WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Jamshed Hansan
Case No. D2015-1312
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Jamshed Hansan of Cranbourne North, Australia.
2. The Domain Name and Registrar
The disputed domain name, <legoz.xyz> (the "Domain Name"), is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 28, 2015 regarding the Domain Name and <legoz.top> and <legos.top>. On July 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name and the other mentioned domain names. On July 30, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of all three domain names and providing the contact details.
The Respondent filed an email communication with the Center on July 29, 2015, indicating that it was willing to transfer the three domain names cited in the original Complaint, namely the Domain Name and <legoz.top> and <legos.top>. The Center informed the Complainant accordingly and on July 30, 2015, the Complainant requested a suspension of proceedings for 30 days to enable the settlement to be executed. The Registrar confirmed the transfer of the domain names <legoz.top> and <legos.top> on August 3, 2015. The Domain Name was not transferred. On August 24, 2015, the Complainant requested the reinstitution of proceedings with respects to the Domain Name. The proceedings were reinstated on August 27, 2015.
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 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2015. The Respondent did not submit any formal response except for the email dated July 29, 2015 as mentioned before. Accordingly, the Center notified the Respondent's default on September 22, 2015.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 30, 2015. 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 Danish toy manufacturer best known for its toy bricks, which it has been selling worldwide for several decades under and by reference to the trade mark, LEGO.
The Complainant is the registered proprietor of numerous trade mark registrations covering its LEGO trademark, one of which is Australian Registration No. 129258, the application for which was filed on September 17, 1956. This registration, which covers the Respondent's home jurisdiction, is in class 28 for "toys, parts thereof and accessories thereto."
The Domain Name was registered on February 12, 2015 and resolves to a pay-per-click parking page currently featuring "sponsored links" to websites selling the Complainant's products and "related links" to commercial websites unrelated to the Complainant or its products.
When the Complaint was filed it originally addressed, in addition to the Domain Name, two other domain names of the Respondent, <legoz.top> and <legos.top>, but as can be seen from section 3 above, a suspension of this proceeding was allowed to enable settlement of the dispute to take place. For reasons unknown to the Panel the Domain Name remains in the hands of the Respondent while the other two have been transferred to the Complainant.
On March 2, 2015 the Complainant wrote to the Respondent drawing the Respondent's attention to the Complainant's rights and seeking transfer of the Domain Name and one other, <legoz.top>. In the course of the ensuing correspondence, the Respondent rejected the Complainant's claim to relevant rights, stating that "legoz" is not the same as "Lego" and that if the Complainant had wished to protect "Legoz", it should have registered it as a trade mark. The Respondent offered to sell the two domain names for USD 1,500, subsequently reducing the price to USD 500.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to its LEGO registered trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions by way of a Response, but in pre-Complaint correspondence the Respondent contended that "legoz" is not the same as "Lego" and that in consequence the Complainant has no cause for complaint.
In this mail of July 29, 2015, the Respondent furthermore stated that the Domain Name was registered on behalf of his friends overseas as they did not have a credit card for registration, and indicated that he did not "have intention to do anything with these name and this is not my business."
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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.
B. Identical or Confusingly Similar
The Domain Name comprises the Complainant's registered trade mark LEGO, the letter "z" and the generic ".xyz" top level domain identifier.
To the eye of the Panel the Complainant's trade mark stands out. Neither of the additional features does anything to dilute the distinctiveness of the Complainant's trade mark. Adding the letter "z" to some trade marks may have a very different effect, but the Complainant's trade mark is a made-up word and has over the years built up a very significant worldwide reputation. It is clearly recognizable in the Domain Name.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy the Complainant is required to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(c) of the Policy, which is addressed to respondents, identifies a non-exhaustive list of what respondents need to prove to demonstrate their rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy. Broadly, this involves demonstrating that the domain name in dispute has been used or is proposed to be used in connection with a bona fide offering of goods or services; or that the respondent is commonly known by the name in question; or that the respondent has been making a legitimate noncommercial or fair use of the domain name in dispute.
However, it is for the Complainant to demonstrate a prima facie case and if the Complainant is successful in establishing a prima facie case (i.e. a case to answer), it is for the Respondent to answer that case.
The Panel is in no doubt that the Complainant has done enough to establish a prima facie case. The Domain Name is not the name of the Respondent, the principal element of the Domain Name is the Complainant's trade mark and the Complainant has not granted the Respondent any licence to use that trade mark whether as part of a domain name or for any other purpose. On the face of it, as alleged by the Complainant, it seems very probable that the Respondent registered the Domain Name with a view to attracting visitors (intending to reach a site of the Complainant) to the Respondent's website and presumably for commercial gain. The Domain Name resolves to a parking page featuring pay-per-click advertising links.
In the absence of any explanation from the Respondent the Panel finds that there is no answer to the Complainant's prima facie case and that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
In the absence of any explanation from the Respondent, and given that (a) the Domain Name has consistently resolved to a commercial pay-per-click parking page making prominent reference to the Complainant's LEGO trade mark and (b) the Respondent's response to the Complainant's letter of complaint was to offer to sell the Domain Name to the Complainant for a sum well in excess of the Respondent's out-of-pocket costs related to the Domain Name (see section 4 above), the Panel finds on the balance of probabilities that the Respondent registered the Domain Name and has been using it in bad faith within the meaning of one or both of paragraphs 4(b)(iv) or 4(b)(i) 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 <legoz.xyz> be transferred to the Complainant.
Date: October 14, 2015