The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Christopher Kichenama-gourouvaya, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2020. On May 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 1, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 3, 2020 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 June 5, 2020. The Registrar also indicated that the language of the Registration Agreement was French. The Complaint was filed in English. The Center sent an email communication to the Complainant on June 3, 2020, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into French, or a request for English to be the language of proceedings. The Center also invited the Respondent to submit its comments. The Complainant filed a request for English to be the language of proceedings on June 5, 2020. 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 June 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2020. The Center appointed Geert Glas as the sole panelist in this matter on July 20, 2020. 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 a Danish based manufacturer and seller of construction toys and other products such as hardware and software, books, videos, and computer controlled robotic construction sets. The Complainant has subsidiaries and branches throughout the world and sells its products in more than 130 countries. The Complainant is the owner of hundreds of trademark registrations consisting of the word “lego", including several registrations covering France, where the Respondent resides. These registrations include the French trademark LEGO No. 1451218 registered on February 23, 1988. The Complainant has also provided evidence of the well-known character of its trademark. The Domain Name This homepage also displays the logos of HTC, CANON, APPLE, PALM, SONY, and HP but no products of any of these companies are offered for sale. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to its trademark LEGO. This is because the dominant part of the Domain Name is identical to its trademark LEGO, and the addition of the hyphen and geographical term “france” does not diminish the confusing similarity between the Domain Name and Complainant’s LEGO trademark. Moreover, considering that Complainant’s LEGO trademark is very well known, Complainant concludes that anyone confronted with the Domain Name will be bound to mistake it for a domain name related to the Complainant, including an obvious association with the LEGO trademark of the Complainant. The Complainant contends that the Respondent does not have rights in respect of the Domain Name as the Respondent does not have any registered trademarks or trade names corresponding to the Domain Name. The Complainant furthermore holds that the Respondent cannot claim any legitimate interests in respect of the Domain Name. No license or authorization was indeed granted by the Complainant, nor has there been any other business relationship with the Respondent. In addition, the Complainant holds that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services but that the Respondent is simply trying to benefit from the Complainant’s famous trademark. Rather than disclosing the fact that the Respondent is not linked in any way to the Complainant, the use of the Complainant’s trademark, logo and images of two of the Complainant’s toys suggest an affiliation with or sponsorship by the Complainant. The Complainant contends that the Domain Name was registered and is being used in bad faith. According to the Complainant, the considerable value and goodwill associated with the trademark LEGO is what motivated the Respondent to register the Domain Name. According to the Complainant, the Respondent cannot claim to have been using the trademark LEGO without being aware of the Complainant’s rights to it. The Complainant furthermore cites previous UDRP panel decisions to argue that the incorporation of a The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding The Panel looks at paragraphs 10 and 11 of the Rules, which set up the general powers of the Panel on the language of the proceeding. The Complaint was submitted in English. To this end, the Panel notes the silence of the Respondent, the proper notification of the proceeding both in English an French together with the Complaint to the Respondent, as well as the fact that the website to which the Domain Name gives access contains a number of English language references (“About us”, “Delivery Information”, “Privacy Policy” or “Terms and Conditions”) and a choice as to the currency between EUR, GBP, and USD. Hence, the Panel finds that English is the language in which the Decision is to be issued. B. Identical or Confusingly Similar In accordance with paragraph 4(a)(i) of the Policy, the Complainant must prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has provided sufficient evidence of ownership of numerous LEGO trademarks worldwide, including several registrations in France. The Domain Name incorporates the entirety of Complainant’s trademark LEGO, which is sufficient to establish confusing similarity (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206; Ice House America, LLC v. Ice Igloo, Inc.,WIPO Case No. D2005-0649). As to the presence of the word “France” in the Domain Name, it has been rightly held that the mere addition of a geographical term does not prevent a finding of confusing similarity (see inter alia, Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Six Continents Hotels, Inc and Inter-Continental Hotels Corporation v. South East Asia Tours,WIPO Case No. D2004-0388; Six Continents Hotels, Inc. v. Midas Search Limited,WIPO Case No. D2004-0986). Consequently, the Panel finds that the Domain Name is confusingly similar to Complainant’s LEGO trademark pursuant to the Policy, paragraph 4(a)(i). C. Rights or Legitimate Interests In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must demonstrate that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. Paragraph 4(c) of the Policy provides that the Respondent may have rights or legitimate interests in the following non--exhaustive circumstances: (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In respect of the bona fide offering of goods or services, whereas at first sight the website to which the Domain Name gives access does suggest that two LEGO goods are for sale, it lacks any further essential information to make an actual purchase of the goods possible, such as Terms & Conditions or delivery information. It should be noted in this respect that while the home page of this website does contain a number of links relating to “About us”, “Delivery Information”, “Privacy Policy” or “Terms and Conditions”, the underlying pages do not contain any such information, policy or terms. To qualify as bona fide use, prior UDRP panels have furthermore required that the website hosted on disputed domain names accurately discloses the registrant’s relationship with the trademark owner (see Houghton Mifflin Co. v. Weatherman, Inc.,WIPO Case No. D2001-0211). In the present case, the Respondent does not accurately disclose the relationship with Complainant, or rather the lack thereof in the circumstances at stake. To the contrary, the Respondent’s use of the Complainant’s logo in fact falsely suggests an affiliation with the Complainant. The Panel also finds that there is no indication that the Respondent would have been commonly known by the Domain Name. The Panel finds that Respondent has not made a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Use of a domain name cannot be considered fair if it falsely suggests affiliation with the trademark owner. In the present case, the use of Complainant’s logo suggests such affiliation. Moreover, the addition of the geographic term “France” to the Domain Name in fact suggests endorsement by the trademark owner (see Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla,WIPO Case No. D2016-1698). Internet users may indeed be under the false impression that the website to which the Domain Name gives access is the official French website for LEGO (see R.T. Quaife Engineering v. Luton,WIPO Case No. D2000-1201). Given that the Respondent did not reply to the Complainant’s contentions and by doing so opted not to seize the opportunity to demonstrate that he would have any rights or legitimate interests in respect of the Domain Name, the Panel considers that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the Domain Name and has satisfied its burden of proof under this element of the Policy. As a result, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name in accordance with the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith In accordance with paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following non-exhaustive circumstances shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” As mentioned above, the Complainant has provided sufficient evidence of ownership of numerous LEGO trademarks worldwide, including several registrations in France. These trademark registrations predate the registration of the Domain Name. Moreover, the Complainant has provided sufficient evidence of the well-known character of its trademark, which has been confirmed by prior UDRP panels (see inter alia, LEGO Juris A/S v. Level 5 Corp,WIPO Case No. D2008-1692 and LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715). The Panel finds that the Respondent has registered the Domain Name in bad faith. Prior UDRP panels have ruled that the overriding objective of the Policy is to curb the abusive registration of domain names where the registrant seeks to profit from and exploit the trademark of another (see Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230; The Procter & Gamble Company v. Whoisguard, Inc. / Enzo Gucci, Xtremcare, Tony Mancini, USDIET, USDIET Ltd,WIPO Case No. D2016-1881; 201 Folsom. Acquisition, L.P. v. John Kirkpatrick,WIPO Case No. D2014-1359 ). The Panel is satisfied that the Respondent cannot reasonably claim to have registered the Domain Name without being aware of Complainant’s rights to its LEGO trademark, particularly because of the well-known character of this trademark, including in France where Respondent resides. The Panel therefore considers that Respondent must have registered the Domain Name to profit from and exploit the trademark of the Complainant, and thus, in bad faith. The Panel also finds that the Respondent has used the Domain Name in bad faith. Prior UDRP panels have consistently ruled that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark, such as the trademark in the present case, by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of the WIPO Overview 3.0 and Barclays Bank PLC v. PrivacyProtect.org / Sylvia Paras, WIPO Case No. D2011-2011). The Panel finds moreover that by the prominent use of the Complainant’s logo on the home page of the website to which the Domain Name gives access, this website gives the impression that there is an affiliation with the Complainant. This Panel therefore considers that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website, which indicates use in bad faith. As a result, the Panel concludes that the Domain Name has been registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 Domain Name Geert Glas
well-known trademark into a domain name without having a plausible explanation may, in and of itself, be an indication of bad faith. Overall, the Complainant argues that the Respondent is using the Domain Name to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website. B. Respondent
Sole Panelist
Date: August 3, 2020
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