The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Mold Kiiler of Vilnius, Lithuania. 2. The Domain Name and Registrar
The disputed domain name, , is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2016. On July 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2016.
The Center received an email communication from the Respondent on August 19, 2016, following the Center’s notification of the Respondent’s default. On October 20, 2016, the Center received a second email communication from the Respondent.
The proceedings were suspended on August 25, 2016, at the request of the Complainant to explore settlement options. On September 26, 2016, the proceedings were reinstituted at the Complainant’s request.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on October 5, 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
The Complainant LEGO Juris A/S is a company based in Denmark and owns several registrations for the trademark LEGO worldwide, including the registration of May 1, 1954 for the trademark LEGO in Denmark. This mark issued in connection with the famous LEGO construction toys and other LEGO products.
The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark 1934, to identify construction toys made and sold by them. Today the Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. The LEGO trademark identifies also computer hardware and software, books, videos and computer-controlled, robotic construction sets. The Complainant also maintains an extensive website under the domain name .
The disputed domain name was registered on January 14, 2016, and resolves to a website directed to the commercialization of educational services. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it satisfies the three elements under the Policy, paragraph 4(a), and requests transfer of the disputed domain name.
Prior to the filing of its Complaint, the Complainant attempted to contact the Respondent through a cease‑and‑desist letter sent via email, advising the Respondent of the unauthorized use of the LEGO trademark within the disputed domain name and requesting the voluntary transfer of the disputed domain name to the Complainant. The Respondent did not answer to this first contact, so the Complainant addressed several reminders of this letter, but still no response was received.
The absence of any possible amicable settlement led to the filing of this UDRP Complaint. B. Respondent
The Respondent did not reply to the Complainant’s contentions within the time frame established by the Rules.
Nevertheless, on August 19, 2016, the Respondent addressed an email to the Center, which stated in full: “Hi, I agree DOMEN transfer Lego Creator. I want only the payment for the domain purchase, covered believes these losses. In total, only 20 $”.
On October 20, 2016, i.e., following the appointment of the Panel, the Respondent addressed an email to the Center, which stated in full: “ello, send us the form How can I transfer the domain and as you assign it!” 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Paragraph 15(a) of the Rules directs the panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant has presented numerous evidence of use and ownership of the registered mark LEGO in an extensive list of countries throughout the world. Further evidence of the fame the LEGO mark was presented.
The disputed domain name, , is indeed confusingly similar to the LEGO trademark, as it is fully incorporated within the disputed domain name. The addition of the word “toys” in the disputed domain name does not avoid confusing similarity. Furthermore, the generic Top-Level Domain (“gTLD”) may generally be disregarded for purposes of confusing similarity.
Moreover, this disputed domain name may be likely confused as part of the “family of websites” created by the Complainant under the LEGO mark umbrella, such as ; ; and even , among several others.
Given the above, the Panel concludes that the disputed domain name is confusingly similar with the registered marks of the Complainant. B. Rights or Legitimate Interests
The LEGO trademark is widely known, and the Complainant’s goods are sold under this mark in more than 130 countries. Without any license or authorization from the Complainant to use the LEGO trademark in a domain name, the Respondent has combined the Complainant’s trademark with the generic word “toys” in the disputed domain name. This leads to the conclusion that the Respondent was aware of the Complainant’s trademark and aware of its renown and value at the time of its registration of the disputed domain name.
In addition, the available record shows that the Respondent has no registered trademarks or trade names corresponding to the disputed domain name. In fact, the disputed domain name leads to a web page apparently intended to generate traffic and income through a commercial website offering education services under the name “Mold Kiiler Education Resource”, not related to the Complainant in any way.
Given the above, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel thus finds for the Complainant under the second element of the Policy. C. Registered and Used in Bad Faith
The facts outlined in section 6.A. and 6.B. above can also be used to evidence the Respondent’s bad faith registration and use of the disputed domain name.
As mentioned, the Panel finds the fame of the LEGO trademark is undeniable; it cannot be conceived that the Respondent did not know of its existence at the time of its registration of the disputed domain name, especially given the Respondent’s addition of the term “toys” to the Complainant’s trademark, which is revealing of the Respondent’s familiarity with the Complainant and the products for which it is known, i.e., toys.
In addition, the Respondent did not respond to the attempt of the Complainant to settle the matter amicably, nor has it responded to the Complainant’s contentions. This behavior has been considered as evidence of bad faith in many previous UDRP proceedings and supports a finding that the disputed domain name was registered in bad faith in this case.
Lastly, the Respondent’s website is directed to the commercialization of educational services. The Panel finds that the Respondent is using the disputed domain name to attract Internet users to this website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website, further evidencing the Respondent’s bad faith registration and use of the disputed domain name.
All of the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant and that the Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that the Complainant has also proved the third element of the Policy 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.
Alvaro Loureiro Oliveira
Sole Panelist
Date: October 31, 2016
Full & Egal Universal Law Academy