WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Protection of Private Person / Alexey Zhdanov
Case No. D2017-1807
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Protection of Private Person of Moscow, Russian Federation / Alexey Zhdanov of Novosibirskaya, Novosibirsk, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <brick-lego.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2017. On September 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2017, the Registrar transmitted by email to the Center its verification 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 September 21, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 22, 2017.
The Complaint was submitted in the English language. The language of the Registration Agreement for the disputed domain name is Russian. On September 21, 2017, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding as submitted in the Complaint. The Respondent did not reply to the Center’s communication regarding the language of the proceeding or the Complainant’s submission.
The Center verified that 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, and the proceedings commenced on September 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2017. Following the notice of the Respondent’s default, the Respondent sent two brief emails in Russian asking what the issue was.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on November 3, 2017. 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 Lego Juris A/S, based in Denmark and owner of the worldwide famous trademark LEGO for construction toys and other LEGO branded products. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries.
The Complainant is the owner of numerous trademark registrations for LEGO (as evidenced in Annex 5 of the Complaint, including: the word LEGO mark with registration No. 688229, registered as an International trademark on March 5, 1998 for goods and services in International Class: 28.
Moreover, the Complainant is the owner of close to 5,000 domain names containing the term “lego”, including <legobrick.com> and <legobricks.com>.
The LEGO mark is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.
The Respondent registered the disputed domain name on May 29, 2017. Currently the website does not resolve to an active site. The following message: “Домен не прилинкован к директории на сервере!” is displayed.
On July 14, 2017, the Complainant sent to the Respondent a cease and desist letter sent via email stating its rights to the LEGO mark and requesting a voluntary transfer of the disputed domain name. The Respondent did not reply.
5. Parties’ Contentions
Firstly, the Complainant contends that the disputed domain name is confusingly similar to its well-known trademark as it comprises the LEGO mark and the generic, descriptive term “brick”.
Secondly, the Complainant claims that the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. The Complainant asserts that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. According to the Complainant, the Respondent is not using the disputed 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 a commercial website offering a product that takes advantage of the fame of the Complainant’s brand and trademark. The Complainant points out that the website to which the disputed domain name resolves purports to offer lego-like bricks to be used for construction of interior or exterior walls, partitions or facades.
Thirdly, the Complainant submits that the disputed domain name was registered and used in bad faith. The Complainant emphasizes that the disputed domain name’s registration was subsequent to the LEGO mark’s registration in the Russia Federation and elsewhere by decades. The Complainant asserts that the fame of the LEGO mark motivated the Complainant to register the disputed domain name. Moreover, the Complainant believes that lack of reply to the cease and desist letter, despite many notices and reminders sent to the Respondent, is an indication of bad faith use as well.
The Complainant points the Panel’s attention to the fact that the disputed domain name is connected to a commercial website that takes advantage of the fame of Complainant’s brand and trademark by creating confusion as to the source of the disputed domain name. Further, the Complainant notes that the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions. However, following the notice of the Respondent’s default, the Respondent sent two brief emails in Russian asking what the matter was about and demanding that correspondences to be written in simple language.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the disputed 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “[u]nless 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 Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted i.a. that it would be troublesome for it to translate the Complaint along with the annexes into English. The Respondent was properly notified about the language of the proceeding in English and Russian, and the Respondent has not objected to the Complainant’s language request. Notification of the Compliant was also sent to the Respondent in English and in Russian, however, the Respondent has not participated in these proceedings in any way.
Taking into account the Complainant’s submissions and the fact the disputed domain name comprises a generic English word “brick” which matches the content of the website linked to the domain name, the Panel finds that the Respondent is most likely familiar with English and that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules.
B. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s LEGO mark and is confusingly similar with it. The use of a generic word “brick” and a hyphen is not enough to distinguish the disputed domain name from the Complainant’s mark (See LEGO Juris A/S v. Quan Zheng / Zheng Quan / WIPO Case No. D2017-1189). Quite the opposite, since bricks are one of the famous construction toys offered by the Complainant, the use of a word “brick” in the disputed domain name may increase the confusion of Internet users.
For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the generic Top-Level Domain suffix “.com” may be disregarded (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No. D2012-0607).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the LEGO mark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the LEGO mark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
In the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
The disputed domain name was registered years after the Complainant registered the LEGO mark. This together with the worldwide reputation of the LEGO mark indicates that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
Secondly, the disputed domain name currently resolves to an inactive webpage, but the fact that a domain name is held passively does not prevent a finding of bad faith (Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon, WIPO Case No. D2004-0245; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232). The Panel notes that the Complainant did not substantiate its contention regarding the content of the website linked to the disputed domain name as Annex 10 to the Complaint presents a screenshot of a different domain name <brick-lego.ru>.
Taking into consideration the fact that the Respondent used a privacy shield for the registration of the disputed domain name and failed to answer the Complainant’s cease and desist letter, the Panel finds that the Respondent registered and used the disputed domain names to take advantage of the worldwide reputation and goodwill of the Complainant and to somehow turn a profit from it. (See News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623 and Jay Leno v. St. Kitts Registry, Domain Names Administration, WIPO Case No. D2009-0571).
The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain names by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, or endorsement of or affiliation with the website, pursuant to paragraph 4(b)(iv) of the Policy, and that the third element of paragraph 4(a) is satisfied.
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, <brick-lego.com> be transferred to the Complainant.
Date: November 17, 2017