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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Andrew Panin / Whois privacy services DomainProtect LLC

Case No. D2013-0112

1. The Parties

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

The Respondent is Andrew Panin of Udaltsova Moscow, Russian Federation / Whois privacy services DomainProtect LLC, Saint-Petersburg, the Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <lego-world.com> is registered with Domus Enterprises LLC dba DOMUS (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2013. On January 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2013, 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 January 22, 2013 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 January 22, 2013.

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 January 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2013.

The Center appointed Kamen Troller as the sole panelist in this matter on March 13, 2013. 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 has established that it has registered the designation LEGO as trademark in over 100 countries, amongst other also in the Russian Federation, since the 1970ies.

It has furthermore established that it owns over 1000 domain names which combine the designation LEGO with some other word. It owns amongst others the domain names <legoworld.de>, <legoworld.ch>, <legoworld.com>, <legoworld.de>, <legoworld.dk>, <legoworld.eu>, <legoworld.fr>, <legoworld.no> and <legoworld.org>.

5. Parties’ Contentions

A. Complainant

The Complainant 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. Only the Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in the Russian Federation; registration number 42.932. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the Russian Federation.

The Complainant is also the owner of more than 1000 domain names containing the term “lego”. It is the strict policy of the Complainant that all domain names containing the word LEGO should be owned by the Complainant.

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. Indeed, the LEGO trademark and brand have been recognized as being famous. A list of the official top 500 Superbrands for 2012, provided by Superbrands UK, shows LEGO as number 31 of the most famous trademarks and brands in the world.

The dominant part of the disputed domain name <lego-world.com> comprises the word LEGO, which is identical to the registered trademark LEGO, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world. The disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO. The fame of the trademark has been confirmed in numerous previous UDRP decisions. Anyone who sees the disputed 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 Respondent’s domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. The trademark also risk being tarnished by being connected to a website. By using the trademark as a dominant part of the disputed 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 disputed domain name, even without being aware of the content, are likely to think that the disputed domain name is in some way connected to the Complainant (“initial interest confusion”).

The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any rights in the name. Consequently the Respondent may not claim any rights established by common usage. It is also clear, that no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO.

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. It is rather obvious that it is the fame of the trademark that has motivated the Respondent to register the disputed domain name. That is, the Respondent cannot claim to have been using LEGO, without being aware of the Complainant’s rights to it. This, among other facts, proves that the Respondent’s interests cannot have been legitimate.

The Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a parked pay per click site. By this, the Respondent is then using the LEGO trademark and misleading Internet users to commercial websites and consequently, the Respondent is tarnishing the trademark LEGO. No evidence has been found that the Respondent uses the name as a company name or has any other legal right in the name LEGO. The Respondent is trying to sponge off the Complainant’s world famous trademark.

The Complainant first tried to contact the Respondent on January 3, 2013 through a cease and desist letter sent by email. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the disputed domain name violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the disputed domain names and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). However, despite two more reminders sent, no reply was received. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP proceedings.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant owns numerous worldwide trademark registrations for the mark LEGO amongst others in the Russian Federation, the country of the Respondent

The Complainant also owns numerous domain names incorporating trademark LEGO, amongst others

<legoworld.de>, <legoworld.ch>, <legoworld.com>, <legoworld.de>, <legoworld.dk>, <legoworld.eu>, <legoworld.fr>, <legoworld.no> and <legoworld.org>.

Also, the Complainant's rights in the LEGO trademark have been established in many previous UDRP decisions.

The disputed domain name <lego-world.com> is identical Complainant’s registered <legoworld.com> domain name with the exception that Respondent has separated the words lego and world by a hyphen. The disputed domain name furthermore integrates the Complainant’s LEGO trademark in its entirety, as a dominant element.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar the LEGO trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name.

In the present case, the Complainant has explained why it considers that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the LEGO trademark, or a variation thereof.

The Respondent has not submitted a Response and has not provided any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered in bad faith and is being used in bad faith.

It has been clearly established in these proceedings that the LEGO trademark is distinctive and is associated with the Complainant who has adopted and used it for many decades. It is highly unlikely that the Respondent was not aware of the pre-existing rights of the Complainant’s mark when registering the disputed domain name. Given these circumstances, the Panel has no hesitation in finding the disputed domain name has been registered in bad faith with knowledge of the Complainant’s rights in the LEGO trademark.

The screen shots of the Respondent’s websites filed as evidence, show the web pages linked to the disputed domain name have several sponsored advertisements to unrelated third party websites offering goods and services. Redirecting Internet users to other websites has been found to be bad faith use in previous UDRP cases under similar circumstances, as the domain name seeks to cash in on the trademark of another to attract Internet users. See Lego Juris A/s v. David Hudson, WIPO Case No. D2012-0060. The fact that the products displayed on the websites to which the Domain Names resolve comprise products of Complainant’s competitors and unrelated products of third party providers, as well as links redirecting the user to third party websites, such as “www.amazon.com”, where the displayed products are offered for sale, shows bad faith conduct on respondent’s part). The Panel notes that the Complainant’s attempts to contact the Respondent were of no avail, as the Respondent did not reply to the communications sent by the Complainant requesting for a voluntary transfer of the disputed domain name. While neglecting to reply to cease and desist notices or communications sent by the Complainant, in and of itself does not indicate bad faith, given the overall circumstances of the case, the failure on the part of the Respondent to reply, does lead to adverse inference about the Respondent.

The Panel finds from all the facts and the circumstances of this case, that the disputed domain name was registered by the Respondent with an intention to make commercial gains from the goodwill associated with the Complainant’s mark and to attract Internet users to the Respondent’s website by creating a likelihood of affiliation with the Complainant’s well known mark and with the intent of taking profit from the trademark LEGO. Paragraph 4(b)(iv) of the Policy makes reference to circumstances indicating bad faith registration and use of the domain name, if such registration and use is made with an intention to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location. For the reasons discussed, the Panel finds that the disputed domain name has been registered in bad faith and is being used in bad faith as envisaged under paragraph 4(b)(iv) of the Policy.

The Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy that the Respondent has registered and is using the disputed domain name in bad faith.

7. Decision

The Complainant has established that: (i) the disputed domain name is confusingly similar to a trademark in which it has rights and (ii) the Respondent lacks rights or legitimate interests in the disputed domain name and (iii) the disputed domain name was registered and is being used being used in bad faith. The Complainant has thereby fulfilled the requirements under the Policy to succeed in these proceedings.

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 name <lego-world.com> be transferred to the Complainant.

Kamen Troller
Sole Panelist
Date: March 23, 2013

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