The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Erdinc Muslu of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2015. On March 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 proceeding commenced on April 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2015.
The Center appointed Zoltán Takács as the sole panelist in this matter on April 29, 2015. 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.
The language of this administrative proceeding is English, that being the language of the registration agreement. 4. Factual Background
The Complainant, a privately held company based in Billund, Denmark is the owner of the LEGO trademark, and all other trademarks used in connection with the famous LEGO brands.
The Complainant began manufacturing interlocking toy brick in 1949 and has since developed substantially, expanding use of the LEGO trademark to, among others, computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant has subsidiaries and branches worldwide, and LEGO products sell in more than 130 countries, including Turkey, home country of the Respondent.
According to the press release dated February 17, 2015, of BrandFinance Plc (headquartered in London, United Kingdom of Great Britain and Northern Ireland), the world’s leading brand valuation consultancy, “Lego Overtakes Ferrari as the World’s Most Powerful Brand”.
The Complainant owns numerous trademarks for LEGO around the world, including Turkish Trademark Registration No. 129710, registered on November 21, 1991 for goods in class 28 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks.
The disputed domain name was registered on November 26, 2014.
The Respondent has been passively holding the disputed domain name by not connecting it to an active website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name includes the Complainant’s LEGO trademark in its entirety, with the addition of the generic Top-Level Domain suffix “.help”, which is purely descriptive. The disputed domain name is identical to the Complainant’s LEGO mark in which it has exclusive rights worldwide through trademark registration and extensive use.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) and (iii) of the Policy.
The Complainant argues that given the LEGO trademark’s well-known status, the Respondent must have been aware of the Complainant’s LEGO trademark when registering the disputed domain name.
The Complainant claims that when it requested voluntary transfer of the disputed domain name the Respondent offered such transfer for a sum greatly exceeding out of pocket registration expenses, and both the Respondent and the previous owners of the disputed domain name have registered multiple third party trademarks as domain names which in overall is evidence of the disputed domain name being registered and used in bad faith. B. Respondent
Although the actual Respondent himself did not reply to the Complainant’s contentions, in this specific case the Panel considers important to set out the following.
The disputed domain name was originally registered on November 26, 2014 by a third party who transferred it on January 27, 2015 to another party, who finally transferred it on March 2, 2015 to the Respondent.
When the Complainant first contacted the original registrant, it was the Respondent – claiming to be acting on behalf of the original registrant – who replied and stated that the Complainant could get the disputed domain name in consideration of the payment of USD 500. When the Complainant turned down this offer, the original registrant of the disputed domain name transferred it to the second registrant.
The Complainant then contacted the second registrant and requested voluntary transfer of the disputed domain name, who this time requested payment of USD 1,000 and stated that he is about to sell the disputed domain name.
Shortly after the communication between the second registrant, the Complainant learned that the disputed domain name had been transferred to the Respondent who claimed to represent the original registrant of the disputed domain name.
Instead of sending further cease and desist letters the Complainant decided to try to recover the disputed domain name through the UDRP process. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in UDRP panel decisions that a respondent’s default does not automatically result in a decision in favor of the complainant. See paragraph 4.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the registrant of the disputed domain name has 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
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among the UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced sufficient evidence that it holds registered rights in the trademark LEGO, and for the purpose of this proceeding, the Panel establishes that the Complainant’s Turkish Trademark Registration No. 129710 for the mark LEGO satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the LEGO mark, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the LEGO mark of the Complainant.
According to paragraph 1.2 of the WIPO Overview 2.0, in order to satisfy the threshold test for identity or confusing similarity under the Policy, the relevant trademark would generally need to be recognizable as such within the domain name and the applicable top-level suffix in the domain name would usually be disregarded under the confusing similarity test, as it is a technical requirement of registration.
The only element of the disputed domain name – other than the gTLD “.help” suffix which is usually disregarded under the confusing similarity test – is the inherently distinctive LEGO trademark of the Complainant.
The Panel finds that the disputed domain name is identical to the LEGO trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the trademark LEGO.
The Complainant never authorized the Respondent to use its LEGO trademark in any way, and the Complainant’s prior rights in the LEGO trademark long preceded the date of registration of the disputed domain name.
It has been a consensus view among UDRP panels, that although the burden of proof rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production then shifts to the respondent.
The Respondent failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
On the basis of all these facts and circumstances, the Panel 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
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant presented extensive and undisputed evidence which convince the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
In view of the Panel there can be little doubt that the original registrant of the disputed domain name as well as the Respondent - who when the Complainant contacted the original registrant responded that he was representing the original registrant – was aware of about the well-known LEGO trademark of the Complainant at the time of registering and obtaining the disputed domain name.
The plausibility of this assumption is, in the opinion of the Panel, enhanced by the fact that the Respondent has registered multiple third party well-known trademarks as domain names, e.g.: , , , , , and etc.
The Panel finds these facts and circumstances to be clear indication of bad faith registration and use under paragraph 4(b)(ii) of the Policy.
Further, when the Complainant first contacted the original registrant of the disputed domain name, it appears that it was the Respondent – claiming to be acting on behalf of the original registrant – who replied and advised the Complainant that the disputed domain name would be transferred in consideration of payment of USD 500.
The second registrant, from whom the Respondent obtained the disputed domain name, requested USD 1,000 in order to transfer it to the Complainant.
The amounts, extents of these demands are well in excess of presumable out-of-pocket costs directly related to the disputed domain name, and the corresponding facts and circumstances in the view of the Panel amount to bad faith registration and use under paragraph 4(b)(i) of the Policy.
The disputed domain name has not been and is not connected to an active website.
According to paragraph 3.2 of the WIPO Overview 2.0, it has been a consensus view among UDRP panels that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith.
The Panel is of the opinion that the above discussed facts and circumstances surrounding registration and transfers of the disputed domain name, taken as whole, clearly manifest bad faith registration and use of the disputed domain name and finds that 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.
Zoltán Takács
Sole Panelist
Date: May 11, 2015
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