WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Miheev Pavel
Case No. D2017-2133
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Miheev Pavel of Krasnoufimsk, Sverdlovskaya Oblast, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <legoporno-ru.top> 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 November 1, 2017. On November 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 2017, 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.
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, and the proceedings commenced on November 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2017. Due to administrative oversight, the Center re-notified the Respondent of the Complaint on December 12, 2017 and the due date for Response was extended until December 17, 2017. The Respondent submitted two informal communications on December 12, 2017 but did not submit any formal Response. Accordingly, the Center notified the Parties on December 19, 2017 that it would proceed to panel appointment.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on December 28, 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 in this proceeding, LEGO Juris A/S of Billund, Denmark, is the owner of the
world-renowned LEGO trademark used in connection with the famous LEGO 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, including in Russia.
The Complainant owns the LEGO mark, which enjoys thorough protection through many registrations thereof worldwide, Russia included.
The LEGO trademark is indisputably among the best-known trademarks in the world.
The Complainant is, inter alia, the owner of Russian trademark registration number 042932 for the LEGO mark, granted on December 10, 1971.
Moreover, the Complainant states that it is also the owner of thousands of domain name registrations corresponding to and/or containing the LEGO mark.
The disputed domain name <legoporno-ru.top> was registered on July 10, 2017, and adult content is hosted on the corresponding website, “www.legoporno-ru.top”.
The Complainant’s trademark registrations predate the registration of the disputed domain name.
5. Parties’ Contentions
The Complainant claims that the dominant part of disputed domain name comprises the term “lego”, which is identical to the registered trademark LEGO, the generic term “porno”, and the geographical term “ru”. The Complainant thus affirms that the disputed domain name is confusingly similar to the LEGO trademark. To this end, the Complainant quotes several UDRP decisions in which it was established that confusing similarity is generally recognized when well-known trademarks are paired with different kinds of generic terms and suffixes.
The Complainant further states that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name. In fact, the Complainant claims that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, and that it has not found anything else that would suggest that the Respondent has been using “lego” in any other way that would give it any legitimate rights in the name. No license, or authorization of any other kind, has ever been given by the Complainant to the Respondent to use the LEGO trademark.
Finally, the Complainant asserts that LEGO is a world-famous trademark (including in Russia where the Respondent resides). It is clear that the Respondent was aware of the rights the Complainant has in the trademark and of the value of said trademark, at the time of the registration. There is no connection between the Respondent and the Complainant. By using the disputed domain name to divert internet users searching for LEGO products to an unrelated website that hosts adult content, the Respondent is not engaging in legitimate noncommercial or fair use, but is misleadingly diverting consumers for his own commercial gain.
The Respondent sent two emails to the Center. These extremely short (and impolite at best) emails do not contain any denial and/or rebuttal of the Complainant’s assertions, nor any information regarding the existence of any rights and/or legitimate interest in the domain name or in a corresponding name. It is therefore the Panel’s opinion that these messages amount to an admission or at least to an inference of the Respondent’s lack of any rights and/or legitimate interests in the disputed domain name.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(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 respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the LEGO trademark.
The disputed domain name <legoporno.ru.top> consists of the LEGO mark, with the addition of the term “porno”, the geographical term “ru”, and the Top-Level Domain “.top”.
The addition to the disputed domain name of the term “porno”, as well as the geographical term “ru” (which gives the impression that the website is intended for Russians or that is based in Russia), are not enough to avoid the confusing similarity with the renowned LEGO trademark.
This Panel agrees with the previous UDRP decisions, namely that confusing similarity is established when the domain name incorporates the complainant’s trademark in its entirety, and the addition of generic or geographic terms and/or suffixes does not avoid confusing similarity.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the LEGO trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name. Rather, the Respondent’s short messages and his tone are unequivocal indications of the intention to not participate in this proceeding and they represent a behavior consistent with the assertions made by the Complainant.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the LEGO mark when it registered the disputed domain name.
In fact, the Complainant’s trademark is a fanciful name with no intrinsic meaning of its own. It has been registered and used for many decades and thus it long predates the disputed domain name’s registration.
Moreover the Panel notes the following:
The disputed domain name contains in its entirety a renowned trademark, and it is used to misleadingly direct Internet users to a website offering adult content.
In addition, an inference of bad faith registration and use of the disputed domain name is given by the fact that the Respondent has never replied to the Complainant’s cease-and-desist letter. Indeed, owing to the fact that the Respondent has not denied the assertions of bad faith made by the Complainant in the pre-action communications and in this proceeding, it is reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain name he would have responded to them.
As a matter of fact, the Respondent’s informal communication to the Center did not refute the Complainant’s claims.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied paragraph 4(a)(iii) 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 disputed domain name <legoporno-ru.top> be transferred to the Complainant.
Date: January 10, 2018