WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Konrad Bodurkiewicz, CONSOLIDO Sp. z o.o.
Case No. D2015-1398
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Konrad Bodurkiewicz, CONSOLIDO Sp. z o.o. of Warsaw, Poland.
2. The Domain Name and Registrar
The disputed domain name <klublego.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 7, 2015. On August 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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.
On August 12, 2015, the Center notified the Parties in both English and Polish that the language of the Registration Agreement for the disputed domain name was Polish. On August 21, 2015, the Complainant submitted the translated version of the Complaint in Polish while requesting that English be the language of the proceeding. The Respondent did not submit its request for the language of the proceeding.
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 in both English and Polish, and the proceeding commenced on September 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the parties about the commencement of panel appointment process on September 30, 2015.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on October 14, 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 owner of the LEGO trademark, reported to be one of the world's most recognized marks, and of several other trademarks used in connection with its brands of construction toys and other LEGO branded products.
The Complainant carries on its business globally, selling its LEGO branded products in more than 130 countries, including in Poland, where the Respondent appears to be located.
The LEGO trademark has been registered around the world by the Complainant, including in Poland. The registrations include, inter alia, a Community Trademark number 39800 dated October 5, 1998 for the word LEGO ("the Mark").
The Complainant is also the registrant of close to 4,300 domain names containing the Mark, including among others, the domain names <legocub.com>, <kataloglego.pl>, <klocki-lego.pl> and <legolink.com.pl>. Its main domain name <lego.com> resolves to the Complainant's official website, which contains a club page at "www.lego.com/club".
The disputed domain name <klublego.com> was created on March 30, 2015 and resolved to a website which displayed the Mark and currently to a blank page with the statement, in both Polish and English, "under construction".
5. Parties' Contentions
(i) The Complainant submits that the disputed domain name reproduces the Mark, in which the Complainant has rights, and is confusingly similar to the Mark insofar as the disputed domain name, <klublego.com>, contains the distinctive element "lego" in its entirety. The Complainant also asserts that the addition of the generic term "klub" (which means "club" in Polish) does not serve to distinguish the disputed domain name <klublego.com> from the Mark and only adds to the confusion.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never authorized the Respondent to use the Mark in any manner. The Complainant also asserts that the Respondent does not appear to be known by the disputed domain name, has never had any business relationship with the Complainant and is not an authorized dealer of the Complainant's products.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that the Mark being famous worldwide, including in Poland where the Respondent resides, the Respondent had full knowledge of the Mark when registering the disputed domain name.
(iv) The Complainant submits that by misleadingly diverted consumers, most likely for his own commercial gain, the Respondent is using the disputed domain name in bad faith.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
The Respondent merely replied to the Complainant's representative's cease and desist letters with an email in Polish dated June 10, 2015, i.e. pre-commencement of this procedure, in which the Respondent drew the attention of the Complainant's representative to the fact that the pages (of the website to which the disputed domain name resolves) are inactive; and declared his intent to cooperate positively with the Complainant, having actually proposed to the Complainant's representative in Poland such a cooperation and awaiting a positive answer. The Respondent ends this email by assuring that until this matter is clarified, the Internet pages shall not be activated and that he will take into consideration any suggestions from the Complainant.
6. Discussion and Findings
6.1. Procedural Aspects
A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".
The Registrar confirmed that the language of the Registration Agreement of the disputed domain name is Polish.
The Complainant in its Complaint formally requested that the language of the proceeding be English, to which the Respondent failed to comment on or object despite the Center's invitation to do so, expressed in Polish as well as in English, such invitation having been sent to the Respondent on August 12, 2015.
Furthermore, the Complainant's representative had sent to the Respondent a translation into Polish of its cease and desist letter of May 12, 2015, and the Complainant provided to the Center a translation into Polish of its Complaint, which it communicated to the Respondent, without generating any substantive response from the Respondent.
In adopting a language other than that of the Registration Agreement, the Panel has to exercise discretion in the spirit of fairness to both parties, which pursuant to paragraph 10(b) of the Rules have to be treated with equality, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs.
In the light of the above circumstances, and having to ensure pursuant to paragraph 10(c) of the Rules that the administrative proceeding takes place with due expedition, the Panel, who is conversant in both English and Polish, determines pursuant to paragraph 11(a) of the Rules that the appropriate language of the proceeding is English.
B. Failure to respond
As aforementioned, no Response was received from the Respondent.
Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant's burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent's default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant's arguments that the Respondent has acted in bad faith.
6.2. Requirements of paragraph 4(a) of the Policy
A. Identical or Confusingly Similar
In comparing the Mark with the disputed domain name <klublego.com>, it is evident that the latter consists solely of the Mark, preceded by the generic term "klub", and followed by the generic Top-Level Domain (gTLD) ".com".
The addition of generic terms does not typically serve to distinguish a domain name from a registered mark. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
As the Complainant demonstrated that it has a club within its own official website, the Panel is of the view that the term "klub" serves to corroborate the impression that the disputed domain name belongs to, or is affiliated with the Complainant.
It is also well established that the gTLD ".com" does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.
The Panel finds that the disputed domain name <klublego.com> is confusingly similar to the Mark, which is incorporated in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or uses the disputed domain name in a business.
The website associated with the disputed domain name is currently inactive.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no business relationship with the Complainant, (ii) received no authorization from the Complainant to register or use the disputed domain name, (iii) is not an authorized dealer of the Complainant's branded products and (iv) is not known by the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant's arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Mark.
It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In this case, given that the Mark is famous, a s was recognized in a number of previous UDRP cases (see LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680 and LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840), the Panel finds that it is highly unlikely that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney's Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
The fact that the Respondent registered, in addition to the disputed domain name, at least three additional domain names (<klublego.eu>, <klublego.com.pl> and <legoklub.pl>) confirms the implausibility of a random registration of the disputed domain name and by contrast reveals a behavioral pattern.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Moreover, it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; and Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004; Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.
Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
It could also be inferred from the concluding words of the email of June 10, 2015 that the Respondent was impliedly inviting the Complainant to bid for the transfer of the disputed domain name, which may in certain circumstances amount to an attempt to transferring the disputed domain name for valuable consideration in excess of the Respondent's out-of-pocket expenses that can legitimately be claimed back (the Complainant's representatives having duly offered to reimburse such expenses in their cease and desist letter of May 12, 2015).
The Panel concludes in the light of all these circumstances that the Respondent's registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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, <klublego.com>, be transferred to the Complainant.
Date: October 26, 2015