The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Guler Karadag, Lego Web of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2016. On July 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2016.
The Center appointed David H. Bernstein as the sole panelist in this matter on September 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 manufacturer of toys. The Complainant holds numerous trademark registrations in the LEGO mark. In Turkey, the country in which the Respondent appears to be based, the Complainant first registered its LEGO word mark in 1964, more than half a century prior to the Respondent’s registration of the disputed domain name. The Complainant states that it owns “close to 5,000” domain names containing the term “lego”, including , , , and .
The disputed domain name was registered with the Registrar on December 16, 2015. The disputed domain name resolves to a website that appears to offer web design services by a company that identifies itself as “LegoWeb”. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is identical or confusingly similar to the LEGO mark in which it has rights. The Complainant has provided evidence that it owns registrations for the trademark LEGO in multiple jurisdictions. The Complainant contends that the trademark LEGO is well known due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising and promotional materials. It supports its contention that the trademark is recognized as famous by annexing a report of the “Top 500 Superbrands for 2015” recognizing LEGO as among the top 20 brands in the world. The Complainant also cites numerous past UDRP decisions in support of the notoriety of its LEGO mark worldwide. See, e.g., LEGO Juris A/S v. Dios Oft,WIPO Case No. D2014-0726 (observing that “previous decisions have consistently found that the Complainant’s LEGO trademark is highly renowned and carries a significant commercial presence worldwide”).
The Complainant contends that the disputed domain name is similar to its LEGO mark and that the differences between this mark and the disputed domain name are not sufficient to mitigate the confusion. In particular, the Complainant stresses: (i) that the disputed domain name entirely comprises the trademark LEGO; (ii) that the generic Top-Level Domain (“gTLD”) suffix “.net” is not distinctive and should not be taken into account in the analysis; and (iii) that the generic suffix “web” contained in the disputed domain name is irrelevant because it has no impact on the overall impression of the trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant alleges that the Respondent is not known by the name “lego” and that the Respondent has not registered any trademark in this term. Additionally, the Complainant states that there is no business connection between the parties, and that the Complainant at no time granted any right to the Respondent to use the disputed domain name. The Complainant also contends that there is a considerable risk that anyone who sees the disputed domain name will perceive it as a domain name owned by the Complainant, or will mistake the website to which the dispute domain name resolves as having a commercial relationship with the Complainant. In this way, the Complainant alleges that the disputed domain name exploits the goodwill of the LEGO trademark.
Finally, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith because it must have known of the trademark LEGO at the time it registered the disputed domain name, given the notoriety of the LEGO trademark. The Complainant further contends that the Respondent is likely profiting from consumers’ confusion by directing Internet users, for commercial gain, to services unrelated to the Complainant. The Complainant also alleges, as an indication of bad faith, that the Respondent did not respond to its cease-and-desist letter and follow-up correspondence. B. Respondent
The Respondent did not reply to the Complainant’s contentions.1 In view of the Respondent’s failure to submit a Response, the Panel shall decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, and shall draw any inferences that it considers appropriate pursuant to paragraph 14(b) of the Rules. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove, by a preponderance of evidence, the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) addresses the potential impact of the Respondent’s default:
“A respondent’s default does not automatically result in a decision in favor of the complainant. Subject to the principles described in paragraph 2.1 above with regard to the second UDRP element, the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”
Thus, notwithstanding the Respondent’s failure to respond to the Complaint, the burden remains on the Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
The Complainant has submitted evidence of its ownership of registrations for the LEGO mark in, inter alia, Turkey and the European Union. As such, the Complainant has clearly established that it has rights in the LEGO trademark. See Paragraph 1.1 of theWIPO Overview 2.0 (“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.”).
The Complainant has also established that the disputed domain name is confusingly similar to this mark in that the domain name incorporates the mark in its entirety. See, e.g., Starwood Hotels & Resorts Worldwide, Inc. v. Robert Tokich,WIPO Case No. D2015-0927. The addition of the dictionary term “web” and the gTLD “.net” do nothing to undermine the confusing similarity between the disputed domain name and the LEGO trademark. See Paragraph 1.9 of the WIPO Overview 2.0 (“[t]he addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP”).
The Panel therefore concludes that the disputed domain name is confusingly similar to the Complainant’s LEGO mark. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant has the burden of making a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Once this burden is met, the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name (though the burden of proof remains on the Complainant at all times). See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. If the Respondent does not satisfy its burden of coming forward with some evidence to rebut the Complainant’s prima facie showing, or if Respondent fails to file a response at all, the Complainant’s prima facie showing will be sufficient to meet its burden of demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name. Moroccan Financial Board v. Abdullah Riahi,WIPO Case No. D2011-0751.
The Complainant has made the requisite prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has demonstrated that it owns the LEGO trademark worldwide and that it has not granted the Respondent any right to use that mark. The Complainant further alleges that the Respondent has not been commonly known by, nor acquired trademark rights in, the LEGO mark. And the Complainant alleges that the Respondent did not use the disputed domain name for legitimate noncommercial or fair use purposes; to the contrary, the website to which the disputed domain name resolves purports to offer web design services unrelated to the Complainant’s products.
For these reasons, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Bad faith use and registration may be established under paragraph 4(b)(iv) of the Policy, if the Complainant can show that the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location.” That appears to be the case here given that the Respondent is using a domain name confusingly similar to Complainant’s trademark to promote web design services, which likely would confuse consumers.
By using the Complainant’s famous trademark as the distinctive element of the disputed domain name, the Respondent creates a risk of confusion that the visitors to the website will initially expect to access a website operated by the Complainant, or that the web design services promoted on the website are associated with or endorsed by the Complainant.
The Panel therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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.
David H. Bernstein
Sole Panelist
Date: September 17, 2016
1 Because the Respondent did not submit a Response, the Panel has carefully reviewed the record to ensure that the Center discharged its obligation to notify Respondent of the Complaint pursuant to paragraphs 2(a) and 4(a) of the Rules. See Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415.
On August 4, 2016, the Center sent written notice of the Complaint via DHL to the address provided in the WhoIs records and the address listed on the website connected to the disputed domain name. On August 4, 2016, the Center also attempted to provide the Respondent with notice by e-mail and fax. The Center forwarded a copy of the Complaint, including all annexes, to the e-mail addresses provided by the Registrar and available on the website connected to the disputed domain name: […]@, […]@, […]@ and postmaster@. The Center also sent these documents to the fax number provided by the Registrar. The fax number returned an error, and the Center received no responses from the email addresses.
The Panel concludes that the Center has employed “reasonably available means calculated to achieve actual notice to Respondent” and that any failure of receipt of actual notice is the fault of the Respondent for failing to provide valid contact information in its Whois records. Accordingly, the Panel concludes that the Center has discharged its obligation to notify the Respondent of the Complaint pursuant to paragraphs 2(a) and 4(a) of the Rules.
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