WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Hosted LLC, Sergey V Bulakh
Case No. D2012-0873
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Hosted LLC, Sergey V Bulakh of Kiev, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <legoinstrument.com> (Domain Name) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2012. On April 24, 2012, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On April 25, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 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 April 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2012.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on May 25, 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.
The language of the proceedings is English, being the language of the Registration Agreement (Annex No. 3 to the Complaint).
4. Factual Background
The Complainant is a company, operating worldwide under the widely-known LEGO trademark. It is the owner of numerous trademark registrations (listed in Annex 6 to the Complaint), including in Ukraine. The Complainant is also the owner of more than 2400 domain names containing the term “lego” (full list of domain names including the Complainant’s trademark is in Annex 8 to the Complaint). The LEGO Group also maintains an extensive web site under the domain name “www.lego.com”.
Over the years, the business of LEGO branded toys has grown remarkably. By way of example, the revenue for the LEGO Group in 2009 was more than USD 2,8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Ukraine.
The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.
The Respondent registered the Domain Name on September 15, 2011.
5. Parties’ Contentions
The Complainant LEGO Juris A/S based in Denmark is the owner of LEGO, and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products, including in Ukraine. Ukraine is the Respondent’s country of residence. The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in Ukraine and elsewhere. Complainant and its licensees (“the LEGO Group of Companies or the LEGO Group”), through their predecessors, commenced use of the LEGO mark in the United States of America during 1953, to identify construction toys made and sold by them.
The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. The Complainant underlines that it is the strict policy of the Complainant that all domain names containing the word LEGO should be owned by the Complainant.
The Complainant states that the Domain Name <legoinstrument.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, since it wholly incorporates the Complainant’s famous mark LEGO. The suffix “instrument” does not detract from that impression. The Complainant is confident that anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark LEGO there is a considerable risk that the trade public will perceive the Domain Name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. Moreover, the Complainant puts that by using the trademark as a dominant part of the Domain Name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark. Persons seeing the Domain Name at issue, even without being aware of the content, are likely to think that the Domain Name is in some way connected to the Complainant (“initial interest confusion”).
Secondly, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not a licensee of the Complainant. The Complainant demonstrates that there is nothing that could justify the Respondent’s use of the disputed domain name, there is no such trademark or trade name registration for the Respondent, nor does the name of the company Shyang Yun Hardware Co. Ltd. (as indicated on the website at the Domain Name) could lead to different results. The Complainant has also not found anything that would suggest that the Respondent has been using the Domain Name in any other way that would give them any rights or legitimate interests in the name. In addition to the above, it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name LEGO at the time of the registration, hence the Respondent’s interests cannot have been legitimate. Lastly, the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen a domain name based on the Complainant’s registered trademark in order to generate traffic to a commercial web site offering different consumer products.
Thirdly, the Complainant submitted that the Domain Name was registered and is being used in bad faith. The famous character of the trademark LEGO belonging to the Complainant and its widespread reputation throughout the world demonstrates that the Respondent, being aware thereof, must registered the disputed domain name in bad faith. Moreover, the Complainant two times tried to reach the Respondent in this case (on December 5, 2011 and on December 13, 2011), however, no reaction from the side of the Respondent was received. This is sufficient to demonstrate the Respondent’s bad faith. Moreover, by using the Domain Name the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(a) the domain name is identical or confusingly similar to a trade-mark or service mark in which Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in the domain name; and
(c) the domain name has been registered and is being used by the Respondent in bad faith.
A Complaint may only be granted if the above criteria are met simultaneously.
A. Identical or Confusingly Similar
The Complainant has proved to the Panel’s satisfaction that the Domain Name <LEGOinstrument.com> is confusingly similar to the name and trademark of the Complainant.
The confusing similarity of the disputed domain name to the Complainant’s trademark and service mark is apparent from a simple visual comparison. Unquestionably, which is further confirmed by a number of UDRP decisions, the Complainant’s trademark is famous (LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840) and LEGO is clearly a well-known mark all over the world. The disputed domain name is a replica of the Complainant’s famous and well-known registered trademark LEGO, supplemented solely by generic word “instrument”. The phrase “lego” does not appear to have any generic meaning in any European language, to the contrary there is no doubt that this is one of the world’s most recognizable marks.
The Domain Name contains a trademark owned by the Complainant. This may be sufficient to satisfy the requirement that the Domain Name in question is confusingly similar to a mark in which the Complainant has rights (see also Oki Data Americas Im v. ASD Inc, WIPO Case No. D2001-0903, wherein the panel found that when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words). Any added generic word, especially if it stands for the goods offered by the Respondent, generally does not cure this illegitimate use of the Complainant’s mark LEGO. This strongly suggests that the Domain Name is confusingly similar to the mark LEGO.
The Panel therefore finds that the Domain Name <legoinstrument.com> is confusingly similar to the Complainant’s trademark LEGO and as a consequence, the Complaint brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
From the evidence submitted before the Panel it is clear that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel, given the given the notoriety of the trademark LEGO, belonging to the Complainant, is well persuaded that it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name LEGO at the time of the registration. The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorized to use the Complainant’s mark. There is no evidence of the Respondent’s use of, or demonstrable preparation to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the Domain Name. The name of company identified on the Respondent’s website (Shyang Yun Hardware Co. Ltd) does not create any reasonable link with the trademark LEGO used in the Domain Name.
Nonetheless, the Respondent was also given the opportunity to challenge the case against him. However, the Respondent did not submit any evidence that would demonstrate that it has any rights to, or legitimate interests in the Domain Name.
The Panel therefore infers from the Respondent’s silence and the Complainant’s contentions, supported by a number of exhibits, that the Respondent has no serious arguments to prove its rights to, or legitimate interests in the Domain Name <legoinstrument.com>.
For the foregoing, the Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.
C. Registered and Used in Bad Faith
The Complainant is the owner of the trademark comprising of the word LEGO.
Under Article 4(b)(iv) a domain name is considered to be registered in bad faith, when, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 Respondent’s web site or location or of a product or service on its web site or location.
Based on the evidence submitted by the Complainant, the Panel finds that the Domain Name was registered and is being used in bad faith. The website offers hand tools and electrical consumer products from different brands, which are not affiliated with the Complainant.
The Panel is confident, that, in this is a case, the Respondent’s intention was to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s LEGO mark as a source, sponsorship, affiliation or endorsement. The Respondent’s registration of the Domain Name was done with a view to illegitimately taking advantage thereof.
In the absence of evidence to the contrary, the Panel is persuaded that the Respondent knew of, or should have known of the Complainant’s trademark and services at the time the Respondent registered the Domain Name. The fame of the Complainant’s mark is doubtless.
As a result, the Panel finds that the Domain Name <legoinstrument.com> was registered and is being used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.
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 <legoinstrument.com> be transferred to the Complainant.
Dated: June 11, 2012