The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Leonid Žitnikov, Estonia.
2. The Domain Name, Registry and RegistrarThe Registry of the disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2021. On August 16, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On August 17, 2021, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 6, 2021. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was October 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2021.
The Center appointed Peter Kružliak as the sole panelist in this matter on October 29, 2021. 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 ADR Rules, Paragraph B(5).
The language of the ADR proceeding is English as decided by the Administrative Panel Decision related to the Request to Change the Language of the ADR Proceeding, LEGO Juris A/S v. Leonid Žitnikov,WIPO Case No. DEUL2021-0002, of August 10, 2021.
4. Factual BackgroundThe Complainant, LEGO Juris A/S is legal entity based in Denmark and the exclusive owner of vast number of registered trademarks consisting of the word “LEGO” in various jurisdictions throughout the world, with the key registration relevant for this case being the European Union Trade Mark (“EUTM”) for the word “LEGO” with registration number 000039800, filing date: April 1, 1996, date of registration: October 5, 1998, for the goods and services in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, and 42 of the Nice Classification of Goods and Services.
The Respondent is a natural person based in Estonia.
The disputed domain name was registered on December 8, 2020, and at the date of the decision does not resolve to an active website.
The Complainant has submitted evidence that it sought to contact the Respondent prior to initiating these proceedings to no avail.
5. Parties’ Contentions A. ComplainantThe Complainant argues that based on the relevant trademark registrations, the Complainant has the exclusive rights to the LEGO trademark, which is used for construction toys and LEGO branded products. The Complainant has subsidiaries and branches all over the world with LEGO products being sold in 130 countries, and is the owner of close to 5.000 domain names. LEGO brand is upon the Complainant among the best-known trademarks in the world, thus it is in possession of substantial inherent and acquired distinctiveness with the awareness in the whole Community being significant, thus providing the trademark with the status of well-known trademark extending the protection to prevent any use of the well-known trademark in connection with any trademarks and services.
The Complainant further argues that the dominant part of the disputed domain name contains the term LEGO identical to the registered trademark LEGO, thus being confusingly similar to the Complainant’s trademark, which has been confirmed as famous in numerous UDRP decisions. The suffix “bricks” is upon Complainant descriptive to the main product of the Complainant based on the precedent established in LEGO Juris A/S v. Dmitry Shelkovnikov,WIPO Case No. D2019-0555, thus is does not prevent a finding of confusing similarity. Lastly, the addition of country code Top-Level Domain (“ccTLD”) “.eu” does not have any impact on overall impression and is irrelevant to determine confusing similarity. The Complainant therefore argues that it is the owner of well-known trademark LEGO and the disputed domain name is confusingly similar to said trademark.
The Complainant further claims that the Respondent has not any registered trademarks or tradenames corresponding to the disputed domain name and the Complainant further did not find anything, which would suggest that the Respondent has been using LEGO in a way that would give him any rights or legitimate interests in the name. The Complainant has not licensed, authorized, or permitted the Respondent to register a domain name incorporating the Complainant’s trademarks, and the Respondent was neither a dealer of the Complainant’s products nor was in business relationship with the Complainant, all of which is a factor in finding a lack of legitimate interests based on previous precedent (Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 in relation to the absence of license and Dr.Ing.h.c. F. Porsche AH v Ron Anderson,WIPO Case No. D2004-0312 for lack of business relationship). The lack of rights or legitimate interests in respect of the domain name can be identified according to the Complainant in the use of the Complainant’s world famous trademark to create an impression of association with the Complainant (Drexel University v. David Brouda,WIPO Case No. D2001-0067); in the original use of the disputed domain name to redirect to other website containing content unrelated to the Complainant (Victoria Beckham v. David James,WIPO Case No. D2017-0035) and also subsequent use of the disputed domain name to a blank page without content (Philip Morris USA Inc. v. Muhammad Faisal,WIPO Case No. D2016-0621).
Regarding bad faith registration or use of the disputed domain name the Complainant argues that its LEGO trademark has a status of well-known and reputable trademark with a substantial and widespread goodwill and with significant and substantial awareness in the Community and as a result was subject to many cases of domain name infringement; the considerable value and goodwill associated with the trademark was most certainly what motivated the Respondent to register the disputed domain name. The Complainant further asserts that it registered the LEGO trademark well before the Respondent’s registration of the disputed domain name. As a result, the Respondent could not claim not to be aware of the Complainant’s rights to the LEGO trademark.
As per previous decisions, the Complainant further contends that bad faith of the Respondent is proven also because he failed to respond to the Complainant’s communication despite several reminders (News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460) and that an indication of bad faith is also incorporation of well-known trademark into a domain name without no plausible explanation (Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273 and also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568).
It is also clear according to the Complainant that the Respondent selected the disputed domain name to confuse unsuspecting Internet users to visiting the website it originally had resolved to. Such “bait-and-switch” tactics was held to be evidence of bad faith registrations (Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273). Similarly also not using the disputed domain name subsequently, i.e. passively holding it can constitute a factor in finding bad faith registration and use of the disputed domain name (Telstra Corp. v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Alitalia- Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260; DCI S.A. v. Link Commercial Corp,WIPO Case No. D2000-1232; Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,WIPO Case No. D2000-1228), especially when there are according to the Complainant no other indications that the Respondent could have registered and used the domain for non-infringing purpose and by using the suffix “bricks” only increased the likelihood of confusion with the Complainant.
Finally, according to the Complainant the disputed domain name was intended to confuse Internet user as to the source of the disputed domain name, especially since it contains the full LEGO trademark and the addition of descriptive “bricks” element, thus not only any plausible good-faith reason or logic for the registration by the Respondent is excluded, but also any use of the disputed domain name under these circumstances, whether actual or theoretical, would have to be in bad faith (Telstra Corp. v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Complainant concludes by contending that finding of bad faith hinges squarely on the probability that it was more likely than not that the respondent knew of, and targeted, the complainant’s trademarks, which is met in the present situation.
As a result according to the Complainant the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder Article 4(4) of the Regulation (EU) 2019/517 and Paragraph B(11)(d)(1) of the ADR Rules, the Panel shall issue a decision granting the remedies under the Procedural Rules if the Complainant proves:
(i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law and; either
(ii) that the disputed domain name has been registered by the Respondent without rights or legitimate interests in the name; or
(iii) that the disputed domain name has been registered or is being used in bad faith.
In accordance with Paragraph B(10)(a) of the ADR Rules: “In the event that a Party does not comply with any of the time periods established by these ADR Rules or the Panel, the Panel shall proceed to a decision on the Complaint and may consider this failure to comply as grounds to accept the claims of the other Party.”
Thus even though under Paragraph B11(d) of the ADR Rules it is the Complainant’s burden to establish that all three of the required criteria for granting the remedy sought have been met, the Panel would like to emphasize that the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant.
As the Complainant is an undertaking established in Denmark, a Member State of the European Union, the Panel finds that the Complainant satisfies the general eligibility criteria for registration set out in Paragraph 4(2)(b) of Regulation (EC) No 733/2002, as amended by Article 20 of the Regulation (EU) No 2019/517, and thus pursuant to sub-paragraph B11(b) of the ADR Rules the transfer of the disputed domain name is a remedy available to the Complainant.
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union lawThe Complainant has submitted evidence of its registered trademark rights for LEGO in the European Union and in various other jurisdictions. The Panel therefore holds that the trademark registration submitted by the Complainant satisfies the requirement of having a right recognized by the European Union law by virtue of the EUTM LEGO with registration number 000039800.
For purpose of comparing the Complainant’s LEGO trademark with the disputed domain name, it must be first noted that the ccTLD “.eu” is typically disregarded, as ccTLDs are merely required for technical reasons (see for instance Lidl Stiftung & Co. KG v. Name Redacted,WIPO Case No. DEU2018-0012, LEGO Juris A/S v. PHU C.N.O. Justyna Niedzielska, WIPO Case No. DEU2021-0001, DPDgroup International Services GmbH & Co. KG. v. Name Redacted,WIPO Case No. DEU2021-0005).
The disputed domain name incorporates the Complainant’s LEGO trademark in its entirety and adds the term “bricks”, which is descriptive for the products offered by the Complainant. The addition of such descriptive term to the disputed domain name is insufficient to avoid a finding of confusing similarity.
In the given case, since the Complainant’s trademark is included in its entirety and thus clearly recognizable in the disputed domain name and the descriptive suffix “bricks” clearly does not prevent a finding of confusing similarity, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark under Paragraph B(11)(d)(1)(i) of the ADR Rules.
B. Rights or Legitimate InterestsParagraph B(11)(e) of the ADR Rules provides that the following circumstances may demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of Paragraph B11(d)(1)(ii):
(1) prior to any notice of the dispute, the Respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;
(2) the Respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or Community law;
(3) the Respondent is making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law.
In accordance with section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)1 , as well as previous panel decisions (inter alia see Pet Plan Ltd v. Corner Store BV,WIPO Case No. DEU2018-0027 or Banque Delubac et Cie v. Pierre Dieudonne,WIPO Case No. DEU2018-0030, but also recently LEGO Juris A/S v. PHU C.N.O. Justyna Niedzielska, WIPO Case No. DEU2021-0001), where the Complainant presents a prima facie case that the Respondent lacks rights or legitimate interests to the disputed domain name, the burden of production on this element shifts to the Respondent.
The Complainant has clearly established that it holds rights to the LEGO trademark and claims that it has not licensed, authorized or permitted the Respondent to register a domain name incorporating the Complainant’s trademark. The Complainant also asserts that there was no business relationship between the Complainant and the Respondent.
Furthermore the Respondent does not appear to be commonly known by the disputed domain name and there is no evidence that might support such finding. There is also no indication that the Respondent uses (or has made bona fide preparations to use) the disputed domain name in a business or otherwise. The disputed domain name based on its composition also carries a high risk of implied affiliation with the Complainant.
Thus the Complainant presented a prima facie case that the Respondent lacks rights or legitimate interests.
By not filing a response, the Respondent did not challenge the arguments of the Complainant included in the Complaint nor did it provide any evidence that might prove the Respondent’s rights or legitimate interests to the disputed domain name.
The Panel therefore finds that under the present circumstance the Respondent has no rights or legitimate interests in the disputed domain name and that the second element of Paragraph B(11)(d)(1) of the ADR Rules is therefore satisfied.
C. Registered or Used in Bad FaithFor purposes of Paragraph B11(d)(1)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, may be evidence of the registration or use of a domain name in bad faith:
(1) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the holder of a name, in respect of which a right is recognized or established by national and/or Community law, or to a public body; or
(2) the domain name has been registered in order to prevent the holder of such a name in respect of which a right is recognized or established by national and/or Community law, or a public body, from reflecting this name in a corresponding domain name, provided that:
(i) the Respondent has engaged in a pattern of such conduct; or
(ii) the domain name has not been used in a relevant way for at least two years from the date of registration; or
(iii) there are circumstances where, at the time the ADR Proceeding was initiated, the Respondent has declared its intention to use the domain name, in respect of which a right is recognized or established by national and/or Community law or which corresponds to the name of a public body, in a relevant way but failed to do so within six months of the day on which the ADR Proceeding was initiated;
(3) the domain name was registered primarily for the purpose of disrupting the professional activities of a competitor; or
(4) the domain name was intentionally used to attract Internet users, for commercial gain to the Respondent’s website or other online location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and/or Community law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent; or
(5) the domain name is a personal name for which no demonstrable link exists between the Respondent and the domain name registered.
Although the second element of Paragraph B(11)(d)(1) of the ADR Rules is satisfied, the Panel will make the following findings regarding the third element, i.e. registration or use of the disputed domain name in bad faith.
The Panel first notes that not only based on evidence presented by the Complainant, but also in line with previous findings of several UDRP panels, including recently LEGO Juris A/S v. PHU C.N.O. Justyna Niedzielska,WIPO Case No. DEU2021-0001, the Complainant’s LEGO trademark is famous.
Furthermore when considering the composition of the disputed domain name, especially the use of the term “bricks”, which clearly refers to the products offered by the Complainant, it is in the opinion of the Panel likely that not only the LEGO trademark was known to the Respondent at the moment of registration but the disputed domain name was registered to take advantage of the reputation and the goodwill of the LEGO trademark.
The Panel further finds that even though at the time of its decision the disputed domain is not actively used, only passively held, since it does not resolve to any website, in line with the previous decisions in similar circumstances, when considering the circumstances of the case and especially the composition of the disputed domain name that contains the well-known LEGO trademark in its entirety and supplements it with suffix that is clearly descriptive for the products offered by the Complainant, there is no plausible future alternative use of the disputed domain name that would be legitimate. Thus under the present circumstances even mere passive holding of the disputed domain name would not prevent a finding of bad faith (for similar finding see LEGO Juris A/S v. PHU C.N.O. Justyna Niedzielska, WIPO Case No. DEU2021-0001). Regarding its previous use for a website with products unrelated to the Complainant’s products, the Panel finds that is not a legitimate use of the disputed domain name.
Therefore when considering all the facts and evidence presented by the Complainant and also the failure of the Respondent to challenge the Complainant’s submissions by not filing a response, the Panel finds that the disputed domain name has been registered and is being used in bad faith and accordingly also the third element of Paragraph B(11)(d)(1) of the ADR Rules is satisfied.
7. DecisionFor the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name,
Peter Kružliak
Sole Panelist
Date: November 18, 2021
1 Given the similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) the Panel will, where applicable, refer to UDRP jurisprudence, and thus WIPO Overview 3.0.
2 The decision shall be implemented by the Registry within thirty (30) days after the notification of the decision to the Parties, unless the Respondent initiates court proceedings in a Mutual Jurisdiction, as defined in Paragraph A(1) of the ADR Rules.