The Complainant is LEGO Juris A/S, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Ammar Briouel, Morocco / Brahim Mahjoubi, Morocco. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2019. On April 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 9, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 12, 2019. On April 9 and 12, 2019 the Center received two email communications from one of the Respondents, in response to which on April 16, 2019, the Center sent an email communication to the Parties, inviting them to explore settlement negotiations. On April 17, 2019, the Complainant confirmed it did not wish to pursue settlement.
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 April 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2019.
The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on May 23, 2019. 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 the owner of the mark LEGO and of all trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products. The Complainant has subsidiaries and branches throughout the world and LEGO products are sold in more than 130 countries.
The trademark LEGO has often been recognized as being among the best-known trademarks in the world.
Among other registrations, the Complainant owns the Moroccan trademark registration LEGO No. 27251 registered on June 23, 2003 in class 28.
The Complainant is also the owner of close to 5,000 domain names containing the term “lego”.
The Respondent Ammar Briouel registered the disputed domain name on February 2, 2019.
The disputed domain name was connected to a commercial website offering for sale LEGO products, in particular Millenium Falcon LEGO products. The website was disabled following a takedown request from the Complainant. It was then reactivated. The disputed domain name was also linked to a Facebook page.
The Respondent Brahim Mahjoubi registered the disputed domain name on February 12, 2019.
The disputed domain name was likewise connected to a commercial website offering for sale LEGO products, namely the Hogwarts Castle. The landing page displayed the logo “LEGO TECHNIC”. The disputed domain name was also linked to a Facebook page.
On February 18, 2019, the Complainant sent an email to the Respondent Brahim Mahjoubi, asking that he cease all commercial activity under the disputed domain name and transfer such domain name to the Complainant.
In the ensuing email correspondence, the Respondent Brahim Mahjoubi alleged that he was a website developer and not a reseller of goods. Asked by the Complainant whether he had registered the disputed domain name , he insisted that he had not registered this domain name or developed the website connected to such domain name.
The WhoIs records indicate that the Respondents have the same street address in the same city in Morocco, only the apartment number being different.
The Complainant sent a warning letter to the Respondent Brahim Mahjoubi on March 6, 2019. On March 14, 2019, the Respondent sent an email to the Complainant stating that “the domain name was deleted and the activity was stopped”. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are under common control, and that the Complainant should accordingly be allowed to proceed against the Respondents in a single complaint. The Complainant believes that the disputed domain names are under common control for the following reasons:
- The disputed domain names incorporate the Complainant’s LEGO trademark with the addition of the descriptive terms “poudlard” and “discounts”;
- The disputed domain names are registered with the same registrar;
- The registration dates of the disputed domain names were only 10 days apart;
- The disputed domain names are hosted on the same nameservers;
- The disputed domain names resolved – and still resolve in the case of -- to websites which sell LEGO products without authorisation;
- Prior to their takedowns, the websites were linked to Facebook pages, which were set up in a similar fashion and sold LEGO products without authorisation;
- Respondents are both located at the same street address.
On the issue of similarity, the Complainant contends that its mark LEGO is famous and that the addition of the terms “discounts” and “poudlard” (the French name for the Hogwarts castle in the Harry Potter books) have no impact on the overall impression of the dominant part of the disputed domain names, namely the mark LEGO. Consequently, the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
The Complainant contends that it has not found that the Respondents have any registered trademarks or tradenames corresponding to the disputed domain names. Neither has the Complainant found anything that would suggest that the Respondents have been using LEGO in any other way that would give them any legitimate rights in the disputed domain names. In addition, no license or authorization of any other kind has been given by the Complainant to the Respondents to use the trademark LEGO. The Respondents are not authorized resellers of the Complainant. The Complainant is of the view that the criteria laid down in the case Oki Data Americas Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, are not fulfilled in the present case, because the Respondents did not accurately disclose their relationship, or rather lack thereof, with the Complainant. There were no visible disclaimers on the websites or Facebook pages linked to the disputed domain names. Furthermore, the website under the disputed domain name prominently displayed the Complainant’s “LEGO TECHNIC” logo.
Finally, the Complainant asserts that the fame of the LEGO mark motivated the Respondents to register the disputed domain names. Consequently, the Respondents were undoubtedly using the disputed domain names to intentionally attempt to attract Internet users to their websites for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of their websites. By using the disputed domain names, the Respondents were not making a legitimate noncommercial or fair use, but were misleadingly diverting consumers for commercial gain. The Complainant concludes that the Respondents registered and used the disputed domain names in bad faith. B. Respondent
The Respondent Ammar Briouel did not submit a Response to the Complaint.
The Respondent Brahim Mahjoubi did not submit a formal Response. However, he informed the Center that the disputed domain name “did not exist anymore and was permanently removed from the Net”. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent 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 domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith. A. Consolidation of the Respondents
The Complainant has requested to be allowed to proceed against both Respondents in a single complaint, because it believes that the disputed domain names are under common control.
The Panel will address first this procedural issue before turning to the material conditions set forth in paragraph 4(a) of the Policy.
According to section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies), (ii) the registrants’ contact information (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (vii) the relevant language/scripts of the disputed domain names (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).
In the present case, the factors suggesting common control are the following: the Respondents’ contact details in the WhoIs records indicate the same street address and the disputed domain names are registered with the same registrar and hosted on the same name servers. Furthermore, the disputed domain names were registered more or less at the same time (only ten days apart).
On the other hand, the disputed domain names are not particularly similar as “discounts” refer to low prices and “poudlard” to a type of product. On the basis of the Annexes to the Complaint, the Panel did not see a strong similarity in the layout of the websites to which the disputed domain names resolved. In addition, the Respondent Brahim Mahjoubi, owner of the disputed domain name insisted that he had nothing to do with the other disputed domain name . Finally, whereas the website connected to the disputed domain name was deactivated and remained inactive, the website connected to the disputed domain name was reactivated.
In view of the above, on the balance of probabilities, the present case is sufficient for consolidation. The Panel will indeed allow it, because it considers that the similarity in the street address of the Respondents, combined with the choice of the same registrar and the registration in the same timeframe with the same nameservers, is unlikely to be coincidence. In addition, consolidation will not be detrimental to any of the Respondents. The Respondent Brahim Mahjoubi contends that he is not the registrant of the disputed domain name ; the possible transfer or cancellation of such domain name should be indifferent for him. The Respondent Ammar Briouel did not file a response to the Complaint, and did not express any opposition to the consolidation, even though he received notification of the Complaint by email. Such being the case, the Panel considers that consolidation is fair and equitable to all Parties. B. Identical or Confusingly Similar
The Complainant owns various trademark registrations for the word mark LEGO.
The disputed domain name reproduces the Complainant’s trademark in its entirety and combines this trademark with the descriptive term “discounts”.
The trademark LEGO is the most distinctive element in the disputed domain name. The mere addition of the descriptive term “discounts” does not change the overall impression produced by the disputed domain name. The Panel finds accordingly that the disputed domain name is confusingly similar to the trademark LEGO of the Complainant.
The disputed domain name reproduces the Complainant’s trademark in its entirety and combines this trademark with the term “poudlard”, which is easily recognizable for French speakers as the French name for Hogwarts, the wizardry school in the Harry Potter books.
Both “Lego” and “Poudlard” are distinctive terms. However, in combination with “Lego”, “Poudlard” is likely to be understood as reference to a category of LEGO toys, namely toys representing characters and buildings from the Harry Potter Books. In theWIPO Case No. D2012-2442 Lego Juris A/S v. Whois Privacy Services Pty Ltd / Dzone Inc., Yeonju Hong involving the Complainant, it was stated that “the addition of the suffix “hogwarts” does not impact the overall impression of the dominant part of the name, LEGO and is therefore not relevant to this Panel’s determination.” The same reasoning applies here. The Panel considers that “lego” is the dominant element of the disputed domain name, and that is confusingly similar to the mark LEGO.
The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Based on the information submitted by the Complainant, the Respondents are not licensees of the Complainant, nor has the Complainant granted to the Respondents an authorization to use the disputed domain names. Moreover, there is no indication that the disputed domain names correspond to the Respondents’ names.
The Respondents used the disputed domain names in connection with commercial websites offering for sale LEGO branded products.
As mentioned in section 2.8 of the WIPO Overview 3.0, panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test” (Oki Data Americas Inc. v. ASD, Inc.,WIPO Case No. D2001-0903), the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
In the present case, the Panel does not have enough elements to decide whether the first and second conditions of the “Oki Data test” were satisfied. On the other hand, the screenshots of the landing page of the websites to which the disputed domain names resolved did not feature any disclaimer concerning the relationship between the Respondents and the Complainant. In the case of the domain name, the logo “LEGO TECHNIC” of the Complainant was displayed in the top left corner of the page, creating the impression of an official website, operated or at least endorsed by the Complainant. Furthermore, both Respondents also prominently displayed the LEGO logo on the Facebook pages linked to the website to which the disputed domain names resolved.
By failing to accurately disclose the relationship, or rather lack thereof with the Complainant, the Respondents conveyed the false impression that the Respondents were authorized to use the Complainant’s trademark.
The Panel finds accordingly that the requirements of the “Oki Data test” are not met and that the Respondents do not have rights or legitimate interests in the disputed domain names.
The Complainant has thus satisfied the condition set out in paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Given the well-known character of the LEGO trademark and the use that the Respondents made of the disputed domain names, the Panel accepts that the Respondents most probably knew of the Complainant’s trademark when they registered the disputed domain names.
Because the Respondents did not disclose that they were not authorized resellers of the Complainant, and were not sponsored or endorsed by the Complainant, and because they used prominently the logos of the Complainant on their website (for ) and on their Facebook pages, the Panel finds it likely that they intentionally created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of their websites and Facebook pages for commercial gain. This is a circumstance of use of a domain name in bad faith according to paragraph 4(b) of the Policy.
Finally, the website was deactivated following a takedown request by Complainant, but was subsequently reactivated. The corresponding Respondent did not, however, seek to explain or justify his use of the disputed domain name, either at the time of reactivating the disputed domain name or following the notification of the Complaint. The Panel takes this as corroborating element of this Respondent’s bad faith use.
For the reasons set out above, the Panel finds that the Respondents have registered and used the disputed domain names in bad faith, and that the Complainant has satisfied the condition set forth in 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 names and be transferred to the Complainant.
Anne-Virginie La Spada
Sole Panelist
Date: June 6, 2019
Full & Egal Universal Law Academy