World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Simonovi Eood

Case No. D2012-0863

1. The Parties

Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.

Respondent is Simonovi Eood of Lovech, Bulgaria.

2. The Domain Name and Registrar

The disputed domain name <bglego.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2012. On April 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2012. The Center received email communications from Mr. Simonovi on May 15, June 19, June 20 and June 25, 2012. All email communications, except the first, were in Bulgarian language. Mr. Simonovi’s first email said he did not speak English and would only respond to messages in Bulgarian, whereby Complainant used the Google Translate service to translate their subsequent emails into Bulgarian. Two other emails from Mr. Simonovi basically said “Ok” to the idea of transferring the disputed domain name to Complainant under an amicable arrangement, whereupon Complainant agreed to suspend these proceedings until June 20, 2012.

On June 20, 2012, the deadline to remove the suspension of these proceedings, Respondent sent an email in Bulgarian to the Center stating as follows: “Ok, we agree to giving the domain. Suspect [internaut] may be temporarily redirected to our new domain www.bglego.com -> www.bgleo.com seeing as was done previously with www.legobg.com We thank you, Greetings, Bgleo”

However, since the transfer was not implemented by the Registrar, Complainant wrote the Center to authorize the re-institution of these proceedings.

Respondent did not submit any formal response. Accordingly, the Center notified about the commencement of panel appointment procedure on June 21, 2012.

The Center appointed Paul E. Mason as the sole panelist in this matter on June 26, 2012. 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.

Since the Registration Agreement is in English and Respondent has shown by rudimentary email communication that he has a basic understanding of the situation, this Panel finds that this proceeding be conducted in the English language. To find otherwise would place an undue burden on Complainant to translate the voluminous pages it submitted into Bulgarian.

4. Factual Background

The LEGO trademark was first used in commerce in the United States of America in 1953 and has been registered and used in numerous countries around the world since then to denote the designer and maker of well-known construction toys and related systems.

According to the Registration Agreement with the Registrar, the disputed domain name was registered by Respondent on January 6, 2012.

5. Parties’ Contentions

A. Complainant

Complainant points out that the name “LEGO” has acquired distinctiveness and is also considered a so-called “famous mark” worldwide, meaning that it cannot be used by others to denote even classes of goods and services which fall outside those international classes with which Complainant’s mark is traditionally registered.

To support this argument, Complainant cites a number of UDRP decisions regarding the name “LEGO” as well as a survey of “Superbrands” conducted by the Center for Brand Analysis which ranked LEGO as the eighth leading brand name in the world out of 500 brands surveyed in 2009/2010. Even allowing for the decidedly British flavour of this survey (which included British Airways, BBC, Encyclopaedia Brittanica, Virgin Atlantic, Marks & Spencer, Thomas Cook, and Royal Albert Hall among the top 36 brands in the entire world), this Panel does agree that LEGO is a famous mark.

On the issue of similarity, Complainant asserts that merely adding a generic prefix to the domain name derived from a well-known mark does not materially alter its similarity to that mark. Furthermore, when the prefix is actually a country-identifier in the domain name system, as “bg” here representing Bulgaria, it actually increases the confusing similarity in an Internet visitor’s mind when the website deriving from the disputed domain name is in Bulgarian and is aimed at Bulgarian customers.

On the issue of legitimate rights in the domain name, Complainant states flatly that it has granted no such rights to use or incorporate its mark into the disputed domain name registered by Respondent.

On the twin issues of bad faith registration and bad faith use of the disputed domain name, Complainant urges that: (1) the domain name must have been registered in bad faith as it is so similar to its world-famous mark, and; (2) that it has been used in bad faith, resolving to a website offering competing products for sale and Lego products for sale in an unauthorized manner, without a correspondent disclaimer that Respondent is not affiliated in any way with Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel agrees with Complainant that the domain name is confusingly similar to Complainant’s world-famous mark LEGO. A variety of UDRP cases concur that merely adding a generic prefix or suffix to the domain name does not affect its similarity to a Complainant’s trademark. In this case, adding the prefix “bg” actually increases the confusing similarity in the Bulgarian market at which Respondent’s website is directed.

B. Rights or Legitimate Interests

Since Complainant is stating it has granted no such rights or legitimate interests to Respondent, the burden shifts to Respondent to prove such rights or interests exist. But Respondent has not answered this Complaint. Therefore this Panel finds no such rights or legitimate interests exist here to use the mark in the disputed domain name.

C. Registered and Used in Bad Faith

This Panel finds that LEGO is indeed a world-famous mark. As such, Respondent must have known about it when registering the domain name and linking it to a website selling products similar or identical to those of Complainant. Therefore, this Panel does conclude bad faith registration.

On the issue of bad faith use of the disputed domain name, screenshots of the website by Complainant and visits to the website by the Panel both show that the site is offering both competing products and apparently unauthorized sale of Complainant’s own products, without a disclaimer. This amounts to classic bad faith use of a domain name.

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 domain name <bglego.com> be transferred to the Complainant.

Paul E. Mason
Sole Panelist
Date: June 26, 2012

 

 

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