WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Mostafa Barati Abyazani
Case No. DIR2014-0007
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Mostafa Barati Abyazani of Mashhad, Razavi Khorasan, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <legotoys.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 14, 2014. On October 14, 2014, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On October 15, 2014, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on October 15, 2014. In response to an email by the Center, the Complainant filed an amended Complaint on October 28, 2014.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2014. On November 19, 2014, the Center notified the Respondent's default.
The Center appointed Marilena Comanescu as the sole panelist in this matter on November 25, 2014. 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.
The language of the proceeding is English.
4. Factual Background
The Complainant is a company incorporated in Denmark and the owner of numerous worldwide registrations for the trademark LEGO, the earliest registration dating from 1954. LEGO trademark is well-known worldwide in particular in relation to construction toys popular with children. The Lego products are sold in more than 130 countries, including in Iran and the Complainant holds more than 2,400 domain names comprising the word "lego".
The disputed domain name <legotoys.ir> was created on June 6, 2012 and at the time of filing the Complaint it was used for a website promoting the Complainant's goods alongside competing goods and displaying the Complainant's LEGO trademark.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar to its trademark LEGO, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent registered and uses the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In view of the default and the absence of any reply to the Complaint by the Respondent, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 or is being used in bad faith1.
A. Identical or Confusingly Similar
The Complainant holds worldwide trademark registrations for the LEGO mark in connection with toys. The disputed domain name <legotoys.ir> includes the Complainant's well-known trademark and the descriptive term "toys", such item being the Complainant's main and famous product.
This Panel agrees with the majority view of UDRP panels2, that the addition of merely generic, descriptive terms to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.
Given the above, the Panel finds that the disputed domain name <legotoys.ir> is confusingly similar to the Complainant's trademark LEGO.
B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to the Respondent to use its trademarks, that the Respondent is not commonly known by the disputed domain name and that it has not conducted legitimate business under the name "legotoys". In line with the previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent's lack of rights or legitimate interests in relation to the disputed domain name, and the burden of production shifts to the Respondent.
The Respondent chose not to challenge the Complainant's allegations. There is no evidence before the Panel to support the contrary, and therefore the Panel accepts these arguments as facts.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name <legotoys.ir>.
C. Registered or Used in Bad Faith
The disputed domain name was created in 2012 and incorporates the Complainant's well-known mark registered since 1964 in Iran, where the Respondent resides, together with the word "toys", a term that describes the Complainant's products.
Further, the disputed domain name resolves to a webpage displaying the Complainant's LEGO trademark without its consent, as well as third parties' competing goods.
Given that the disputed domain name incorporates the Complainant's widely known trademark and the website operated under the disputed domain name displays the Complainant's trademark, in this Panel's view, the Respondent intended to attract, for commercial gain, Internet users accessing the website corresponding to the disputed domain name <legotoys.ir> by confusing them into believing that it is a website held, controlled by, or somehow affiliated or related to the Complainant. Such facts constitute bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent did not respond to the Complaint, nor to the Complainant's letters prior to commencing the present procedure. Given the other circumstances of the case, such behavior may be considered as further evidence of bad faith in registering and using the disputed domain name.
In light of the above, the Panel finds that the Respondent registered and is using the disputed domain name <legotoys.ir> in bad faith, even if it was sufficient in this case to establish one or the other.
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 <legotoys.ir> be transferred to the Complainant.
Date: December 9, 2014
1 The difference between the irDRP and the Uniform Domain Name Dispute Resolution Policy ("UDRP") is that under the irDRP it is sufficient to prove that either registration or subsequent use of the domain name by the registrant occurred in bad faith, whereas the UDRP requires the complainant to prove both elements.
2 See paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").