The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Karol Slawinski, Max-firma, of Bialystok, Poland. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2013. On November 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 2013, the Registrar 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 November 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2013. On December 13, 2013, the Center informed the parties that, due to an oversight, the facsimile to the technical contact of the Registrant was not sent. Accordingly and in the interests of due process the Center granted the Respondent with five additional days to indicate to the Center whether it intends to participate in these proceedings. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2013.
The Center appointed Louis Buchman as the sole panelist in this matter on December 23, 2013. 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.
Regarding the language of the proceeding, the Complainant produced a copy of the Registration Agreement, which is in the English language. Accordingly, the Panel determines that pursuant to paragraph 11(a) of the Rules the language of the proceeding is English, i.e. the language of the Registration Agreement. 4. Factual Background
The Complainant, which is a Danish company, is the owner of one of the world’s most famous trademarks, LEGO (the “Trademark”), which is registered as a word mark in several classes in many countries, including Poland (registration number 46740 for LEGO). The LEGO group sells its LEGO-branded construction toys in more than 130 countries, including in Poland. The Complainant or its predecessors have commenced using the LEGO trademark in 1953 and it has been used extensively and continuously worldwide since then. In addition, the Complainant is the owner of more than 1,000 domain names containing the Trademark (including ).
The disputed domain name was registered by the Respondent on September 12, 2013.
The Complainant sent to the Respondent on November 4, 2013 a cease and desist letter. 5. Parties’ Contentions A. Complainant
(i) The Complainant contends the Trademark is a well-known mark within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property (confirmed and extended by Articles 16.2 and 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights).
(ii) The Complainant submits that the disputed domain name is confusingly similar to the Trademark and that neither the use of the suffix “sklep” (meaning “store” in Polish) nor the use of the generic top-level domain (gTLD) “.com” have any impact on the overall impression of the dominant part of the domain name.
(iii) The Complainant contends since the Complainant’s adoption and extensive use of the Trademark predates the registration date of the disputed domain name, the burden is on the Respondent to establish rights or legitimate interests in the disputed domain name, and that the Respondent has no registered trademarks or trade names corresponding to the disputed domain name nor any rights or legitimate interests in respect of the disputed domain name.
(iv) The Complainant submits that because LEGO is a famous trademark, it is highly unlikely that the Respondent would not have known of the Complainant’s rights at the time of registration of the disputed domain name.
(v) The Complainant contends that the Respondent’s bad faith registration and use of the disputed domain name is established by the fact that the Respondent had received no authorization, license or permission to use it, that the Respondent had constructive notice of the Complainant’s Trademark due to it being famous, and by the fact that the disputed domain name is used to attract Internet’s users to the Respondent’s website for commercial gain, thus sowing confusion with the Complainant’s famous mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site, and tarnishing the Trademark.
(vi) 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 A. Procedural Aspects
The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the deadline set by the Policy and the Rules.
Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the assertions made in the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three required criteria for a transfer of the disputed domain name or other remedy have been met.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith. B. Requirements of Paragraph 4(a) of the Policy (i) Identical or Confusingly Similar
In comparing the Trademark with the disputed domain name , it is evident that the latter contains the Trademark in its entirety. The purely descriptive word suffix “sklep” (“store” in Polish) does not introduce a relevant distinction from the Trademark. The Panel also notes that it has already been decided by another panel in LEGO Juris A/S v. Andika Jaya Kusuma, WIPO Case 2013-0113, that the addition of the suffix “store” to the LEGO trademark did not prevent a finding of confusingly similarity between the disputed domain name and the Trademark.
Besides, it is well-established that the top-level domain, such as “.com”, does not typically affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493; Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015; Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor,WIPO Case No. D2001-1367; Société Générale and Fimat International Banque v Lebanon Index/La France DN and Elie Khouri,WIPO Case No. D2002-0760; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672 and Allianz AG v. Marian Dinu,WIPO Case No. D2006-0318.
The Panel finds that the disputed domain name, which incorporates the Trademark in its entirety, is confusingly similar to the Trademark.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. (ii) Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name once the complainant has made a prima facie showing. The Panel finds that the Complainant has made such showing in this case. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
As previously noted, the Respondent did not submit a response, thus offering no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business.
The website associated with the disputed domain name resolves to a website offering for sale goods similar to those of the Complainant.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent has no rights or legitimate interests in the disputed domain name, has received no license or authorization from the Complainant, and is not an approved reseller.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy. (iii) Registered and Used in Bad Faith
As noted above, the Respondent failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name, similar to the Trademark.
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; Research in Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin,WIPO Case No. D2002-0440; and Pfizer Inc. v. NA,WIPO Case No. D2005-0072.
As recognized in several previous WIPO cases (see LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715 and LEGO Juris A/S v. Reginald Hastings Jr.,WIPO Case No. D2009-0680), the Panel considers the Trademark as famous.
Thus, it is highly unlikely that the Respondent chose to register the disputed domain name randomly with no knowledge of the Complainant’s Trademark. See Barney’s Inc. v. BNY Bulletin Board,WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs,WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092.
Where the respondent knew or should have known of the trademark prior to registering the disputed domain name, such conduct may also demonstrate bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
Some UDRP panels have also held that in certain circumstances, the respondents have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others, and that contravening that duty may constitute bad faith. See paragraph 2(b) of the Policy; Nike, Inc v. B.B. de Boer,WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex,WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141.
The Panel also notes that the Center’s search engine on its website reveals, when searched by the name of the Complainant, more than 40 cases in 2013 in which the Complainant is the named complainant, thus highlighting the large number of instances in which the Complainant has to combat cybersquatting.
As the Complainant points out, the disputed domain name is being used to divert Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation, or endorsement of the Respondent’s website and the products offered on the website.
In addition, the Panel notes that many UDRP panels have found bad faith use if a respondent’s good faith use is in no way plausible when considering the specificity of the activity (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148).
Moreover, it has been noted in several WIPO cases that the failure of a respondent to respond to a cease and desist letter, or to a similar attempt at contact, is relevant in a finding of bad faith. See News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name are in bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is satisfied. 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 disputed domain name be transferred to the Complainant.
Louis Bernard Buchman
Sole Panelist
Date: January 6, 2014
Full & Egal Universal Law Academy