WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Ridvan kagan agca
Case No. D2011-1441
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Ridvan kagan agca of Ankara, Turkey.
2. The Domain Names and Registrar
The disputed domain names <legorobotkampi.com>, <legorobotlari.com> <legorobotokulu.com> are registered with FBS Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2011. On August 25, 2011, the Center transmitted by email to FBS Inc. a request for registrar verification in connection with the disputed domain names. On August 26, 2011, FBS Inc. 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 together with the amendment to 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 September 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2011.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on October 5, 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.
On August 29, 2011, the Center sent an email to the Complainant, informing it that FBS Inc. confirmed that the language of the registration agreement was in Turkish. The Complainant responded, requesting that the proceedings be in English on August 30, 2011.
Although the language of the Registration Agreement is in the Turkish language, the Panel determines in accordance with the Complainant’s request and the Rules 11(a), that the language of these administrative proceedings shall be the English language. The Panel finds that it would be inappropriate to conduct the proceedings in the Turkish language and request a Turkish translation of the Complaint while 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 Turkish and in English.
4. Factual Background
The Complainant operates a business selling toys in more than 130 countries. The Complainant holds registrations for the LEGO trademark and variations of it in more than 190 countries including in Turkey. The trademark registration in Turkey with registration number 119 057 predates the disputed domain name registrations. Approximate global revenue for sales of LEGO brand product in 2009 was USD 2.8 billion.
The Complainant conducts business on the Internet using numerous domain names containing the word “lego” including <lego.com> with a toy business website resolving from these domain names. The Complainant also owns more than 1000 domain names comprising or containing the word “lego”.
The disputed domain names were registered on June 8, 2011.
5. Parties’ Contentions
The Complainant submits that the mark LEGO is well-known and stated that the fame of the trademark has been confirmed in numerous previous UDRP decisions, e.g., LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840, stating, “LEGO is clearly a well-known mark”; LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260, stating, “In the present case, the disputed domain names incorporate the Complainant’s well-known registered trademark LEGO”, and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680, stating, “LEGO is a mark enjoying high reputation as construction toys popular with children.”
According to the Complainant the disputed domain names are confusingly similar to the Complainant’s world famous trademark LEGO. The addition of the suffixes “robot”, “kampi”, “okulu”, and “lari” are not relevant and will not have any impact on the overall impression of the dominant part of the names. The Complainant cited the case Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, in which it was stated that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes.
The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain names. It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark.
The Complainant first tried to contact the Respondent on June 17, 2011 through a cease and desist letter. No response was received, so two reminders were sent on June 29, 2011.
The Complainant states that the websites are well advanced and the Respondent has added the Lego logo in the address bar and the Lego Education logo. This action enhances the “initial interest of confusion element”. In LEGO Juris A/S v. Probuilders, WIPO Case No. D2011-0226, the Panel discussed the use of the Complainants logotype, stating, “In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s distinctive and well-known trade mark in mind. As mentioned above, the Respondent has resold the Complainant’s products under the banner of the Complainant’s own logo, thereby deliberately seeking to imply a connection with the Complainant.”
The Complainant adds that all three disputed domain names re-direct to the website “www.gazirobotkampi.com” and the content of the websites is identical.
Consequently by referring to the above-mentioned, the Respondent must be considered to have registered and be using the disputed domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain names registered by the Respondent are 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 names; and
(iii) that the disputed domain names have been registered and are being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615. In this Panel’s view, the addition of the terms “robotkampi” , “robotokulu”, “robotlari” do not sufficiently distinguish the disputed domain names from the Complainant’s trademark.
Additionally the Respondent has brought no argument in support of his contention that the disputed domain names are not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to rights or legitimate interests in the disputed domain names. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by its using the disputed domain names. Nor has the Respondent shown that it has been commonly known by the disputed domain names. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain names. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks right or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. The Panel finds that given the use formerly made of the disputed domain names, when the Respondent registered the disputed domain names it knew that LEGO was the trademark of the Complainant, and that he registered the disputed domain names because it would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
It is obvious to this Panel that by using the disputed domain names, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. In view of the above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
There is no suggestion that the Respondent had any intention of legitimate use, that it enjoys a connection to the disputed domain names or that there is conceivable good faith use for the disputed domain names. After examining all circumstances surrounding the registration and use of the disputed domain names, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith. Accordingly the Panel finds in favour of the Complainant on the third element of the Policy.
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 names <legorobotkampi.com>, <legorobotlari.com> <legorobotokulu.com> be transferred to the Complainant.
Dilek Ustun Ekdial
Dated: October 19, 2011