WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Dmitry Shelkovnikov

Case No. D2019-0555

1. The Parties

The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Dmitry Shelkovnikov of Moscow, Russian Federation, self-represented.

2. The Domain Name and Registrar

The disputed domain name <legobricks.site> is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2019. On March 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On the same date the Center sent an email communication to the Parties in English and Russian regarding the language of the proceedings. On March 18, 2019 the Complainant requested English to be the language of the proceedings. On the same date the Respondent requested Russian to be the language of the proceedings.

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 and 4, the Center formally notified the Respondent of the Complaint in English and Russian, and the proceedings commenced on March 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2019. The Respondent did not submit a formal Response and the Center informed the Parties about the commencement of the panel appointment process on April 17, 2019.

The Center appointed Assen Alexiev as the sole panelist in this matter on April 29, 2019. 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 based in Denmark and is the owner of the LEGO brands of construction toys and other LEGO branded products. It has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the Russian Federation. The LEGO Group also uses the LEGO trademark for computer hardware and software, books, videos and computer controlled robotic construction sets.

The Complainant is the owner of the trademark LEGO with registration No.42932, registered in the Russian Federation on December 10, 1971 for goods in International Class 28 (the “LEGO trademark”).

The official website of the Complainant is located at the domain name <lego.com>.

The Respondent registered the disputed domain name on October 7, 2018. It resolves to a Russian language website that offers construction bricks and other construction products.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the LEGO trademark has a substantial inherent and acquired distinctiveness, and the awareness of the LEGO trademark is considered to be significant in the whole community. In the Superbrands UK ranking for 2018, the brand LEGO was the winner in the category “Child Products - Toys and Education” and the brand LEGOLAND was the winner in the category “Leisure & Entertainment – Destinations”. In 2017, the Reputation Institute nominated the LEGO Group as number 2 on their list of “the World’s Most Reputable Companies”, and in 2014, the TIME magazine ranked LEGO to be the Most Influential Toy of All Time. The Complainant refers to Article 6bis of the Paris Convention for protection of Industrial Property and to Articles 16.2 and 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, according to which the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services, regardless of the list of the products and services for which the trademark is registered. Thus, according to the Complainant, the protection of the LEGO trademark goes beyond toys and goods similar to toys.

The Complainant submits that the disputed domain name is confusingly similar to the LEGO trademark, as the dominant part of the disputed domain name is identical to it. The addition of the suffix “bricks” enhances the risk of confusion because the LEGO trademark is famous in relation to toy bricks, so the public will perceive the disputed domain name as related to the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no registered trademarks or trade names corresponding to the disputed domain name and has not used the disputed domain name in a way that would give rise to rights or legitimate interests in it. The Complainant has not given authorization to the Respondent to use the LEGO trademark, and the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. The Complainant points out that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen the disputed domain name incorporating the Complainant’s LEGO trademark to mislead Internet users and to generate traffic and sales for its website that advertises construction bricks.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name in view of the considerable value and goodwill of the LEGO trademark. The disputed domain name is currently connected to a commercial website that sells construction bricks which look very similar to LEGO bricks. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to its own website for commercial gain, by creating a likelihood of confusion with the Complainant’s LEGO trademark as to the source, sponsorship, affiliation or endorsement of its website.

The Complainant submits that it tried to contact the Respondent on November 16, 2018 through a cease and desist letter. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark as part of the disputed domain name violated the Complainant’s trademark rights, requested a voluntary transfer of the disputed domain name and offered compensation for the Respondent’s out of pocket expenses. The Complainant sent two reminders, but no reply was received from the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Procedural Issue: Language of the Proceedings

In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant submitted its Complaint in the English language, and requests the proceeding to be held in English. It argues that the Complainant is unable to communicate in the Russian language and the translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings, that the disputed domain name is comprised of English words, and that the Respondent did not respond to the Complainant’s cease and desist letters and did not request that communications continue in the Russian language or state that it does not understand the content of these letters.

The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has objected to the Complainant’s request that the proceedings be held in English, but has not stated that it does not understand English. The Panel notes that the disputed domain name contains the English words “bricks” and “site”.

Taking all the above circumstances into account, the Panel accepts that the Respondent would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding will be fair and efficient.

Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will take into account and consider all evidence and statements in the case file that are in the Russian language.

6.2. Substantive Matters

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”.

In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the LEGO trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.site” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the sequence “legobricks”. It consists of the elements “lego” and “bricks”. The “lego” element is identical to the LEGO trademark, while the “bricks” element is descriptive of the main product sold under the LEGO trademark. The addition of the term “bricks” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the LEGO trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not been authorized by the Complainant to use the LEGO trademark, that the Respondent is not commonly known by the disputed domain name and is not carrying out a bona fide use of the disputed domain name, but uses it for a website that offers construction bricks with an appearance similar to the Complainant’s LEGO toy bricks. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not replied to the Complainant’s contentions and has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding.

The disputed domain name is confusingly similar to the LEGO trademark. Moreover, the disputed domain name consists of the Complainant’s trademark plus the term “bricks”. Such composition cannot constitute fair use in this case, as it effectively impersonates or suggests sponsorship or endorsement of the Complainant. See section 2.5.1 of the WIPO Overview 3.0. Additionally, he disputed domain name resolves to a website that offers construction bricks with an appearance similar to the Complainant’s toy bricks, and the LEGO trademark has long been registered in the Russian Federation where the Respondent is located.

In view of the above and in the lack of any denial by the Respondent of the above, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s LEGO trademark, has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s website which offers construction bricks similar in appearance to the Complainant’s toys. Such conduct is not legitimate and does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

As discussed above, the disputed domain name fully incorporates the LEGO trademark in combination with the element “bricks” which is descriptive of the product for which the LEGO trademark has become well-known. The Respondent does not deny that it is linked it to a website that offers construction bricks similar in appearance to the Complainant’s toy bricks. The LEGO trademark has long been registered before the registering the disputed domain name.

Taking the above into account, the Panel accepts that as more likely than not that the Respondent has registered the disputed domain name with knowledge of the Complainant and targeting the LEGO trademark in an attempt to attract traffic to the disputed domain name by confusing Internet users that they are reaching an online location related to the Complainant’s products and then offer them its own products for commercial gain. In view of this, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s LEGO trademark.

Therefore, the Panel finds that the disputed domain name has been registered and 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 <legobricks.site> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: May 13, 2019