WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Kiana Seyfi, Lego
Case No. D2016-1166
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Kiana Seyfi, Lego of Tehran, the Islamic Republic of Iran (“Iran”).
2. The Domain Name and Registrar
The disputed domain name <legodecor.com> (the “Domain Name”) is registered with Realtime Register B.V. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2016. The Center transmitted its request for registrar verification to the Registrar on June 10, 2016. The Registrar replied on June 13, 2016, confirming that it was in receipt of a copy of the Complaint, that the Domain Name was registered with it, that the Respondent was the current registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name, that the Domain Name would expire on September 27, 2016, that a lock had been applied to the Domain Name and would remain in place during this proceeding, and that the language of the registration agreement was English. The Registrar also provided the full contact details held on its WhoIs database in respect of the Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 14, 2016. The notification was sent to the email address of the Respondent according to the Registrar’s WhoIs data. In accordance with paragraph 5 of the Rules, the due date for Response was July 5, 2016. The Respondent did not submit any response by this date. Accordingly, the Center notified the Respondent’s default on July 8, 2016.
The Center sent a further notification of the Complaint on July 12, 2016 to two email addresses provided on a website located by the Domain Name, and granted an extension of time to July 17, 2016, to file a Response. No Response was filed.
The Center appointed Jonathan Turner as the sole panelist in this matter on August 2, 2016. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is a member of the Lego group of companies and the proprietor of registrations of the mark LEGO in numerous countries around the world, including Iran as of 1964.
The Domain Name was registered on September 27, 2013, and is currently directed to a website which appears to promote engineering and decoration services.
The Complainant sent cease and desist letters to the Respondent by post and email on October 27, November 4 and November 11, 2015. The Respondent did not reply.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the mark LEGO in which it has registered rights. The Complainant points out that the Domain Name consists of this very well known and distinctive mark followed by the descriptive word “decor” and the generic Top-Level Domain (gTLD) suffix “.com”.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. According to the Complainant, the Respondent is not using the Domain Name for a bona fide offering of goods or services, because it is trading off the Complainant’s well known mark to attract Internet users to its website. The Complainant states that searches indicate that the Respondent is not operating any physical store under the Domain Name or any corresponding name. The Complainant also states that it has not granted any licence or authorization to the Respondent to use the mark LEGO and that there is nothing to suggest that the Respondent has any other legal rights in the Domain Name.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant points out that the Domain Name was registered long after its LEGO mark was registered in Iran (the Respondent’s country) and elsewhere. The Complainant draws attention to the fact that its letters to the Respondent went unanswered. The Complainant observes that the name “LEGO Engineering and Decoration” is displayed on entering the Respondent’s website without any disclaimer pointing out that it is not connected with the Complainant’s group. According to the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name, but is misleadingly diverting consumers for commercial gain.
The Complainant requests a decision that the Domain Name be transferred to it.
As stated above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default in failing to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Complainant clearly has registered rights in the mark LEGO.
The Panel finds that the Domain Name is confusingly similar to this mark. In line with numerous previous decisions under the UDRP, the gTLD suffix can be discounted. The only other difference between the Domain Name and the Complainant’s mark is the addition of the word “decor”. Bearing in mind the highly distinctive nature and very strong reputation of the mark LEGO, the Panel considers that the addition of the word “decor” is not sufficient to avert confusion, particularly as an Internet user could suppose that the Complainant’s group had branched out into this area. Accordingly the Panel concludes that the first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel is satisfied on the undisputed evidence that the Respondent is not making a bona fide offering of goods or services using the Domain Name. Either the Respondent has no genuine business that is being promoted by its website or it is using the Domain Name to attract potential customers to its website through confusion with the Complainant’s well known and distinctive mark.
The Panel further finds on the undisputed evidence that the Respondent is not commonly known by the Domain Name or any corresponding name. The inclusion of “lego” in the Respondent’s name as provided for the registration of the Domain Name is not in itself evidence that the Respondent is commonly known by this name. It is also clear that the Respondent is not making legitimate noncommercial or fair use of the Domain Name.
In all the circumstances, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the Domain Name. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the undisputed evidence that by using the Domain Name the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by confusion with the Complainant’s LEGO mark as to the source, sponsorship, affiliation or endorsement of its website.
In accordance with paragraph 4(b)(iv) of the UDRP, this constitutes evidence of registration and use of the Domain Name in bad faith. This presumption is not displaced by any contrary evidence. Accordingly the Panel concludes that the third requirement of the UDRP is satisfied.
All three requirements of the UDRP are satisfied and it is appropriate to order that the Domain Name be transferred to the Complainant.
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, <legodecor.com>, be transferred to the Complainant.
Date: August 5, 2016