WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. 1&1 Internet Limited / Johana Juha Donado

Case No. D2018-1931

1. The Parties

The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is 1&1 Internet Limited of Gloucester, United Kingdom of Great Britain and Northern Ireland / Johana Juha Donado of Coruña, Spain, self-represented.

2. The Domain Name and Registrar

The disputed domain name <legolandstore.com> (the “Disputed Domain Name”) is registered with 1&1 Internet SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2018. On August 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 27, 2018, 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 29, 2018 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 August 31, 2018.

The Center sent an email communication to the Parties in English and in Spanish on August 29, 2018, regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the Disputed Domain Name is Spanish. The Complainant submitted a request for English to be the language of the proceeding in its Complaint. The Respondent did not submit any request in relation to 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 Spanish, and the proceedings commenced on September 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2018.

The Center received various email communications from the Respondent between August 29, 2018 and September 26, 2018.

The Center notified the Parties of the commencement of the panel appointment process on September 25, 2018.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 3, 2018. 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 LEGO Juris A/S is based in Denmark. The Complainant is the owner of the LEGO, LEGOLAND, and other trademarks 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 owns numerous registrations worldwide for the trademark LEGO, the earliest registration dating to 1954 (Danish Reg. No. VR 1954 00604, registered on May 1, 1954).

Furthermore, the Complainant is the owner of over 5,000 domain names containing the term LEGO and LEGOLAND.

The Disputed Domain Name <legolandstore.com> was registered on January 23, 2018 and is used for a website offering LEGO products in English and Spanish.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

Identical or confusingly similar

The Complainant alleges that the dominant part of the Disputed Domain Name comprises the term “lego”, as well as the term “legoland”, which is identical to the registered trademarks LEGO and LEGOLAND of the Complainant.

Furthermore, the addition of the suffix “store” will not have any impact on the overall impression of the dominant part of the Disputed Domain Name, “legoland”. Thus, this addition does not serve to distinguish the Disputed Domain Name.

The addition of the Top-Level Domain (“TLD”) “.com” is irrelevant to determine the confusingly similarity between the trademarks and the Disputed Domain Name.

Rights or legitimate interests

The Complainant submits that the Respondent has no registered trademarks or trade names corresponding to the Disputed Domain Name and that it has not licensed or otherwise authorized the Respondent to use the trademarks LEGO or LEGOLAND.

It is unlikely that the Respondent would not have known of the Complainant’s legal rights in the name LEGO and LEGOLAND at the time of the registration.

Moreover, the Respondent is not using the Disputed Domain Name 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 an unauthorized website offering the Complainant’s products.

Registration and use in bad faith

According to the Complainant, the trademarks LEGO and LEGOLAND are well-known and reputed trademarks with a substantial and widespread reputation throughout the world.

The Complainant addressed the Respondent with cease and desist letters regarding the Disputed Domain Name, however, the Respondent never replied.

The Complainant states that the Respondent’s website is offering LEGO products with a logo which is similar to the Complainant’s logo. Thus the Respondent is using the Disputed Domain Name to intentionally attempt to attract Internet users to its own website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.

The Complainant and its trademarks LEGO and LEGOLAND enjoy a worldwide reputation. Consequently, the Respondent cannot have been unaware of the Complainant’s prior rights.

Finally, the Respondent by using the Disputed Domain Name is not making a legitimate noncommercial or fair use, but is misleading diverting consumers for commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, there is an email of the Respondent stating that it does not understand who the Complainant is and what to do. In further communications, the Respondent agreed to transfer the Disputed Domain Name to the Complainant. Accordingly, the Center invited the Complainant to request the suspension of the proceeding in order to implement a settlement agreement between the Parties. However, such suspension was not requested by the Complainant and the proceeding continued.

6. Discussion and Findings

6.1. Preliminary Issue: Language of proceeding

Pursuant to paragraph 11(a) of the Rules, 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.

According to the Complainant the Registration Agreement is in Spanish, however, the Complainant has filed the Complaint in English and requests that the language of proceeding be English.

The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of proceeding be English; the lack of a formal response of the Respondent; the fact that some of the Respondent’s communications to the Center and to the Complainant were in English; the fact that the website of the Respondent contains some phrases in English; and the fact that the Disputed Domain Name contains the term “store”, which does not carry any specific meaning in the Spanish language. In view of all these elements, the Panel rules that the language of the proceeding and the decision shall be both in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:

(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

Based on the evidence submitted, the Panel finds that the Disputed Domain Name <legolandstore.com> is confusingly similar to the Complaint’s trademarks LEGO and LEGOLAND. The Disputed Domain Name wholly incorporates the Complainant’s trademarks.

Furthermore, the addition of the descriptive term “store” does not suffice to avoid the confusing similarity between the Disputed Domain Name and the LEGO and LEGOLAND trademarks.

Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests.

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) Before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) You are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name.

The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contention.

The Respondent is using the Disputed Domain Name without authorization of the Complainant in order to offer LEGO products. Furthermore, there is no disclaimer on the website disclosing the relationship between the Complainant and the Respondent, therefore the Oki Data jurisprudence shall not apply.

As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Disputed Domain Name was registered on January 23, 2018, while the Complainant’s LEGO (& Design) Spanish Trademark Registration No. 736701 was granted on October 4, 1976. Furthermore, the fact that the Respondent’s website is connected to an unauthorized commercial website offering LEGO products, the Respondent cannot claim not to have knowledge of the legal rights in the trademarks LEGO and LEGOLAND at the time of the registration. Thus, the Panel concludes the Respondent registered the Disputed Domain Name in bad faith.

The Panel also finds that the Respondent uses the Disputed Domain Name in bad faith. The Respondent operates its website, offering LEGO products without the authorization of the Complainant and without disclosing its relationship with the Complainant. Furthermore, the Respondent is using a logo which is similar to the Complainant’s logo, contributing to create a likelihood of confusion with the Complainant’s trademarks. The addition of the term “store” strengthens the impression that the Disputed Domain Name is that of, or is related to, the Complainant. Thus, is likely to be perceived as denoting a website of the Complainant, through which the Complainant’s products can be purchased. This conduct qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondent’s use of the Disputed Domain Name attempts to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Thus the Panel concludes the Respondent also uses the Disputed Domain Name in bad faith.

Accordingly, the Panel finds that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <legolandstore.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: October 16, 2018