The Complainant is LEGO Juris A/S of Billund, Denmark represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Ilie Cezar and Radu Tofan of Bascov, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with RNC.ro. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2011. On September 20, 2011, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the disputed domain name. On September 21, 2011, RNC.ro. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2011.
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on November 3, 2011. 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.
Although the language of the Registration Agreement is Romanian, the Panel determines in accordance with the Complainant’s request and Rule 11(a), that the language of these administrative proceedings shall be the English language.
According to the relevant UDRP prior decisions Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004 and Aktiebolaget Electrolux v. TREND MEDYA GRUP,WIPO Case No. D2010-1508, the Panel has the discretion to decide the language of the proceedings having regard to the circumstances of the case.
In these proceedings, the Complainant made, in its Complaint, a request that the English language should be the language of the proceedings, asserting that the Complainant has sent a cease and desist letter in English which was ignored by the Respondent and that it would be cumbersome and to the Complainant’s disadvantage to be forced to translate the entire Complaint into Romanian.
This reasoning alone would generally be insufficient for the Panel to determine that the language of these proceedings should be different than the language of the registration agreement. In determining English as the language of these proceedings, the Panel considered also that the Respondent has failed to raise any objection or even to respond to the Complaint or the Center’s communication with regard to the language of the proceedings even though communicated in Romanian and in English. The Panel thus takes into consideration the non-objection of from the Respondent regarding the Complainant’s request for English as a language of these proceedings. 4. Factual Background
The Complainant is the owner of the trademark LEGO and all other trademarks used in connection with the famous LEGO brand of construction toys and other LEGO branded products. The Complainant and its licensees collectively called the “LEGO group of companies” or the “LEGO group” together with their predecessors have used the LEGO trademark extensively, exclusively and continuously since 1953. The Complainant has subsidiaries and branches thorough the world and LEGO products are sold in more than 130 countries, including Romania.
The Complainant is also the owner of more than 1000 domain names containing the term LEGO.
The trademark LEGO is among the most well-known trademarks in the world, being recognized to be famous.
The disputed domain name was registered on June 8, 2010. The disputed domain name is resolving, according to the evidence submitted by the Complainant, to a Romanian importer of German “Mic-o-Mic” toys page, where Mic-o-Mic products are displayed. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
The disputed domain name is confusingly similar to the Complainant’s well-known and reputed trademark LEGO, as it incorporates in its entirety the said trademark with the addition as a prefix of a descriptive word “jucarii” which means “toys” in Romanian and a hyphen, elements which do not distinguish it from the original trademark LEGO.
The Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent did not receive any license or authorization of any kind from the Complainant to use its marks.
The Respondent registered the disputed domain name motivated by the fame of the Complainant’s trademark.
The Respondent is misleading Internet users to a commercial website – the homepage of a Romanian company Pitesti Drivers SRL, importing toys from the German manufacturer Mic-o-Mic, which has no association with the Complainant.
The Respondent never answered the cease and desist letter, sent twice by the Complainant.
The website under the disputed domain name presents toys under a link “Jucarii tip Lego” and a construction guide is available in PDF, which could mislead Internet users into thinking that these products have a connection to the Complainant as the name of the website refers to LEGO toys and the toys have the same color as the Complainant’s construction toys.
Consequently the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation or endorsement of its website and this is proof that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel is persuaded that the LEGO group is the holder of the famous trademark LEGO. The LEGO group has rights in the trademark LEGO for construction toys and other LEGO branded products though registration all over the world but also through extensive, exclusive and continuous use for more than a half of century.
The disputed domain name is confusingly similar to the Complainant’s trademark as it includes in its entirety the Complainant’s trademark LEGO. The use of the LEGO trademark in connection with other words does not lessen the confusing similarity between the disputed domain name and the Complainant’s trademark LEGO. In particular, the word associated with the Complainant’s trademark in the disputed domain name is a descriptive one of the main type of products the trademark LEGO covers – the toys. Such fact is likely to produce more confusion as an obvious association with the Complainant’s trademark.
The addition of a hyphen and a country level suffix such as, “.ro” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar to a trademark (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488; Auchan v. Web4comm Srl Romania,WIPO Case No. DRO2005-0001; and OSRAM GmbH, v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004).
For these reasons, the Panel finds the Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
From the evidence submitted by the Complainant, the Respondent appears to have no legitimate connection with the Complainant’s famous trademark, as it was not authorized in any way by the Complainant to use the said trademark and no trademark LEGO registration was identified in the Respondent’s name.
According to the evidence presented by the Complainant, the Respondent is using the disputed domain name to link to a commercial website – the homepage of a Romanian company Pitesti Drivers SRL, which imports toys from the German manufacturer Mic-o-Mic.
The Complainant asserts that given also the fame of the LEGO trademark, it is likely that the Respondent’s intent in registering the disputed domain name was to benefit from such fame by generating traffic to a commercial website. Such conduct cannot represent in the opinion of the Panel a bona fide offering of goods or services which would entitle the Respondent to rights or legitimate interests in the sense of paragraph 4(a)(ii) of the Policy.
No other circumstances in the sense of the paragraph 4(c) of the Policy, entitling the Respondent to rights or legitimate interests in the disputed domain name have been identified by this Panel.
Accordingly, the Panel finds that the Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith
There is no doubt that the Complainant’s trademark LEGO is well known and reputed. Given the notoriety of the LEGO trademark, the Panel finds that it is plausible that the Respondent was aware of the Complainant’s trademark rights when registering the disputed domain name . This Panel is in agreement with previous UDRP Panel decisions in finding bad faith registration of the disputed domain name, as it incorporates the well-known reputed LEGO trademark. See e.g., LEGO Juris A/S v. James Mills,WIPO Case No. D2010-0562; LEGO Juris A/S v. Kang Zheng,WIPO Case No. D2010-1924; Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397 (finding bad faith since it was unlikely that the registrant of was unaware of complainant’s well-known NIKE trademark when registering the domain name); and Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488 (finding bad faith, noting that it was implausible that respondent was unaware of complainant’s trademark PORSCHE when registering ).
As stated above, from the evidence presented by the Complainant, the disputed domain name is currently connected to the toy importer Pitesti Divers SRL’s website, containing products from the manufacturer Mic-o-Mic (non LEGO produced products). The toys are displayed under the link “Jucarii tip Lego”, and a construction guide is available in PDF under the link “Presentare”. The Panel agrees with the Complainant’s contentions that an Internet user could be easily mislead to believe that these products have a connection to the Complainant as the name of the website is Jucarii-LEGO.ro (translates to toys-LEGO.ro), the toys have the same colors as the Complainant’s construction toys, and there is no explanation why the trademark LEGO is used in connection to these Mic-o-Mic toys. Such conduct of the Respondent, represents for the Panel, a clear indication that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, situation which amounts to bad faith use of the disputed domain name in the sense of paragraph 4 (b) (iv) of the Policy.
Accordingly, the Panel finds that the Complainant has established also the third element 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 name, . be transferred to the Complainant.
Beatrice Onica Jarka
Sole Panelist
Dated: November 17, 2011
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