The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Hulmiho Ukolen, Poste restante of Helsinki, Finland / Domain Admin, Whois protection, this company does not own this domain name s.r.o. of Prague, Czech Republic. 2. The Domain Name and Registrar
The disputed domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiD (the “Registrar”). 3.1. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2016. On August 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 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 and confirmed Finnish as the language of the registration agreement for the disputed domain name. The Center sent an email communication to the Complainant on August 11, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on August 15, 2016.
On August 11, 2016, the Center sent an email communication to the Parties in both Finnish and English regarding the language of the proceeding. On August 15, 2016, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 the Respondent of the Complaint, and the proceedings commenced on August 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2016.
The Center appointed George R. F. Souter as the sole panelist in this matter on September 14, 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. 3.2. Language of the Proceedings
As a preliminary matter, the Complainant stated in the Complaint that it believes that the language of the registration agreement in connection with the disputed domain name is English, and the Complaint was filed in English. An enquiry by the Center to the Registrar with whom the disputed domain name is registered, however, disclosed that the language of the registration agreement is Finnish. As the Complainant requested that the language of these proceedings should be English, and as the Respondent did not avail itself of the opportunity to participate in these proceedings, the Panel exercises its discretion under the Rules, and decides that the language of the proceeding in this case shall be English. 4. Factual Background
The Complainant is a Danish company which has, over many years, built up a worldwide reputation in its LEGO trademark in connection with branded toys. Details of the extensive registration of its LEGO trademark worldwide, together with details of its reputation internationally, have been supplied to the Panel. In that context, the Complainant owns inter alia the European Union Trade Mark (“EUTM”) LEGO, Registration No. 000039800, registered on October 5, 1998.
The disputed domain name was registered on December 31, 2015. The disputed domain name directs to a Sedo parking page displaying pay-per-click (“PPC”) links to the Complainant’s products. The disputed domain name is further offered for sale at the website to which it resolves. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its LEGO trademark, containing its LEGO trademark in its entirety, with the mere addition of a descriptive or nondistinctive element, namely “hobbit”, together with the legally irrelevant “.com” indicator.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant states that at no time has it ever consented to the Respondent’s use of its LEGO trademark, including as part of a domain name. The Complainant also alleges that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, as the Respondent’s use of the disputed domain name is in connection with a website featuring sponsored links.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website featuring sponsored links.
The Complainant sent several cease-and-desist letters, to none of which the Respondent replied. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(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. Identical or Confusingly Similar
It is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.info”, “.net”, “.org”) may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD “.com” to be irrelevant in the present case.
The Complainant has satisfied the Panel that its LEGO trademark is well known. It is well established in prior decisions under the UDRP that the addition of a descriptive or nondistinctive element to a well-known trademark is not sufficient to avoid a finding of confusing similarity. In the circumstances of the present case, the Panel regards the element “hobbit” as clearly such a descriptive or nondistinctive element, and the Panel consequently finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case. The Panel does not find the Respondent’s use of the disputed domain name to be of a nature to give rise to rights or legitimate interests in the disputed domain name within the meaning of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the only difference between the Complainant’s well-known trademark and the disputed domain name is the addition of a descriptive or nondistinctive element, are sufficient to justify a finding that the disputed domain name has been registered in bad faith, and the Panel, accordingly, finds that the disputed domain name was registered in bad faith.
The Panel finds that the Respondent is using the disputed domain name to attract pay-per-click revenue and has thereby intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website within the meaning of paragraph 4(b)(iv) of the Policy. The Respondent’s offering of the disputed domain name for sale provides further evidence of bad faith, under paragraph 4(b)(i) of the Policy
The Panel further notes that the Respondent Hulmiho Ukolen has appeared as respondent in a number of prior UDRP cases, for example Société nouvelle d’études, d’éditions et de publicité SNEEP v. Whois Protection / Hulmiho Ukolen,WIPO Case No. D2015-0663 and American Woodmark Corporation v. Domain Admin, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante,WIPO Case No. D2015-0641. In these prior UDRP cases a pattern of abusive registrations is, in the Panel’s opinion clear. It is the consensus view of panels in prior cases under the UDRP, for example Avnet, Inc. v. Aviation Network, Inc.WIPO Case No. D2000-0046; Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046; Investone Retirement Specialists, Inc. v. Motohisa Ohno,WIPO Case No. D2005-0643; Playboy Enterprises International, Inc. v. Tom Baert,WIPO Case No. D2007-0968; AMPO, S. COOP v. C, Taeho Kim, Philippine,WIPO Case No. D2009-0177 and Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty,WIPO Case No. D2009-0798, with all of which the Panel agrees, that where a pattern of abusive registrations can be elicited, a finding that a respondent falls foul of the provisions of paragraph 4(a)(iii) of the Policy is justified. The Panel so finds in the circumstances of the present case, and, accordingly finds that the Respondent falls foul of the provisions 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.
George R. F. Souter
Sole Panelist
Date: September 28, 2016
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