WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. FUNDATIA LEGO SCHOOL, Pre-School Educational Center Foundation and CENTRUL EDUCATIONAL LEGO DACTA, Lego Dacta Educational Center

Case No. DRO2012-0008

1. The Parties

The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Rominvent S.A., Romania.

The Respondents are FUNDATIA LEGO SCHOOL, Pre-School Educational Center Foundation and CENTRUL EDUCATIONAL LEGO DACTA, Lego Dacta Educational Center, both of Bucharest, Romania.

2. The Domain Names and Registrar

The disputed domain names <legoschool.ro> and <legodacta.ro> are registered with ROTLD (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2012. On October 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 31, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details.

On November 6, 2012, the Center transmitted the language of the proceedings document to the parties in both English and Romanian. On November 9, 2012, the Complainant requested English to be the language of the proceedings. The Respondents did not submit their comments.

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 Respondents of the Complaint, and the proceedings commenced on November 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 4, 2012.

The Center appointed Mihaela Maravela as the sole panelist in this matter on December 10, 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.

4. Factual Background

The Complainant is part of the LEGO Group Company – a privately held company based in Billund, Denmark. The LEGO Group is engaged in the development of children’s creativity through playing and learning. Based on the world-famous LEGO brick, the company provides toys, experiences and teaching materials for children in more than 130 countries. The LEGO Group is the world’s largest manufacturer of play materials.

The LEGO Group owns an impressive portfolio of intellectual property rights, among which can be found Community Trade Marks, International Registrations as well as national trademarks registered in various countries all over the world. In Romania, the Complainant owns two national trademarks comprising LEGO as well as an international designation consisting of this word. Also, the Complainant owns 13 community trademarks which consist of or contain the word “Lego”.

The Respondents in these proceedings are FUNDATIA LEGO SCHOOL, Pre-School Educational Center Foundation who registered the disputed domain name <legoschool.ro> (hereinafter referred to as the Respondent 1) and CENTRUL EDUCATIONAL LEGO DACTA, Lego Dacta Educational Center who registered the disputed domain name <legodacta.ro> (hereinafter referred to as the Respondent 2).

The disputed domain name <legoschool.ro> was registered on September 1, 2003, and the disputed domain name <legodacta.ro> was registered on September 24, 2002. Both disputed domain names are registered with the Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain names are confusingly similar to its trademarks. The disputed domain names incorporate the famous LEGO trademark. The use of LEGO trademark in connection with other words does not lessen the confusing similarity between the disputed domain names and the Complainant’s trademark LEGO. In particular, the word associated with the Complainant’s trademark in the disputed domain name <legoschool.ro> is descriptive for the main type of services the trademark LEGO covers – namely education, and such fact is likely to produce more confusion as an obvious association with the Complainant’s trademark. The Complainant also asserts that the disputed domain name <legodacta.ro> is identical with its previous trademark LEGO DACTA.

Also, the Complainant contends that the Respondents have no prior rights or legitimate interests in or to the LEGO trade name or trademark. The Respondents are not a licensee of the Complainant, nor are otherwise authorized to use the LEGO trademarks. Furthermore, the disputed domain names are not, nor could they be contended to be, in any way identified with or related to a legitimate interest of the Respondents. The Respondents do not make any legitimate use of the disputed domain names for their own commercial or noncommercial activities and the Respondents have not been known under the disputed domain names.

In addition, the Complainant contents that the disputed domain names were registered and used in bad faith since the LEGO trademark is notorious all over the world and the Respondents knew for sure the use of the trademark LEGO prior to registering the disputed domain names. Moreover, the Respondent 1 is using the famous trademark of the Complainant on its website as if this trademark would be its own, without having an authorization from the Complainant. It results that the Respondent 1 is creating an impression for the consumer that the services rendered (mainly education services) have a strong connection to the goods and services protected by the notorious trademark LEGO of the Complainant. The fact that the Respondent 2 registered a domain name identical with the Complainant’s previous trademark constitutes proof of bad faith because the main purpose of the registration was to create confusion among consumers and to take unfair advantage from the reputation of the LEGO trademark.

B. Respondent

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

6. Discussion and Findings

Language of the proceedings

As regards the question of the language applicable to this dispute, paragraph 11(a) of the Rules provides:

“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.”

“However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” See, Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004.

In the present case, the Panel notes the following:

- the Registrar of the disputed domain names has informed the Center that the language of the relevant Registration Agreements is Romanian,

- the Complainant has filed the Complaint in English, and following the Language of Proceedings Notification of the Center dated November 6, 2012, the Complainant confirmed on November 9, 2012 its request for English to be the language of the proceedings, arguing, inter alia, that between the Complainant and the Respondents previous correspondence has been conducted in English language regarding the illegitimate use of the LEGO trademarks by the Respondents;

- the Respondents did not file a Response and did not oppose to the request of the Complainant that English be the language of the proceedings.

According to the Rules, paragraph 11(a), based on the circumstances of this case and as previously decided by other UDRP panels (LEGO Juris A/S v. Ilie Cezar, WIPO Case No. DRO2011-0010; Nilfisk-Advance A/S v. SC Getic Decor SRL, WIPO Case No. DRO2009-0007; Yannidis Brothers SA, and SC Vitex Hermes SRL v. SC IOANNINA PRODUCT SRL, WIPO Case No. DRO2009-0009), the Panel finds that the language of the present proceeding should be English, for the following reasons:

- The Complainant requested for English to be the language of the administrative proceedings;

- English was the language of some correspondence which seems to have been conducted between the parties before the filing of the present Complaint, without protest from the Respondents;

- the Respondents did not oppose to English as the language of the proceedings;

- there are no provisions, on the Registrar’s website, for a domain name applicant to choose between English or Romanian as the controlling language of the Registration Agreement at the time the disputed domain names were registered on September 1, 2003 respectively on September 24, 2002 (see Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001; DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003; Companie Générale des Établissements Michelin - Michelin & Cie. v. IPSOS New Media Research SRL, WIPO Case No. DRO2006-0004; Dell Inc. v. C.I.T. GRUP SRL, WIPO Case No. DRO2007-0007).

Consolidation of proceedings

In accordance with the consensus view of WIPO UDRP panels (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 4.16.), this panel accepts that these proceedings are brought by the Complainant against both Respondents since it appears from the evidence adduced by the Complainant, as confirmed by the Registrar, that the disputed domain names are subject to common control of the Respondents as detailed below, and the consolidation would be fair and equitable to all parties.

Having in view the arguments adduced by the Complainant, that the business contact details of the Respondents is identical, the phone and fax numbers are also identical, and that the contact email address given by the Respondent 1 at the registration of the disputed domain name is the same as for the disputed domain name registered by the Respondent 2, this Panel accepts the request for consolidation which the Complainant made in its Complaint.

Due process

It is essential to this proceeding that fundamental due process requirements must be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules established procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

Based on the methods employed to provide the Respondents with notice of the Complaint, the Respondents’ obligation under the relevant Registration Agreement to maintain accurate and current contact information, the Panel is satisfied that the Center took all reasonable steps necessary to notify the Respondents of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondents to submit a reply is not due to any omission by the Center. See also Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.

Because the Respondents have defaulted in providing a response to the allegations of the Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations (id., paragraph 15(a)).

In order that the remedy requested in the Complaint is granted, paragraph 4(a) of the Policy requires that the Complainant prove each of the following:

i) that the disputed domain names are identical or confusingly similar to the mark in which it has rights;

ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names;

iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain names are identical or confusingly similar to that trademark or service mark.

The Panel reviewed the evidence adduced by the Complainant in its Complaint and is satisfied that the Complainant has registered the LEGO trademarks, including inter alia a:

- LEGO National trademark, Registration No. 010133, registered on September 25, 1990;

- LEGO DACTA National trademark, Registration No. 019593, registered on July 18, 1995 (expired);

- LEGO International Registration, No. 287932, registered on August 8, 1965;

- LEGO CTM Registration, no. 002829463, registered on January 7, 2004;

- LEGO CTM Registration, no. 000092718, registered on January 7, 1999;

- LEGO CTM Registration no. 000091934, registered on November 9, 1998.

These registrations predate the registration of the disputed domain names, i.e. September 1, 2003 and September 24, 2002 respectively.

As to matter of identity or confusing similarity for the purposes of the Policy, the Panel has proceeded to compare the disputed domain names to the trademark rights which have been proved.

The disputed domain name <legoschool.ro> incorporates entirely the Complainant’s trademark LEGO, a trademark found in numerous UDRP decisions to be distinctive, well-known worldwide (see LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680).

The addition of the word “school” is generic and non-distinctive, and where such words are combined with well-known trademarks, a finding of confusing similarity is generally recognized (see LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564).

The impression of the Internet user will be that the disputed domain name <legoschool.ro> belongs to the Complainant or at least is connected to the Complainant and its services. Even in the latter case, it is the Panel’s view that such connection is all the more heightened where the trademark is well-known.

Further, as to the addition of the country code Top-Level Domain (ccTLD) “.ro”, this does not bear any relevance to the comparison at hand, as use of a ccTLD is technically required of domain name registrants, and has no impact on the overall impression made by the dominant part of the disputed domain name, “legoschool”.

The Panel therefore finds that the disputed domain name <legoschool.ro> is confusingly similar to the Complainant’s trademarks LEGO.

As regards the disputed domain name <legodacta.ro>, it fully incorporates the Complainant’s prior trademark LEGO DACTA. It is well accepted that a TLD suffix, may be ignored when assessing identity or confusing similarity of a trademark and a domain name (See, e.g. VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Billa Aktiengesellschaft v. Ganea Nicolae, WIPO Case No. DRO2002-0001; Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001; Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001).

Having in mind the above, the Panel decides that the requirement of paragraph 4(a)(i) of the Policy is satisfied with regard to both disputed domain names.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of WIPO UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of the domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (See WIPO Overview 2.0, paragraph 2.1.).

In the present case, the Complainant has established prima facie that the Respondents have no rights or legitimate interests in respect of the disputed domain names.

In the absence of a response or defense by the Respondents, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given to the Respondents to use the trademark LEGO and LEGO DACTA respectively.

Further, the Respondents’ failure to act upon the Complainant’s cease and desist letter also further indicates in this Panel’s view that the registration of the disputed domain names lacks the fundament of entitlement or legitimate interest.

The Panel finds that the Respondents do not appear to have any rights or legitimate interests in the disputed domain names.

Rather, the Respondents used or are using the disputed domain names to promote educational services for which the trademarks of the Complainant are registered, using also on the websites to which the disputed domain names resolve or resolved the LEGO trademark, including the graphic representation registered as trademark by the Complainant. This appears on the website <legoschool.ro> used by the Respondent 1. Also, this appears to be the case for the website <legodacta.ro> which now does not resolve to an active page but appears to this Panel, after using the Wayback machine search engine, that was used by the Respondent 2 for the same purpose, namely promoting educational services for children and using to such an end the LEGO trademark of the Complainant, including the graphic representation.

An issue to be addressed here is the rights which the Respondents might be said to be holding in any trade names similar to the disputed domain names. As such, it appears that the Respondent 1 was initially incorporated as a foundation under the name Fundatia Lego School (Lego School Foundation) and subsequently changed its name to Pre-School Educational Center Foundation in 2005. The Respondent 2 seems to be incorporated under the name Centrul Educational Lego Dacta (Lego Dacta Educational Center).

Both incorporation names comprise the LEGO trademark of the Complainant.

Paragraph 4(c)(ii) of the Policy indicates that a party may demonstrate rights or legitimate interests in a domain name as a consequence of having been commonly known by the domain name. It is reasonable to presume that a party owning rights in a trademark has been known by the trademark, and thus by an identical domain name. However, that presumption is not conclusive. It is sometimes the case that a domain name registrant has registered a trademark in circumstances indicating that the registrant was seeking to take unfair advantage of the owner of previously existing trademark rights. See, e.g., Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847. This Panel considers that this conclusion is applicable in case respondents might invoke rights in trade names.

The Panel finds that the facts in this case indicate that the Respondents registered their trade names to facilitate taking unfair advantage of the Complainant’s previously existing trademark rights in LEGO and LEGO DACTA:

- the Respondents are acting in the educational field which is one of the concerns and activity of the Complainant;

- the Respondents used or use the disputed domain names to promote their educational activity – kindergarten/pre-school services – using the LEGO or LEGO DACTA trademarks on the websites corresponding to the disputed domain names,

- the Respondents appear to acknowledge trademark infringement during the correspondence of the parties prior to these proceedings where their representative replied to the cease and desist letter of the Complainant by saying that “I am interested to resolve this issue with Lego Group. To do so, I need to know we have Lego Group’s approval”.

This Panel agrees with the conclusions of well-learned panelists in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 that “these circumstances do not demonstrate a legitimate interest or right in the domain names, and instead suggest that Respondents lacks any real interest in the domain names apart from its association with Complainant. Further, we do not believe these circumstances satisfy the provisions of Paragraph 4(c)(iii), which applies to situations where the Respondent is actually making noncommercial or fair use of the domain name.”

In the circumstances of this particular case, the Panel finds that the Respondents registered the disputed domain names to profit from the Complainant’s trademark goodwill and reputation, which is incompatible with making a legitimate, noncommercial or fair use of the disputed domain names.

The Panel therefore finds that the Respondents have no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

To fulfill the third requirement, the Complainant must prove that the disputed domain names were registered and are being used in bad faith.

In order to assess whether the Respondents registered and use the disputed domain names in bad faith, paragraph 4(b) of the Policy provides examples constituting, prima facie, evidence of bad faith. While the examples are indicative (see Nova Banka v. Iris, WIPO Case No. D2003-0366), paragraph 4(b)(iv) of the Policy has direct bearing to the present case:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location.”

After reviewing the website to which the disputed domain names resolves or used to resolve, it appears that the website <legoschool.ro> is used and the website <legodacta.ro> was used to promote educational services of the Respondents by using the LEGO trademark and logo. All these facts have been considered by this Panel to be proof of registration in bad faith, with the intention of creating confusion with the Complainant’s services for commercial gain.

As noted above, the trademark LEGO is well-known. Therefore, the Respondents are most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain names. Also, the Respondents registered the disputed domain names almost 40 years after the Complainant registered its trademarks.

Additional factors retained by the Panel as indicative of bad faith registration and use of the disputed domain names include:

- the Respondents’ failure to respond to the Complaint and provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210);

- the Respondents’ failure to act upon the Complainant’s cease and desist letter, requesting voluntary transfer;

- the Respondents have provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names; rather, as it appears from evidence on the file and as verified by the Panel using the Wayback machine search engine, the use of the disputed domain names is made for commercial purpose by trading off on the fame of the trademarks of the Complainant,

- also, as noted above, the Panel has concluded that the Respondents had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain names. The Respondents provided no explanations for which they registered the disputed domain names other than it results from the evidence on the file.

Therefore, the Panel finds that the Respondents registered and are using the disputed domain names 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 names <legoschool.ro> and <legodacta.ro> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: December 24, 2012