WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o.

Case No. D2012-0607

1. The Parties

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

The Respondent is Whois Data Protection Sp. z o.o. of Krakow, Poland / Mirek Nowakowski Rostalco Sp. z o.o. of Piaseczno, Poland.

2. The Domain Name and Registrar

The disputed domain name <klocki-lego.com> is registered with NetArt Registrar Sp. z o.o. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2012. On March 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 4, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 4, 2012. On April 4, 2012, the Center transmitted an email to the Parties in both Polish and English regarding the language of proceedings. On April 4, 2012, the Complainant requested that English be the language of proceeding. The Respondent did not comment on the language of the proceedings by the specified due date.

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 April 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2012. The Respondent did not submit any response. On May 1, 2012, the Center received an email communication from the Respondent regarding the changes in the Respondent’s contact information. On May 11, 2012, the Respondent submitted a supplemental filing.

The Center appointed Marcin Krajewski as the sole panelist in this matter on May 11, 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 the owner of numerous trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products. In particular, the Complainant is the owner of:

- the European nominative trademark consisting of the word LEGO No. 39800, registered on October 5, 1998, in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42.

- the Polish nominative trademark consisting of the word LEGO No. 46740, registered in class 28.

The LEGO trademark is among the best-known trademarks in the world. In 2009 it was recognized by Superbrands UK as number 8 of the most famous trademarks and brands in the world.

The Complainant has subsidiaries and branches throughout the world and Lego products are sold in more than 130 countries, including Poland.

The Complainant is also the owner of more than 2,400 domain names containing the term “lego”, including <lego.pl>. The Complainant and its licensees maintain a web site under the domain name <lego.com>.

The Respondent’s country of residence is Poland. It registered the disputed domain name on January 25, 2012. The domain name resolves to a website selling original LEGO products but also toys of other manufacturers. The website does not display any disclaimer disclosing its relationship with the owner of the LEGO trademark.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular the Complainant claims that:

(i) The domain name in dispute is confusingly similar to the trademarks in which the Complainant has rights

The Complainant claims that the dominant part of the disputed domain name comprises the word “lego”, which is identical to the registered trademark LEGO. The addition of the prefix “klocki” and a hyphen is not relevant and does not have any impact on the overall impression of the dominant part of the name. The English translation of the Polish word “klocki” is “blocks” and it is generally recognized that when a well-known trademark is paired up with a generic prefix or suffix this does not prevent finding the confusing similarity. The Complainant also contends that the addition of the top-level domain “.com” is irrelevant in determining the confusing similarity between the trademark LEGO and the disputed domain name.

(ii) The Respondent has no rights or legitimate interests in respect of the domain name in dispute

The Complainant states that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the LEGO trademark. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.

The Complainant contends that the Respondent neither had any registered trademarks or trade names corresponding to the disputed domain name nor had been using the word “lego” in any other way that would create any legitimate rights in the name. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.

Regarding the fact that the disputed domain name is used in connection with offering LEGO products the Complainant claims that although a legitimate interest in the domain name can be created by a reseller making a bona fide offering of goods, the requirements of such bona fide offering are not satisfied in the present case. In particular, the Respondent uses the website to sell products which are not related to LEGO. Moreover, the Complainant contends that the website does not disclose its owner’s relationship with the LEGO trademark owner and the content of the website may even suggest that its owner has itself rights in the LEGO trademark.

(iii) The domain name in dispute was registered and used in bad faith

In support of this view the Complainant contends that the LEGO trademark has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole world. Therefore, it is obvious that the Respondent registered the disputed domain name with the Complainant’s distinctive and well-known trademark in mind.

The Complainant contends that by using the disputed domain name the Respondent intentionally attempts to attract Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.

Moreover, the Respondent failed to respond to a cease and desist letter which was sent by the Complainant. In the view of the Complainant this fact should also be considered relevant in finding bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions within the time limit provided.

In its supplemental filing the Respondent stated that it is one of the three biggest distributors of LEGO in Poland and its usage of the disputed domain name is beneficial both for the Respondent and the Complainant. Moreover, the Respondent offered to add a link to the official website of the Complainant on its own website.

In the opinion of this Panel late responses and supplemental filings should be disregarded in the absence of good cause. However, regarding the content of the supplemental filing, it would be pointless to consider whether there was such a good cause in the present case, for taking into account the filing would not alter the Panel’s view on the merits of the case.

6. Discussion and Findings

A. Procedural

(i) Identification of Respondent

The Complainant initially named Whois Data Protection Sp. z o.o. as the Respondent because it was unable to obtain the name of the true registrant. The Registrar of the disputed domain name, in reply to the Center's request, divulged the name and contact details of the underlying registrant (i.e. of “Mirek Nowakowski Rostalco Sp. z o.o.”). The Center provided the information to the Complainant, and the Complainant subsequently submitted an amendment to the complaint. Although it is not fully clear to the Panel whether the Complainant’s intention was to replace the previous Respondent by the new one or just to add the new Respondent, this Panel finds it appropriate to follow the practice of most of the UDRP panels and record in this decision both the name of the privacy registration service and that of the disclosed underlying registrant. In this connection the Panel proceeds on the basis that both Whois Data Protection Sp. z o.o. and Mirek Nowakowski Rostalco Sp. z o.o. are Respondents in this administrative proceeding, but proposes to treat Mirek Nowakowski Rostalco Sp. z o.o. as the substantive Respondent and references herein to “the Respondent” are to be construed accordingly.

(ii) Language of the Proceeding

The language of the registration agreement for the disputed domain name is Polish. Paragraph 11(a) of the Rules provides that “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”.

In opinion of this Panel the relevant circumstances that should be taken into consideration while determining the language of the proceedings include the fact that the Respondent did not object to the Complainant’s request for English being the language of the proceeding. Moreover, by submitting a supplemental filing the Respondent proved that it is able to understand and effectively communicate in the language in which the Complaint has been made. It is also worth noting that English is not the native language of either party so neither of them would be unfairly prejudiced by using this language.

Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.

B. The Merits

Paragraph 4(a) of the Policy provides that the following facts must be established in order to grant the Complainant the remedy requested:

(1) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(3) that the disputed domain name has been registered and is being used in bad faith.

(i) Identical or Confusingly Similar

The most distinctive part of the disputed domain name is “lego”, which is identical to the Complainant’s trademarks. The Panel agrees with the Complainant’s argument that the addition of the prefix “klocki” and a hyphen is not relevant. Regarding the fact that the Complainant’s core business is manufacturing Lego blocks, using the Polish word “klocki”, which means “blocks” in English, can even be regarded as increasing the risk of confusion.

For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix “.com” must be disregarded as being simply a necessary component of a generic top level domain.

Accordingly, the Panel finds that the Complaint has satisfied paragraph 4(a)(i) of the Policy.

(ii) Rights or Legitimate Interests

The crucial point of this case seems to be whether the Respondent has rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances establishing a respondent’s rights or legitimate interests in a domain name, including the following:

“(i) before any notice to you of the dispute, your 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”.

Following the view of most UDRP panels this Panel finds it appropriate to determine the question whether the Respondent may be found to have a right or legitimate interest in using the Complainant’s mark in the disputed domain name under the criteria articulated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a reseller could be deemed a “bona fide offering of goods or services” only if the following conditions are satisfied:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods;

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

In the present case it is clear that at least two of the mentioned requirements are not satisfied. In particular, the fact that the Respondent sells both Lego related products together with other products excludes the bona fide offering of goods or services. There is a risk that by doing this, the Respondent is using the trademark in a domain name to bait consumers and then divert them to other goods.

Moreover, the Respondent’s website does not contain a disclaimer disclosing its relationship with the LEGO trademark owner. This Panel agrees that such a disclaimer is necessary to find a bona fide offering of goods and services, as otherwise the public could be misled as to the nature of the website’s owner’s business.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

(iii) Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.

Paragraph 4(b) of the Policy gives non-exhaustive illustrations of bad faith registration and use, including the following:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Panel has no doubt that the Respondent had the Complainant’s rights in mind when registering the disputed domain name, given the Respondent’s presence in and knowledge of the toys market. The LEGO mark is long-established, widely known and distinctive.

It is equally clear that the disputed domain name was also used in bad faith. The Panel agrees that the Respondent is intentionally diverting Internet users to its websites by exploiting the confusing similarity between the disputed domain name and the Complainant’s marks. Further, the Panel finds that the Respondent is engaging in this conduct in order to reap commercial gain. The Respondent’s illegitimate use of the Complainant’s marks in order to sell the products of the Complainant’s competitors and failure to display a proper disclaimer on the website are additional indications of bad faith.

Moreover, the Panel agrees that the Respondent’s failure to answer the Complainant’s cease and desist letter can be taken into account in a finding of bad faith.

Accordingly, the Panel finds that the Complaint has satisfied paragraph 4(a)(iii) of the Policy.

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 <klocki-lego.com> be transferred to the Complainant.

Marcin Krajewski
Sole Panelist
Dated: May 25, 2012