The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Torsten Kruger of Redwitz, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 7 2017. On November 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 2017, 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 November 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 8, 2017.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on January 10, 2018. 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 is based in Denmark and produces LEGO branded toys and other products. It licenses its intellectual property rights, including trademark rights, in multiple jurisdictions within and outside Europe, inter alia in Germany.
The trademark LEGO is registered in many jurisdictions and the Complainant has included a voluminous schedule of registrations to that effect in the Complaint. The trademark is inter alia registered in the European Union ("EU") (EU Trade Mark No. 000039800, registered on October 5, 1998) in relation to multiple classes of goods and services.
The disputed domain name was registered on July 15, 2017. The disputed domain name resolves to a website offering unrelated goods for sale. 5. Parties' Contentions A. Complainant
The Complainant is in the business of producing LEGO branded construction toys and other products. It is based in Denmark but has subsidiaries and branches throughout the world. LEGO products are sold in more than 130 countries, including Germany. The Complainant also owns close to 5,000 domain names incorporating the term "lego". According to the Complainant LEGO is among the best-known trademarks in the world because of extensive advertising and promotion. The Complainant asserts that the LEGO trademark and brand have been recognized as famous throughout the world. The Complainant has extended the product range in relation to which it uses the LEGO brand, inter alia to computer software and hardware. The Complainant maintains that because LEGO is a famous trademark, the protection of the mark extends far beyond the goods or services for which it is registered.
According to the Complainant the disputed domain name is confusingly similar to the registered trademark LEGO. It includes that mark as its first and most prominent part and in identical form. According to the Complainant the pairing of the LEGO mark with the generic suffix 'shop', results in a combination of a kind that has often been held to be confusingly similar to the incorporated registered mark. The addition of the term "shop" does nothing to detract from the overall conclusion of confusing similarity. The Top‑Level Domain ".top" is of no relevance here. According to the Complainant, there is a considerable risk that consumers will perceive the disputed domain name as owned by the Complainant or that there is a commercial relationship with the Complainant.
The Complainant has not identified any relevant trademark registration in the name of the Respondent, nor any legitimate use of the term "lego" by the Respondent. The Respondent appears to use other unrelated trading names so cannot claim any goodwill in the mark LEGO, the Complainant says. Further, the Respondent has not been licensed or authorized in any way by the Complainant in relation to the use of the term "lego". The Complainant also maintains that any use of its trademark in a domain name would violate its rights as a trademark owner given the level of notoriety or fame of the LEGO mark. In the circumstances it is quite clear, according to the Complainant, that the Respondent is simply attempting to benefit from what the Complainant refers to as its world famous trademark.
According to the Complainant, its reputation vested in its LEGO trademark, is what must have attracted the Respondent to registering the disputed domain name. The Complainant asserts that the number of unauthorized registrations of domain names incorporating the LEGO mark has skyrocketed in recent times, demonstrating the goodwill and reputation attaching to the mark around the world. The date of registration of the disputed domain name falls after the registration date of the Complainant's LEGO trademark (in 1998 in the case of the EU). The Respondent cannot realistically claim to have been ignorant of the LEGO mark at the date of registration, also given its widespread reputation. The Respondent never replied to any of the approaches the Complainant has made, including an offer to acquire the disputed domain name at cost. Failure in this sense has been held by earlier Panels to be an indicator of bad faith, as has incorporation of a well-known mark in and of itself.
According to the Complainant the disputed domain name is connected to a commercial website offering automotive and motorcycle products, vacuum cleaners and child car seats. Although these products are not connected with the Complainant in any way, there is no disclaimer on the connected website. Therefore, the Complainant contends, the Respondent is using the disputed 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
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is not identical to the LEGO trademark of the Complainant. However, the disputed domain name reproduces the Complainant's distinctive mark in its entirety and as the first and most prominent part of the disputed domain name. The Complainant's trademark is highly distinctive. The addition of the descriptive term "shop" does nothing to dispel the confusing similarity between the disputed domain name and the Complainant's LEGO trademark.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant's LEGO trademark. B. Rights or Legitimate Interests
There is nothing before the Panel that indicates that the Respondent has any rights or legitimate interests in the disputed domain name. The Complainant has not given any authorization for the use of its LEGO trademark in any form, nor does the Respondent even offer any legitimate LEGO products on the website to which the disputed domain name resolves. The Respondent is not somehow known by the name "lego", has no rights in that name and conducts no legitimate business by reference to it. It has no cause or justification to use the LEGO trademark in such a recognizable manner whatsoever. It has also never responded to the Complainant's approaches or provided any information that could possible legitimize its incorporation of a distinctive trademark in the disputed domain name.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The LEGO trademark is highly distinctive and well recognized in many jurisdictions, with considerable goodwill attaching to it. It had been used and promoted for many years prior to the registration of the disputed domain name. It is inconceivable that the Respondent obtained registration of the disputed domain name while remaining ignorant of the Complainant's exclusive rights in the LEGO mark. The combination of the term "lego" with the word "shop" further indicates that the Respondent was conscious of the reputation of the Complainant's mark and the kind of business it is engaged in. The term "shop" tends to reinforce the false impression that there is some sort of legitimate connection with the Complainant, as its goods are commonly sold through retail shops. The combination which the Respondent has chosen to incorporate is confusing to the average consumer who would expect to find the disputed domain name resolves to a website that has some approval of, or other legitimate connection with the Complainant. Further, to establish a website by use of a domain name that incorporates a generally recognized and well regarded mark, simply for the sake of catching consumers' attention, then to syphon off their trade by offering unrelated goods via that website, is an activity which can only be characterized as being in bad faith.
Therefore the Panel holds that the disputed domain name was registered and is being used in bad faith. 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.
William A. Van Caenegem
Sole Panelist
Date: January 22, 2018
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