Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
Respondent is company for Education Tools, Lego Egypt of Zagazig, Egypt / Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2016. On September 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 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 Center sent an email communication to Complainant on September 5, 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 September 9, 2016.
The Center verified that 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 proceedings commenced on September 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 6, 2016.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 13, 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 states that it is in “the business of making and selling LEGO branded toys” via “subsidiaries and branches throughout the world” and that its “LEGO products are sold in more than 130 countries, including in Egypt.” Complainant further states that its LEGO-branded toys have been named by Time magazine as “the Most Influential Toy of All Time”.
Complainant states that it is the owner of the LEGO trademark, which is protected by numerous registrations in jurisdictions throughout the world. Complainant is the registrant of inter alia, International trademark registration number 287932, LEGO, registered on August 27, 1964, including Egypt among its designations.
Complainant states that it is the registrant of “over 5,000 domain names containing the term LEGO”.
The Disputed Domain Name was created on February 18, 2016, and is being used in connection with a website that says, “LEGO EGYPT Coming Soon” and includes an image of what Complainant describes as “a modified copy of the Complainant’s famous LEGO Minifigure.” Complainant states that it attempted unsuccessfully to contact Respondent about the Disputed Domain Name via letters and emails commencing on April 6, 2016, and that it filed a trademark complaint with Facebook about content apparently posted by Respondent, which Facebook removed or disabled. 5. Parties’ Contentions A. Complainant
Complaint contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the LEGO trademark because, inter alia, “[t]he dominant part of the Domain Name comprises the term LEGO, identical to the registered trademark LEGO”; and “the Domain Name also comprises the geographic term ‘Egypt’, a country in northeast Africa and southwest Asia, which does not negate the confusing similarity between the Domain Name and said trademark.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name”; “[n]either has the Complainant found anything apart from the whois details, that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in the name”; “[n]o license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO”; “Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a website that is still under construction, but that is likely intended for offering the Complainant’s LEGO products for sale, or other similar products”; and “Respondent is simply trying to sponge off the Complainant’s world famous trademark.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[c]onsidering that the Respondent is using the Complainant’s LEGO Minifigure design and that LEGO is a world famous trademark, it is quite clear that the Respondent knew of the Complainant’s legal rights in the name LEGO at the time of the registration”; and by using the Disputed Domain Name in connection with a website “showing clear references to the Complainant and links to a Facebook page that was used to offer the Complainant’s LEGO products,” including an image of “a modified copy of the Complainant’s famous LEGO Minifigure,” Respondent “is using the Domain Name to intentionally attempt to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.” B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the LEGO Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the LEGO trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “legoegypt”), as it is well established that the Top-Level Domain (i.e., “.com”) may generally be disregarded for this purpose. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“[t]he applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”)
The only difference between the Disputed Domain Name and the LEGO trademark is the addition of the geographic identifier “Egypt” to the Disputed Domain Name. As this Panel has previous said, “the addition of geographic identifier words could not avoid a finding of confusing similarity, but instead, increases the likelihood of confusion between [a] Domain Name and the Complainant’s trademark.” NACCO Materials Handling Group, Inc. v. Wendy Estrada,WIPO Case No. D2015-2146.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name”; “[n]either has the Complainant found anything apart from the whois details, that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in the name”; “[n]o license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO”; “Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a website that is still under construction, but that is likely intended for offering the Complainant’s LEGO products for sale, or other similar products”; and “Respondent is simply trying to sponge off the Complainant’s world famous trademark.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the respondent’s website or location or of a product or service on the respondent’s website or location. Policy, paragraph 4(b).
In this case, Complainant apparently argues that bad faith exists pursuant to Policy paragraph 4(b)(iv), for the reasons set forth above.
Numerous UDRP panels have found that registration and use of a domain name confusingly similar to a complainant’s trademark constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy where, as here, the domain name is used in connection with a website that appears to offer (or to soon offer) goods or services similar to those offered by Complainant under the same trademark, without authorization or an appropriate disclaimer. See, e.g., LEGO Juris A/S v. Nameinvest Inc. / Emma Boiton,WIPO Case No. D2014-0803 (“Respondent’s use of the domain names to promote the sales of products in competition with [Complainant’s] products constitutes bad faith”); and LEGO Juris A/S v. David McWilliams,WIPO Case No. D2014-0742 (“the use of a domain name that is confusingly similar to a trademark in order to attract Internet users to the Respondent's website clearly suggests bad faith”).
Accordingly, the Panel finds that Complainant has proven 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.
Douglas M. Isenberg
Sole Panelist
Date: October 27, 2016
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