The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Bianca Carolina Pereir, Uberab of Minas Gerais, Brazil.
The disputed domain name <brinquedoslego.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 27, 2016. On May 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 31, 2016, 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.
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, and the proceedings commenced on June 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 23, 2016.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on June 29, 2016. 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 Complainant has registered LEGO trademarks all over the world, including trademark registration no 825,261,023 in Brazil, where the Respondent is based.
The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries.
The Complainant is the owner of over 5,000 domain names containing the term "lego".
The Domain Name <brinquedoslego.com> was registered on October 4, 2015. The Domain Name resolves to a website displaying sponsored links, some of which relates to the Complainant and its products. The Complainant has also provided evidence showing that, prior to its cease and desist letter, the Domain Name resolved to a webshop displaying the Complainant's brand and logotype.
The Complainant argues that the dominant part of the Domain Name comprises the term "lego", identical to the registered trademark LEGO, registered by the Complainant as trademarks and domain names in numerous countries all over the world. Moreover, the fame of the trademark has been confirmed in numerous previous UDRP decisions, such as LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692: "The Panel finds that the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive".
Pursuant to the Complainant, the Domain Name comprises the term "brinquedos", which is Portuguese for "toys".
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. Neither has the Complainant found anything, including the WhoIs details, that would suggest that the Respondent has been using "lego" in any other way that would give it legitimate rights in the Domain Name. Complainant therefore argues that the Respondent may not claim any rights established by common usage, nor that it has been authorized, to use the trademark LEGO.
The Complainant states that Respondent has chosen the Domain Name in order to generate traffic and income through a website that was initially used as a webshop displaying the Complainant's registered LEGO logotype, but that is now commercial through sponsored links, of which many are not related to the Complainant.
The Domain Name was registered on October 4, 2015. This date is subsequent to when the Complainant registered the trademark LEGO in Brazil, and elsewhere. Considering that LEGO is a world famous trademark, it is clear for the Complainant that the Respondent knew of the Complainant's legal rights in LEGO at the time of the registration.
The Complainant concludes that the Respondent is using the Domain Name to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website.
The Complainant also points to other evidence of bad faith, such as the fact that the Respondent replied to the Complainant's cease and desist letter offering to sell the Domain Name to the Complainant for EUR 2,423.80. The Complainant submits evidence of such offer with the Complaint.
The Respondent did not reply to the Complainant's contentions.
The Complainant has established that it has rights in the trademark LEGO.
The test for confusingly similarity involves the comparison between the trademark and the domain name. In this case, the Domain name combines the Portuguese word "brinquedos" (Portuguese for "toys") and the Complainant's trademark LEGO. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to typically ignore the generic Top-Level Domain ("gTLD") ".com".
The Panel finds that the Domain Name is confusing similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Respondent does not have any registered trademarks or trade names corresponding to the Domain Name. Neither is there any evidence suggesting that the Respondent has been using LEGO in a way that would give it legitimate rights in the Domain Name. No authorization has been granted by the Complainant to the Respondent.
The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead, the Respondent has chosen the Domain Name based on Complainant's trademark value in order to generate traffic and/or sell the Domain Name. Moreover, the Respondent has not answered to the Complainant's contentions.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
The Panel is convinced that the Respondent was aware of the Complainant's trademark LEGO when it registered the Domain Name. The Complainant has used its trademark decades before the registration of the Domain Name. The trademark is well-known and the Complainant has attached evidence of the LEGO mark being displayed at the Domain name.
The Panel also finds use of the Domain Name in bad faith. The Domain Name has been used, based on both uses of the Domain Name as evidenced by the Complainant, to try to attract Internet users for commercial gain by misleading them into believing that the website at the Domain Name is authorised by or somehow connected to the Complainant. The Respondent has offered the Domain Name for sale to the Complainant. Furthermore, the Respondent did not reply to the Complaint.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) of the Policy.
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, <brinquedoslego.com>, be transferred to the Complainant.
Mathias Lilleengen
Sole Panelist
Date: July 4, 2016