Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Viktor Tkachev, Lego Town of Astrahan, Russian Federation. 2. The Domain name and Registrar
The disputed domain name is registered with ZhuHai NaiSiNiKe Information Technology Co Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2016. On February 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 10, 2016, 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 Registrar also stated that the Registration Agreement for the disputed domain name is in English. The Center sent an email communication to Complainant on February 11, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 12, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on February 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 10, 2016.
The Center appointed Dina Leytes as the sole panelist in this matter on March 24, 2016. 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
Complainant is a corporation organized and existing under the laws of Denmark. Complainant is the owner of the well-known trademark LEGO and owns trademark registrations in numerous countries throughout the world, including in China, the Russia Federation and the United States of America (the “Lego Mark”). Complainant submitted a spreadsheet setting forth its many trademark registrations worldwide. Complainant has historically used the LEGO Mark in connection with, inter alia, toy building blocks, household furnishings, robots, doll figures, and vehicular toys. In addition, Complainant has expanded its use of the LEGO Mark to include hardware and software, books, videos and computer controlled robotic construction sets. Complainant commenced use of the LEGO Mark through its predecessor in 1934. The LEGO brand is known worldwide and has received numerous accolades. For example, in 2014, TIME Magazine recognized LEGO as one of its most influential toys of all time.
The disputed domain name was registered on April 28, 2015. It is used in connection with a website that features a LEGO figurine, the word “LEGO,” and describes an online virtual world game with some form of revenue available to participants. It is available both in English and in Russian.
Respondent appears to be an individual, Viktor Tkachev, of Astrahan, Russian Federation.
Complainant made contact with Respondent or a prior registrant of the domain name on several occasions starting on September 28, 2015 by means of e-mail. While the registrant appeared initially to be willing to transfer the disputed domain name, communications between Complainant and the registrant ceased to be productive when Complainant indicated it would not pay the registrant anything in excess of out-of-pocket expenses. The registrant subsequently informed Complainant that it had transferred the disputed domain name to another registrant. Despite this, the disputed domain name continued to resolve to the same website. All e-mail communications between Complainant and the registrant provided to the Panel were in English. 5. Parties’ Contentions A. Complainant
First, Complainant alleges that the disputed domain name fully incorporates its well-known LEGO Mark followed by a hyphen and the generic term “town.” Complainant states that previous UDRP panels have found that the addition of a generic term following a trademark does not create a new or different right to the mark or diminish confusing similarity. Complainant further states that the addition of the generic Top-Level Domain (gTLD) “.com” does not reduce the confusing similarity between the LEGO Mark and the disputed domain name.
Second, Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that it has not licensed or otherwise authorized Respondent to use the LEGO Mark. Further, Respondent is not an authorized seller of Complainant’s products and has never had a business relationship with Complainant. Complainant alleges that LEGO is a famous trademark and argues that any use by a respondent of a domain name that incorporates a famous mark without authorization violates the exclusive rights of a complainant rights-holder. Complainant further alleges that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Complainant states that Respondent has intentionally chosen its domain name to generate traffic and income through an unauthorized commercial website. Complainant quotes from the “About” tab on the corresponding website, which reads in relevant part:
“LegoTown is an economic online-game with the possibility of withdrawing real money, where you play the role of entrepreneur purchasing ready-made businesses and running hotels, restaurants, and filling stations. Your task is to provide infrastructure functioning: do not forget to bring petrol to filling stations, buy products for your restaurant, pay for public service in your hotel etc. Investments will bring you a stable profit if you support all your enterprise activity: hire workers, pay wages to them, improve your knowledge and skills and build a profitable and reliable business.”
Complainant contends that as Respondent has no rights or legitimate interests in the disputed domain name, it is clear that Respondent chose the disputed domain name to trade upon the goodwill enjoyed by Complainant’s LEGO Mark.
Third, Complainant alleges that Respondent registered and is using the disputed domain name in bad faith. Complainant states that the disputed domain name is used with an unauthorized commercial website without a disclaimer to clarify the parties’ lack of relationship. Complainant contends that Respondent is using the disputed domain name to intentionally attract Internet users to the website for commercial gain by creating a likelihood of confusion with Complainant’s LEGO Mark as to the source, sponsorship, affiliation or endorsement of its website. Complainant contends that by using the disputed domain name, Respondent is not making a legitimate, noncommercial or fair use, but is misleadingly diverting consumers for commercial gain only. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant must prove 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 respondent 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.
The complainant bears the burden of proof on each of these elements. If a respondent does not submit a response to the complaint, a panel may draw appropriate inferences from such a default. However, the complainant must still support its assertions with actual evidence to succeed in a UDRP proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition at paragraph 4.6 and the cases cited therein. A. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the Parties or specified otherwise in the Registration Agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine the language of the proceeding based on the circumstances of the case. In this proceeding, the parties are Danish and Russian, while the Registrar is Chinese. According to the information received from the Registrar, the language of the Registration Agreement for the disputed domain names is English. Accordingly, this proceeding has taken place in English as well. B. Identical or Confusingly Similar
The Panel finds that Complainant has trademark rights in the well-known LEGO Mark and that the disputed domain name incorporates Complainant’s trademark in its entirety with the additional elements of a hyphen followed by the word “town” and the use of the gTLD “.com.” None of these additional elements are sufficient to distinguish the disputed domain name from Complainant’s mark.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by Complainant. C. Rights or Legitimate Interests
To prevail on this element, Complainant must make out at least a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may be used to show a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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 Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Based on the record before the Panel, Respondent has not made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. In contrast, Respondent chose the disputed domain name because it incorporates the well-known LEGO Mark as is evident from Respondent’s use of a LEGO figurine on the corresponding website. Rights or legitimate interests cannot be created where the registrant of the domain name at issue would not choose such a name unless the registrant was seeking to create an impression of association with the complainant. See Drexel University v. David Brouda,WIPO Case No. D2001-0067. Furthermore, Respondent is not affiliated with Complainant, Respondent is not known by the LEGO Mark, and there is no evidence that Respondent sought or obtained trademark rights in “Lego” or any variation thereof. Nor has Respondent received any license, authorization or consent to use the LEGO Mark in any manner from Complainant. Finally, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The prima facie case presented by Complainant is sufficient to shift the burden of production to Respondent to demonstrate that Respondent has rights or legitimate interests in the disputed domain name. By failing to file a response, Respondent has not presented any evidence of any rights or legitimate interests Respondent may have in the disputed domain name.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by Complainant. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that may evidence a respondent’s bad faith registration and use:
(i) circumstances indicating that the respondent has registered or has 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s 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 respondent’s website or location or of a product or service on respondent’s website or location.
The Panel finds that Complainant has demonstrated that Respondent registered and is using the disputed domain name in bad faith. The Panel finds that Respondent was aware of Complainant and the LEGO Mark when it registered the disputed domain name. The Panel finds that Respondent is using the disputed domain name to divert Internet users who are searching for Complainant’s website to Respondent’s own website by capitalizing on the public recognition of the LEGO Mark and that this constitutes bad faith use under the Policy. The Panel also finds that the actual or threatened cyberflight on the part of Respondent is further evidence of Respondent’s bad faith.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by Complainant. 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 Complainant.
Dina Leytes
Sole Panelist
Date: April 7, 2016
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