The Complainant is Lego Juris A/S, Denmark, represented Zacco Sweden AB, Sweden.
The Respondent is Mohammad Sadegh Tabesh, Islamic Republic of Iran (“Iran”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2021. On February 1, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On February 2, 2021, IRNIC 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 .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 5, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2021. On March 1, 2021, the Center notified the Respondent’s default. The Center appointed Steven A. Maier as the sole panelist in this matter on March 9, 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 Rules, paragraph 7. 4. Factual Background The Complainant is a company registered in Denmark. It is a supplier of construction toys, entertainment products and theme parks under the name and trademark LEGO. The Complainant is the owner of numerous trademark registrations throughout the world which comprise or include the LEGO mark. Those registrations include: - Islamic Republic of Iran trademark number 25637 for the word mark LEGO, registered on April 27, 1964 in International Classes 16, 20, 22, 25 and 28; - Islamic Republic of Iran trademark number 45055 for a device mark comprising the word LEGO in stylized lettering (the “Device Mark”), registered on May 11, 1976 in International Class 28; and - European Union trademark number 018110883 for the word mark LEGO EDUCATION, registered on December 21, 2019 in International Classes 9, 16, 28 and 41. The Complainant is the operator of websites at “www.lego.com” and “www.legoeducation.com”. It registered the domain name IRNIC confirmed that the disputed domain name was created on September 22, 2007 and registered by the Respondent on June 9, 2016. The disputed domain name has resolved to a website primarily in the Persian language at “www.legoeducation.ir”. The Complainant has produced evidence that each page of the website is headed LEGO EDUCATION with the word LEGO represented by the Device Mark. The Complainant has produced a translation of the website, from which it appears that the website claims to be operated by “the exclusive representative of LEGO education in Iran”. The website appears to offer certain of the Complainant’s products for sale in addition to educational services. 5. Parties’ Contentions A. Complainant The Complainant submits that its LEGO mark is among the world’s best known and most reputable trademarks, as the result of decades of advertising and its prominent use of the LEGO mark on all products, packaging and promotional materials. It states that its products are sold in over 130 countries and that the LEGO mark has received numerous accolades, including recognition as the number one brand in both the Superbrands list of consumer brands and the Reputation Institute’s list of the world’s most reputable companies. The Complainant states that its LEGO EDUCATION initiative is aimed at schools and provides students with a hands-on learning experience through physical and digital creating using LEGO bricks and digital tools. The Complainant submits that the disputed domain name is confusingly similar to its LEGO trademark. It contends that the LEGO trademark is instantly recognizable within the disputed domain name and that the addition of the term “education” has no effect on the overall impression given by the disputed domain name of an association with the Complainant. The Complainant also relies on its LEGO EDUCATION trademark, although it accepts that this trademark is not registered in Iran. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never authorized the Respondent to use its LEGO or LEGO EDUCATION trademarks, that the Respondent has not commonly been known by a name corresponding to the disputed domain name and that the Respondent is not making any bona fide commercial use of the disputed domain name. Insofar as the Respondent uses the disputed domain name for the purpose of the website described above, the Complainant submits that the Respondent fails to disclose its lack of any commercial relationship with the Complainant and conveys a false impression that such an association exists. The Complainant refers in particular to the lack of any disclaimer on the website, the Respondent’s claim that it is the exclusive representative of the Complainant in Iran and its extensive use of the LEGO trademark and the Device Mark on its website. The Complainant submits that, in these circumstances, the conditions for the legitimate use of the Complainant’s trademark by an unauthorized reseller as set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, have not been met. The Complainant submits that the disputed domain name was registered or is being used in bad faith. The Complainant states that it is obvious from the Respondent’s use of the disputed domain name that it was aware of the Complainant’s LEGO trademark at the date it registered the disputed domain name and both registered and has used the disputed domain name with the intention of taking unfair advantage of the Complainant’s goodwill. The Complainant submits, in particular, that the Respondent is using the disputed domain name to impersonate and falsely imply a connection with the Complainant and that, by using the disputed domain name, the Respondent has sought to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The Complainant further submits that the Respondent did not reply to a “cease and desist” letter received from the Complainant, which is further evidence of the Respondent’s bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar The Complainant has established that it has registered trademark rights in the marks LEGO EDUCATION and LEGO. The disputed domain name is identical to the first such trademark, it being irrelevant for the purpose of assessment under paragraph 4(a)(i) of the Policy that this trademark was registered after the disputed domain name or that it is not registered in Iran. The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s trademark LEGO, as the addition of the dictionary term “education” does not prevent the Complainant’s trademark from being recognizable within the disputed domain name. The Panel therefore finds that the disputed domain name is identical and confusingly similar to trademarks in which the Complainant has rights. B. Rights or Legitimate Interests In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. In certain limited circumstances, it may be permissible for a registrant to use a domain name which incorporates another party’s trademark for the purpose of reselling that trademark owner’s goods. The criteria accepted by Uniform Domain Name Dispute Resolution Policy (“UDRP1 ”)panels for such legitimate use are set out in Oki Data Americas, Inc. v. ASD, Inc., supra and are further discussed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8.1. These criteria include the requirement that the website must accurately and prominently disclose the registrant’s relationship with the trademark holder, with the object that visitors to the website are not misled into believing that the website is operated or authorized by the trademark owner. In this case, the Panel finds on the evidence that the Respondent’s website fails to meet that requirement. Not only does the website fail to include any relevant disclaimer, but it also makes prominent use of the LEGO and LEGO EDUCATION trademarks and the Device Mark in a manner that is likely to mislead Internet users into believing that the website is authorized by or affiliated with the Complainant. The Panel also observes that a domain name that is inherently misleading in nature cannot normally be employed for bona fide commercial purposes. Here the Panel finds that the disputed domain name is identical to the Complainant’s LEGO EDUCATION mark and closely mimics its The Panel concludes in the circumstances that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered or Used in Bad Faith Based on both the composition of the disputed domain name and the use to which it has been put, the Panel infers that the Respondent knew of the Complainant and its trademarks LEGO and LEGO EDUCATION at the date it registered the disputed domain name and that it did so with the dishonest intention of representing an association between the disputed domain name and the Complainant and its business. The Panel further finds that the Respondent has used the disputed domain name misleadingly to attract Internet users to its website in the mistaken belief that it is owned, operated or authorized by the Complainant. In addition, the content of the website itself adds to that impression by making extensive use of the Complainant’s trademarks, omitting any disclaimer and falsely claiming to be operated by the Complainant’s authorized representative. The Panel therefore finds that, by using the disputed domain name, the Respondent has 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 its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy). The Panel finds in the circumstances that the disputed domain name has been registered or 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, Steven A. Maier 1 Given the similarities between the .irDRP and the UDRP, this Panel will make reference to the UDRP and the WIPO Overview 3.0 where relevant
Sole Panelist
Date: March 11, 2021
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