WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Artur Dobek
Case No. D2013-1512
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Artur Dobek of Niebylec, Poland.
2. The Domain Name and Registrar
The disputed domain name <klocki-lego.info> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2013. On August 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2013.
The Center appointed Keith Gymer as the sole panelist in this matter on October 2, 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
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. 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, including in Poland.
The Complainant is the registered proprietor of numerous registrations for the LEGO trademark around the world, including, for example, Community Trade Mark registration 39800 dating from 1 April, 1996 (and with earlier seniorities), which applies throughout the EU, including in Poland.
The Respondent, Artur Dobek, is a private individual with an address in Poland. According to the WhoIs record, the disputed domain name was registered in the Respondent’s name on April 4, 2013. A website, in Polish, was operated at the address “www.klocki-lego.info”.
5. Parties’ Contentions
The Complainant asserts that the trademark LEGO is among the best-known trademarks in the world. A list of the top 500 Superbrands for 2012, provided by Superbrands UK, had LEGO as number 31 of the most famous brands.
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 LEGO Group also maintains an extensive web site under the domain name <lego.com>. 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 mark LEGO has substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered in the whole community to be significant.
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The dominant part of the disputed domain name <klocki-lego.info> comprises the word “lego”, which is identical to the registered trademark LEGO. The disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO. The addition of the prefix “klocki” (“klocki” is the polish word for “block”) in combination with a hyphen is not relevant and will not have any impact on the overall impression of the dominant part of the name, “lego”, which is instantly recognizable as a world famous trademark.
The fame of the trademark has been recognised in numerous previous UDRP decisions. See, e.g., 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”); LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715 (“The Panel finds, as numerous panels have found before, that the Complainant has established that LEGO is a well-known trademark and that the trademark is distinctive and famous”); LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680 (“LEGO is a mark enjoying high reputation as construction toys popular with children.”)
In LEGO Juris A/S v. Andika Jaya Kusuma, WIPO Case No. D2013-0113, the Panel concluded that the addition of the suffix “store” to the LEGO trademark did not prevent a finding of confusingly similarity between the disputed domain name and the LEGO trademark. Similarly, considering that the term “block” is a term closely associated with the Complainant’s business (i.e., LEGO blocks), the addition of the term “klocki” strengthens the impression of an association with the Complainant.
The addition of the top-level domain (TLD) “info” does not have any impact on the overall impression of the dominant portion of the domain name and is therefore irrelevant to determining confusing similarity between the trademark and the domain name.
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 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. 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 to 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 ( i.e, they are likely to experience “initial interest confusion”).
Summarizing, the Complainant is the owner of the well-known trademark LEGO. The domain name in question is clearly confusingly similar to the Complainant’s registered trademark LEGO. The suffix “klocki” does not detract from the overall impression and the domain name must therefore be considered to be confusingly similar to the Complainant’s trademark.
The Respondent has no rights or legitimate interests in respect of the domain name
The Respondent does not have any registered trademarks or trade names corresponding to the 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 legitimate 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. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated that, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
The Respondent registered the domain name on April 4, 2013. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. 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 domain name. That is, the Respondent cannot claim to have been using LEGO, without being aware of the Complainant’s rights to it, especially when the website using the domain name contains the LEGO logo and products sold by the Complainant. This, among other facts, proves that the Respondent’s interests cannot have been legitimate.
The Respondent is today 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 a registered trademark in order to generate traffic and income through an online shop of products produced by the Complainant as well as other unrelated products, produced by some of the Complainant’s competitors. The Respondent is trying to sponge off the Complainant’s world famous trademark. It is important to point out that in the current case, the Respondent is not an authorized reseller. In the present case, the Respondent conveys the false impression that the Respondent is an authorized reseller of the Complainant’s products. There is a “copyright” text displayed at the bottom of the website saying (in Polish) that they are an authorized Lego dealer, when in fact they are not.
In addition to above, the current website connected to the domain name offers several unrelated products for sale. Respondent could be using the trademark to bait Internet users and then switch them to other goods. Further, when entering the homepage, the Complainant’s trademark protected logotype for LEGO is displayed on the website. The fact that the LEGO logotype is displayed on the website connected to the domain name has earlier been stated not be bona fide use. In LEGO Juris A/S v. Probuilders, WIPO Case No. D2011-0226, the Panel stated: “The prominent use by the Respondent of the Complainant’s own logo is clearly designed to imply a connection between the Respondent and the Complainant. Accordingly, such use of the disputed domain name could not be said to be bona fide.”
From the above it is clear that the Respondent has no rights or legitimate interest in respect of the domain name.
The domain name was registered and is being used in bad faith
The trademark LEGO in respect to toys belonging to the Complainant has the status of well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world.
The number of third party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed recent years. The considerable value and goodwill of the mark LEGO is, most likely, a large contribution to this and also what made the Respondent choose to register the domain name at issue here.
The Complainant first tried to contact the Respondent on April 22, 2013 through a cease and desist letter. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the domain name violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). However, 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 process. It has been mentioned in earlier disputes that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith, e.g., News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460
Further, the Respondent has never been granted permission to register the domain name. The Respondent tries to take advantage of the well-known status of the LEGO trademark by intentionally attempting to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or a product or service on the registrant’s website or location.
In a similar case, LEGO Juris A/S v. Dugilcommerce, WIPO Case No. D2012-1971, the Panel stated:
“The Complainant provided evidence showing that the Respondent’s website did not merely contain products of the Complainant but also items that resemble products sold by the Complainant. In the Panel’s opinion, this constitutes an improper use of the Complainant’s mark by the Respondent who appears to have registered the confusingly similar domain name with the intention of taking advantage of the well-known status of the goodwill and fame established by the Complainant in the trademark for commercial gain. See Nikon Inc. v. Technilab, WIPO Case No. D2000-1774. The Panel finds that such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the policy.”
The same reasoning should apply here.
To summarize, LEGO is a famous trademark worldwide. It is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. 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.
Consequently, the Respondent should be considered to have registered and to be using the domain name in bad faith.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent made no reply to the Complainant’s contentions.
6. Discussion and Findings
In order for a panel to decide to grant the remedy of transfer or cancellation of a domain name to a complainant under the Policy it is necessary that the complainant must prove, as required by paragraph 4(a) of the Policy, that
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a formal Response to the Complaint in this case does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules, in the event of such a “default”, the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) of the Rules it “shall draw such inferences therefrom as it considers appropriate”.
Consequently, the Panel must proceed with an assessment of the Complaint on its merits.
A. Identical or Confusingly Similar
The Complainant has demonstrated relevant registered trademark rights and evidence of fame in the LEGO name and mark, and the Panel is in no doubt that the LEGO mark is indeed internationally well-known.
The disputed domain name is <klocki-lego.info>, which reportedly may be simply translated as “lego block(s)” in Polish.
This amounts to nothing more than a directly descriptive reference to the fundamental elements of the LEGO system – toy construction blocks. The TLD suffix, .info, in this case serves to imply that the domain would be used in relation to provision of information about LEGO blocks. The disputed domain name plainly incorporates the instantly recognisable LEGO name and mark for that purpose.
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and that the requirements of paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the respondent of the dispute, 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; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has made no claims to any relevant prior rights of its own. Clearly, the Respondent is not himself known by the disputed domain name, nor does the Respondent himself claim to have made legitimate, non-commercial use of the domain name. The disputed domain name has been used for a website apparently representing the site as that of a “LEGO authorized distributor” for the sale or resale of Lego products and with links to another site or sites also offering competing companies’ products. The Complainant has confirmed that the website owner is not a “LEGO authorized distributor” and has not been authorised to register or use any domain name incorporating the LEGO mark. Consequently, in the Expert’s view, such use cannot be considered as “bona fide” or to qualify as a “legitimate non-commercial or fair use”.
In these circumstances, the Panel accepts the Complainant’s submissions that the Respondent has no rights or legitimate interests in respect to the disputed domain name and the requirements of paragraph 4(a)(ii) of the Policy are met.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, the following are examples of the sort of conduct (without limitation) which, if found, shall be considered as evidence of registration and use in bad faith:
“(i) circumstances indicating that [the Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”
In the present case, the Panel considers that the example of paragraph 4(b)(iv) is unambiguously applicable to the Respondent’s use of the disputed domain name. It has been used specifically to attract internet users for commercial gain with deliberate misrepresentation as to the Respondent’s business relationship with the Complainant, as also noted in section 6B above. The evidence is sufficient to persuade the Panel that the disputed domain name was indeed registered in bad faith, and that there could be no good faith use without the Complainant’s authorisation.
For the purposes of the Policy, therefore, the Panel holds that the Domain Name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is met.
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 <klocki-lego.info> be transferred to the Complainant.
Date: October 16, 2013