwill associated therewith, a license nor in any way authorized Respondents to make use of the Complainant’s LEGO trademarks. The Respondents have not rebutted the prima facie case made by Complainant.
This Panel is satisfied that the Respondents do not appear to have been commonly known by the disputed domain name, they are not a licensee or an agent of the Complainant, nor in any way are authorized to use the Complainant’s trademarks.
Furthermore, according to the Registrar’s verification, the disputed domain name was registered on January 10, 2012, after the Complainant’s registration of its famous trademarks. The Respondents cannot claim to have been using the term “lego”, without being aware of the Complainant’s rights to it. To this Panel, this proves that the Respondents’ interests cannot have been legitimate.
Therefore, this Panel states that The Respondents are not using the disputed domain name in connection with a bona fide offering of goods or services. Moreover, the Respondents have chosen a domain name based on a registered trademark in order to generate traffic to the website, which is a copy of an official LEGO Friends website. By doing this, this Panel is satisfied that the Respondents are misleading consumers.
The Respondents have not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the disputed domain name. Hence, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative, but are expressly non-exclusive, are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have 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.”
Firstly, this Panel is satisfied that the notoriety of the Complainant’s LEGO trademarks could not be ignored by the Respondents at the time of the registration of the disputed domain name. This circumstance indicates that the Respondents probably acquired the domain name for the purpose of selling, renting or otherwise transferring it to the Complainant or to a competitor of the Complainant for valuable consideration. The second Respondent explained that he registered the disputed domain name for “resale purposes only”
Secondly, the use of the term “lego” and “friends” in a domain name, in this Panel’s opinion, leads Internet users to believe that the website is owned by Complainant. It creates a likelihood of confusion with Complainant’s trademarks and activities.
Thirdly, the disputed domain name refers to a website which is a copy of the official LEGO Friends website. To this Panel, this could be considered as an evidence of bad faith use.
For all these reasons, it appears to this Panel that the disputed domain name was registered and is being used in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is made out. 7. Decision
In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel states that:
The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Respondents have no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Christophe Caron
Sole Panelist
Dated: November 26, 2012
Full & Egal Universal Law Academy