WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Andrei Novakovich
Case No. D2016-1513
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Andrei Novakovich of S. Artakovo-Vandarec, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <lego-airport.com> is registered with Registrar of Domain Names REG.RU LLC (the "Registrar").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 26, 2016. On July 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2016, 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 August 1, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Registrar further informed the Center that the language of the registration agreement for the disputed domain name was Russian. On August 1, 2016, the Center sent the the language of the proceeding document in both English and Russian, and invited the Complainant to state its position on this issue by August 4, 2016, and the Respondent by August 6, 2016. On August 1, 2016, the Complainant filed an amended Complaint and confirmed its request the language of the proceeding to be English. The Respondent did not make any submissions regarding the language of the proceeding.
The Center verified that the Complaint together with the amended 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 Russian, and the proceeding commenced on August 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2016. Apart from several informal emails received from Respondent, no formal Response was filed with the Center.
The Center appointed Assen Aleviev as the sole panelist in this matter on September 12, 2016. 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.
In respect of the language of the proceeding, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, 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 Complainant requests that the proceeding be held in English. In support of its request, the Complainant points out that it would be inefficient if the proceeding be held in Russian, and that it would be cumbersome to the Complainant to translate the entire Complaint into another language.
The Respondent has not rejected the Complainant's request and has not expressed any preference as to the language of the proceeding. The Center has sent all its messages to the Respondent in both English and Russian and has informed the Parties that it will accept a Response in either English or Russian.
In these circumstances, it appears to the Panel that rendering this decision in English will be fair and efficient and will not put either of the Parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will review and take into account the relevant evidence that is available in this case in either Russian or English.
4. Factual Background
The Complainant LEGO Juris A/S is based in Denmark. It is the owner of the LEGO brand used in connection with 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. The LEGO Group has expanded its use of the LEGO trademark to computer hardware and software, books, videos and computer controlled robotic construction sets.
The Complainant is the owner of the following trademark registrations for LEGO (the "LEGO trademark"):
- The combined trademark LEGO with registration No. 042932, registered in the Russian Federation on December 10, 1971 for goods in International Class 28; and
- The word trademark LEGO with registration No. 000039800, registered as a European Union trademark on October 5, 1998 for goods and services in International Classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42.
The Complainant maintains its official website at "www.lego.com".
The disputed domain name was registered on February 27, 2016. The disputed domain name previously resolves to a website in Russian that featured the Complainant's trademark and images of the Complainant's products. After having received notice of the Complainant's trademark rights, the Respondent removed these references to the Complainant from its website. The Respondent's website invites Internet users to participate in an online business game.
5. Parties' Contentions
The Complainant submits that the disputed domain name is identical or confusingly similar to the LEGO trademark in which the Complainant has rights. The dominant part of the disputed domain name contains the element "lego", which is identical to the LEGO trademark. The disputed domain name also includes a hyphen and the generic term "airport". Confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic terms. In this case, the hyphen and the term "airport" do not detract from the overall impression created by the "lego" element of the disputed domain name, and there is a considerable risk that the trade public will perceive the disputed domain name either as a domain name owned by the Complainant, or as somehow related to the Complainant.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no registered trademarks or trade names corresponding to the disputed domain name. No license or authorization has been given by the Complainant to the Respondent to use the LEGO trademark, and the Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant. The LEGO trademark is a famous trademark worldwide and any use of it in a domain name would violate the rights of the trademark owner. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but has instead chosen a domain name based on the LEGO trademark in order to generate traffic and income through a commercial unauthorized website encouraging users to enter an economic game. At certain point in time, the background of the Respondent's website consisted of a wallpaper of the Complainant's baseplate for LEGO bricks, and the Complainant's LEGO mini figure was displayed at the top of the website. There is no disclaimer on the website to explain the lack of relationship to the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The LEGO trademark is well known throughout the European Union and throughout the world. The considerable value and goodwill of the LEGO trademark is what made the Respondent register the disputed domain name several decades after the registration of the LEGO trademark. Considering the content of the Respondent's website and that the LEGO trademark famous, it is clear that the Respondent knew of the LEGO trademark when it registered the disputed domain name.
The Complainant submits that it made contact with the Respondent in March 2016, as a result of which the Respondent removed from its website all reference to the Complainant, but continued to use the disputed domain name for the website. The Complainant tried to contact the Respondent again on April 1, 2016, and requested a voluntary transfer of the disputed domain name against compensation for the expenses for its registration and the transfer fees, but no reply was ever received.
On the basis of the above, the Complainant submits that the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the LEGO trademark as to the source, sponsorship, affiliation or endorsement of its website.
The Respondent did not submit a formal response in this proceeding. The only statement that was repeatedly made by the Respondent was that it had removed the Complainant's logo from the website at the disputed domain name.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…" In the event of a default, under Rules, paragraph 14(b): "…the Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the UDRP panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004: "Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent." As stated by the UDRP panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: "Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence."
In this administrative proceeding, the Respondent's default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the reasonable assertions of the Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the LEGO trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain ("gTLD") section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the ".com" gTLD part of the disputed domain name.
In view of the above, the relevant section of the disputed domain name is "lego-airport". This section contains two elements – "lego" and "airport". The "lego" element is identical to the LEGO trademark, while the "airport" element is a generic word with no particular distinctiveness. The combination of these two elements is likely to appear to Internet users as representing an online location connected to the Complainant's products. Therefore, the Panel finds that the disputed domain name is confusingly similar to the LEGO trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the LEGO trademark and has not been authorized by the Complainant to use the LEGO trademark. The Respondent has not carried out a bona fide activity through the disputed domain name, but has used the disputed domain name to illegitimately generate traffic to its website which offered users to enter an economic game and featured the Complainant's LEGO mini figure and a background that consisted of a wallpaper of the Complainant's baseplate for LEGO bricks. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
There is no evidence in the available record that the Respondent is commonly known by the disputed domain name, and the Respondent has not denied the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests.
The disputed domain name incorporates the LEGO trademark of the Complainant in its entirety and it is its distinctive element. The Respondent's website associated to the disputed domain name contained for a period of time design elements that made it to appear as related to the products of the Complainant and offered to Internet users to participate in a game. This satisfies the Panel that the Respondent must have been aware of the LEGO trademark when it registered the disputed domain name, and that it chose to target the LEGO trademark because of the likelihood that it will attract traffic to the Respondent's website. In the Panel's view, such conduct cannot be regarded as giving rise to rights or legitimate interests on the part of the Respondent.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your website or location or of a product or service on your website or location."
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed in section 6.C above, the facts of this case satisfy the Panel that the disputed domain name was registered with knowledge of the well known LEGO trademark. The website associated with the disputed domain name has featured the LEGO logo and other design elements that relate it to the Complainant and its products and has offered Internet users to participate in a business game, which in itself may be regarded as an offer of something that is similar to if not competing with the LEGO products of the Complainant. The situation was not materially changed after the Respondent removed the LEGO design elements from its website, as it continued to use the disputed domain name incorporating as its central element the LEGO trademark. In view of this and in the absence of any arguments or evidence to the contrary by the Respondent, the Panel is prepared to accept that, by registering and using the disputed domain name, the Respondent has intentionally attempted to exploit the goodwill of the Complainant's LEGO trademark to attract, for commercial gain, Internet users to the website associated to the disputed domain name by confusing them that this website and the game offered on it is related to or endorsed by the Complainant. This conduct of the Respondent supports a finding that the disputed domain name has been registered and is being used in bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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-airport.com> be transferred to the Complainant.
Date: October 5, 2016