The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Anton Obrezkov, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2020. On January 10, 2020, the Center transmitted by email to the Registrar a request for registrant verification in connection with the disputed domain name. On January 27, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 27, 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 amendment to the Complaint on January 30, 2020 in this regard. On January 27, 2020, the Center sent an email communication in English and Ukrainian to the Parties indicating the registration agreement for the disputed domain name is in Ukrainian, and inviting the Parties to submit their preference as to the language of the proceeding. On January 30, 2020, the Complainant submitted its request that English be the language of the proceeding. On January 27 and 28, 2020, the Respondent sent an email communication to the Center and the Complainant, but he did not specify its preference for the language of the proceeding. The Center verified that the Complaint and amended Complaint satisfied the formal requirements of the .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”). In accordance with the .UA Rules, paragraph 4(c), the Center formally notified the Respondent of the Complaint in both Ukrainian and English, and the proceedings commenced on February 7, 2020. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was February 27, 2020. The Respondent failed to submit the Response by the above indicated date. The Center sent Commencement of Panel Appointment Process to the parties on March 3, 2020. The Center appointed Oleksiy Stolyarenko as the sole panelist in this matter on March 16, 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 .UA Rules, paragraph 7. 4. Factual Background The Complainant a privately owned company based in Denmark that owns LEGO trademark, and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products. The Complainant operates through its licensees are authorized representatives in many countries of the world including Ukraine. Over the years, the business of making and selling LEGO branded toys has grown remarkably. The Complainant has subsidiaries and branches throughout the world, and sells LEGO products in more than 130 countries, including in Ukraine. The Complainant owns numerous LEGO trademark registrations in many jurisdictions throughout the world including: - Ukraine trademark certificate No 2347 registered November 15, 1993 for goods in class 28; - Ukraine trademark certificate No 21669 registered November 15, 2001 for goods in classes 14, 18, 24, 25; - International Registration No 869258 registered November 11, 2005 for goods and services in classes 9, 16, 25, 28, 41, designations include Ukraine; - International Registration No 1006003 registered June 17, 2009 for goods and services in classes 3, 14, 18, 20, 21, 24, 27, 30, 43, designations include Ukraine; Furthermore, the Complainant owns of close to 5,000 domain names containing the trademark LEGO. The LEGO trademark is widely renown in the world, due in part to decades of extensive advertising by the Complainant, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. The Respondent is a Ukrainian individual. The Complainant sent to the Respondent a cease and desist letter in English in October 2019 with two reminders, but did not receive the response. According to the WhoIs, the disputed domain name was registered in the name of the Respondent on September 8, 2019. The website under the disputed domain name offered for sale different types of toys. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant owns numerous LEGO trademark registrations in many jurisdictions throughout the world including in Ukraine and is widely known. The Complainant’s trademark acquired protection significantly prior to registration of the disputed domain name. The country code Top-Level Domain (ccTLD) “.com.ua” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar. The added by the Respondent dictionary word “toys” to the Complainant’s LEGO trademark, does not make the disputed domain name unique or in any way less confusingly similar to the Complainant’s trademark. As a matter of fact, the Complainant LEGO trademark is closely associated with dictionary word “toys” which only increase the confusing similarity between the disputed domain name and the Complainant’s trademark. The Respondent has no rights or legitimate interests in the disputed domain name, because there is no evidence that the Respondent is using the name LEGO as a company name or has any other legal rights in the name. The Respondent registered the disputed domain name merely to benefit from the Complainant’s world famous trademark to generate traffic and income through an unauthorized website offering LEGO products. The Respondent is not a reseller nor a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of its LEGO trademarks, in a domain name or otherwise. The Respondent’s use of the disputed domain name could not be qualified as a bona fide offering of goods or services, as permitted under the .UA Policy, paragraph 4(c)(iii), because it fails to satisfy the Oki Data Test and disclose the Respondent’s relationship with the Complainant. Instead, the website under the disputed domain name falsely represented the Respondent as the “Official LEGO in Ukraine” (in Ukrainian: “Официальный Lego Украине”). The Complainant contacted the Respondent in October 2019 by email notifying of its trademark rights, requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses), however, the Respondent did not reply. The Complainant alleges that the disputed domain name was registered and/or is being used in bad faith, because the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Complainant seeks a decision that the domain name be transferred to the Complainant. B. Respondent The Respondent did not formally respond to the Complaint, he submitted two informal emails on January 27 and 28, 2020. 6. Discussion and Findings A. Language of Proceedings According to paragraph 11(a) of the .UA Rules “unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” In this case the Registrar has confirmed that the language of the Registration Agreement for the disputed domain name is Ukrainian. The Complainant filed the Complaint in English and requested English to be the language of this proceeding. Based on the case file, the Complainant previously communicated with the Respondent in English, and even though the Complainant received no response, the Complainant received also no request to continue communications in Ukrainian. The Panel notes that the disputed domain name, and some of information on the website are in English. In previous similar cases, panels after considering the totality of the circumstances found that it would be fair to the parties to designate English as the language of the proceedings (see OPPO Pte. Ltd. v. Private Registration / Alexander Leonidovich Shirkov,WIPO Case No. DUA2019-0001). This Panel also concurs with the findings in Facebook Inc. v. Private Registration / Denis Khakimov,WIPO Case No. DUA2019-0002 where it is noted that “while applying the provision on the language of the proceedings the Panel considers that it should be also ensured that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition.” The Center duly notified the Respondent in English and in Ukrainian on the request of the Complainant to use English as the language of the proceedings. The Respondent was also provided with an opportunity to object and request the proceedings to be carried in Ukrainian. However, the Respondent did not use this opportunity and did not object for English to be the language of the proceedings. Furthermore, the Panel notes that the Center sent all of its email communications to the Parties in both languages (English and Ukrainian) giving equal opportunities to Parties to participate in the proceedings. In addition, the Panel notes that the Respondent did not submit a formal Response either in English or in Ukrainian and did not use an opportunity to argue his case. The Center also appointed the Panel that is familiar with all three languages, English, Russian and Ukrainian, in order to treat the Parties equally in the proceedings. Therefore, the Panel concludes that each Party of the proceedings was treated fairly and was provided a fair opportunity to present its case. The Panel also finds additional translation of the filings would unfairly disadvantage and burden the Parties and delay the proceedings and adjudication of this matter. Based on the foregoing, the Panel concludes that it is not unfair to the Parties to proceed in English and finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar Given the similarities between the .UA Policy and Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel will refer to the UDRP precedents when relevant. It has been repeatedly held that if a complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights under paragraph 4(a)(i) of the UDRP and can therefore challenge the validity of a domain name containing that trademark (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. The Complainant’s has proved rights in the LEGO trademark though the registered Ukrainian trademark certificates and international registrations designating Ukraine that predate the registration of the disputed domain name by decades (even though that is not required). Therefore, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. The Panel also confirms that the disputed domain name is identical or confusingly similar to the Complainant’s LEGO trademarks. The disputed domain name Based on section 1.11.1 of the WIPO Overview 3.0, the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Therefore, the Panel disregards this element for the purposes of this comparison. Furthermore, the Panel notes that disputed domain name incorporates the Complainant’s trademark LEGO in its entirety. Notwithstanding that the disputed domain name contains the word "toys" after the Complainant’s trademark LEGO, the Panel believes that according to a side-by-side comparison of the disputed domain name and the textual components of the LEGO trademark, the disputed domain name features prominently within the Complainant’s LEGO registered trademark and, thus, that the Complainant’s LEGO registered trademark is recognizable within the disputed domain name. The Panel notes also that the dictionary word “toys” in the disputed domain name refers to the products produced by the Complainant. In view of the above, the Panel believes that the addition of the dictionary word “toys” does not prevent a finding of confusingly similarity under the first element of the .UA Policy. In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the.UA Policy. C. Rights or Legitimate Interests According to paragraph 4(a)(ii) of the .UA Policy the Complainant has to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. However the overall burden of proof remains with the Complainant to show that the activities of the Respondent does not fall under the bona fide offering of goods or services (paragraph 4(c)(i) of the .UA Policy), that the Respondent is not commonly known by the disputed domain name (paragraph 4(c)(ii) of the .UA Policy) and that the Respondent is not involved into a legitimate noncommercial or fair use of the disputed domain name (paragraph 4(c)(iii) of the .UA Policy). The Panel notes that the Respondent offers for sale on the website under the disputed domain name a variety of toy products, including toys under the LEGO brand, but the Respondent is not an authorized distributor of Complainant’s products in Ukraine and the website does not disclose the relationship between the Complainant and the Respondent. The Respondent offers goods and services under the disputed domain name representing itself as the “Official Lego in Ukraine,” and thus, failing to satisfy the criteria 2 and 3 of the Oki Data Test (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). Under such circumstances, the Panel concludes that the Respondent is not involved in a bona fide offering of goods or services (under paragraph 4(c)(i) of the .UA Policy). Furthermore, the Panel finds that the Respondent is not commonly known by the disputed domain name under paragraph 4(c)(ii) of the .UA Policy. According to the Registrar’s information “Anton Obrezkov” is the registrant of the domain name. The Panel did not found any evidence that the Respondent is known by the disputed domain name Because, the Respondent clearly aims to monetize the disputed domain name by selling products on the website, the Respondent activities does not fall under the a legitimate noncommercial use (under paragraph 4(c)(iii) of the .UA Policy). Accordingly, the Panel finds that the Complainant has satisfied the second element of the .UA Policy, namely paragraph 4(a)(ii). D. Registered or Used in Bad Faith As the Panel established above, the Complainant’s mark LEGO is distinctive and well-known including in Ukraine. The Complainant vests considerable efforts in domain name enforcement actions in order to recover domain names registered and used by the third parties in bad faith. The Complainant’s marks for LEGO in Ukraine were registered prior to the registration of the disputed domain name and the Respondent was informed by the Complainant that such registration violates the Complainant’s trademark rights. The Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Respondent intention has always been to use the disputed domain name to intentionally attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location (see paragraph 4(b)(iv) of the .UA Policy). Therefore, the Panel concludes that the Respondent registered and used the disputed domain name in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the .UA Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name Oleksiy Stolyarenko
Sole Panelist
Date: April 2, 2020
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