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WIPO Arbitration and Mediation Center


LEGO Juris A/S v. pcmaniabg, Paisiy Aleksandrov

Case No. D2010-1965

1. The Parties

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

Respondent is identified as pcmaniabg, Paisiy Aleksandrov of Sofia, Bulgaria.

2. The Domain Name and Registrar

The disputed domain name <lego-bg.com> 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 November 17, 2010. On November 17, 2010, 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 November 19, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 15, 2010.

The Center appointed Clark W. Lackert as the sole panelist in this matter on January 4, 2011. 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

Complainant LEGO Juris A/S is a Danish company which is in the business of making and selling construction toys and other products which are branded under the term LEGO. Complainant has provided details of multiple trademark registrations for LEGO which provide protection in over 180 jurisdictions and territories worldwide including Respondent’s country of Bulgaria.

The domain name <lego-bg.com> was registered on April 1, 2009. The registrant of the domain name is identified as “pcmaniabg, Paisiy Aleksandrov”. The contact person for the disputed domain name is identified as Paisiy Aleksandrov of Sofia, Bulgaria. The registrar for the disputed domain name is Directi Internet Solutions Pvt. Ltd. which also conducts business under the name Publicdomainregistry.com. The content of the website associated with the disputed domain name features Complainant’s LEGO trademark and construction toys and other products which appear to be similar to the type offered by Complainant. The disputed domain name also displays a logo design featuring the LEGO mark.

Complainant sent a cease and desist letter to Respondent on August 25, 2010 regarding the <lego-bg.com> domain name. Respondent did not respond to the cease and desist letter. A reminder was sent to Respondent on October 4, 2010. Respondent did not reply to the reminder letter.

5. Parties’ Contentions

A. Complainant

Complainant states that the LEGO name and LEGO trademark are both well-known worldwide. Complainant claims to have subsidiaries and branches throughout the world which sell LEGO branded products in over 130 countries including Respondent’s country of Bulgaria. Complainant notes that revenue for Complainant’s LEGO group was more than US D2.8 billion in 2009 and cites prior UDRP decisions which acknowledge that its LEGO trademark is well-known, namely LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840 (“LEGO is clearly a well-known mark”) and LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260 (“In the present case, the disputed domain names incorporate the Complainant’s well-known registered trademark LEGO”). Complainant claims ownership of over 1000 domain names incorporating its LEGO trademark including <lego.com> which was registered on August 22, 1995.

Complainant alleges that the use of its LEGO trademark in the disputed domain name is exploiting the goodwill and the image of the LEGO trademark and has the potential to dilute the LEGO trademark. Complainant maintains that no license or authorization of any kind has been granted to Respondent by Complainant for use of the trademark LEGO, and observes that members of the public accessing the <lego-bg.com> domain name are likely to believe that the website is commercially related to Complainant. Complainant also states that Respondent has no rights or legitimate interests with regard to the <lego-bg.com> domain name, and that registration and use of the domain name has been made in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant registered the LEGO trademark in Bulgaria on December 6, 1977 and in the European Community on October 5, 1998. Both of these registrations precede the registration of the <lego-bg.com> domain name owned by Respondent.

The disputed domain name <lego-bg.com> is confusingly similar to the LEGO trademark in that Complainant adds only “bg” as a suffix, which is the two letter International Organization for Standardization (“ISO”) country code and the two letter country code top level domain (ccTLD) abbreviation corresponding to Bulgaria. Incorporation of the letters “bg” does not mitigate any possible confusion, rather contributes to the likelihood that consumers will believe that the products offered originate from a Bulgarian-based affiliate of the Complainant given that the content of the website is in Bulgarian and “bg” is the ISO and ccTLD code corresponding to Bulgaria. Prior cases have held that the incorporation of an ISO or ccTLD code is a non-distinctive element which does not avoid confusing similarity. See, e.g., eBay Inc. v. David Sach, WIPO Case No. D2009-1083 (finding that the addition an ISO country code to EBAY in the domain name <ebay-cz.com> is not enough to avoid confusing similarityarising from the use of EBAY) and Samsung Electronics, Co., Ltd. v. Maksim, WIPO Case No. D2010-1274 (finding that the addition of the “ua” ccTLD in <samsung-ua.com> only aggravates confusion).

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

B. Rights or Legitimate Interests

The disputed domain name <lego-bg.com> was registered on April 1, 2009 and Complainant’s trademark rights in LEGO precede this domain name registration. There is no evidence in the record to indicate that Respondent is licensed to use Complainant’s LEGO trademark, that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the term LEGO.

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

C. Registered and Used in Bad Faith

The record shows that Complainant has owned the LEGO trademark for decades and has registered the mark in multiple jurisdictions for Class 28 goods which include construction toys. Prior decisions have held that the LEGO mark is well-known, including LEGO Juris A/S v. Reginald Hastings Jr., WIPO Case No. D2009-0680 (“The LEGO mark is well-known worldwide”), LEGO Juris A/S v. M. Moench, WIPO Case No. DNL2009-0052 (“Complainant has established that the LEGO trademark has acquired a high reputation and should be considered as well-recognized and world famous”), 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”), and LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715 (“The Complainant has asserted that LEGO is a famous trademark worldwide”). It has been established that the registration of a domain name incorporating a well-known trademark can constitute registration in bad faith, since it is unlikely that the registrant was unaware of the established rights in the mark at the time the domain name was registered. See, e.g., Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (finding bad faith since it was unlikely that the registrant of <nike-shoes.com> was unaware of complainant’s well-known NIKE trademark when registering the domain name) and Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 (finding bad faith, noting that it was implausible that respondent was unaware of complainant’s trademark.PORSCHE when registering <porsche-me.com>). Given the notoriety of the LEGO trademark, the Panel finds that it is implausible that Respondent was unaware of Complainant’s trademark rights when registering the disputed domain name <lego-bg.com>.

Moreover, the website located at <lego-bg.com> offers LEGO branded products including construction toys. Based on this content, Respondent is clearly aware of Complainant’s business and appears to have chosen the <lego-bg.com> domain name in an effort to deceive customers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by Complainant, most probably the Bulgarian website for the Complainant. Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. Continued use of the <lego-bg.com> domain contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <lego.com> website. There is no evidence in the record to refute this conclusion.

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

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lego-bg.com> be transferred to the Complainant.

Clark W. Lackert
Sole Panelist
Dated: January 18, 2011