WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Mansoureh Mirzaei Ghaleh Mirzaei

Case No. DIR2014-0010

1. The Parties

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

The Respondent is Mansoureh Mirzaei Ghaleh Mirzaei of Isfahan, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <legoweb.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2014. On December 17, 2014, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On December 20, 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 December 18, 2014.

The Center verified that the 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 January 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 29, 2015.

The Center appointed Yukukazu Hanamizu as the sole panelist in this matter on February 17, 2015. 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 in the business of making and selling Lego branded toys and other products. Over the years, the business has grown remarkably. The Complainant has subsidiaries and branches throughout the world, and Lego products are being sold in more than 130 countries, including the Islamic Republic of Iran.

The trademark LEGO 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. Indeed, the LEGO trademark and brand have been recognized as being famous.

The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive website under the domain name <lego.com>.

The Complainant is the owner of numerous LEGO trademarks throughout the world, including the Iranian trademark LEGO, number 25637 registered on July 11, 1964 in class 28, which has been renewed on November 3, 1979 to add the following goods:

-printed matter newspapers, books brochures periodicals advertising materials, photographs, timetables, labels, note cubes, carry bags of paper and plastic, instructional and teaching material (other than apparatus) in class 16;

-furniture goods made of celluloid and of plastic and substitutes for these materials included in class 20;

-storage cloths in class 22;

-clothing in class 25.

The Complainant is also the owner of more than 2,400 domain names containing the term “lego”.

The disputed domain name was registered on June 18, 2014.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

The Complainant contends that the dominant part of the disputed domain name comprises the term “lego”, identical to the registered trademark LEGO, registered by the Complainant as trademarks and domain names in numerous countries all over the world, including trademark registrations in the Islamic Republic of Iran where the Respondent resides. The disputed domain name is confusingly similar to the Complainant’s trademark LEGO. The fame of the trademark has been confirmed in numerous previous Uniform Domain Name Dispute Resolution Policy (UDRP) decisions. See LEGO Juris A/S v. Level 5 Corp, WIPO Case No. D2008-1692, LEGO Juris A/S v. Michael Longo, WIPOCase No. D2008-1715and LEGO Juris A/S v. Reginald Hastings Jr,WIPOCase No. D2009-0680. The Complainant avers that the addition of the suffix “web” does not detract from the overall impression. See Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488. The addition of the applicable top-level suffix in the disputed domain name, in this case the country code Top-Level Domain (ccTLD) “.ir”, is non-distinctive and is without legal significance when assessing the identity or similarity of a domain name to a complainant’s prior trade mark rights. Consequently, the Complainant argues that the disputed domain name is clearly confusingly similar to the Complainant’s well-known registered trademark LEGO and the suffix does not detract from the overall impression.

A.2. Rights or Legitimate Interests

The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name for the following reasons:

1. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name;

2. The Complainant has not found anything that would suggest that the Respondent has been using “Lego” in any other way that would give it any rights or legitimate interests in the disputed domain name;

3. The Complainant has not given any license or authorization of any other kind to the Respondent to use the trademark LEGO;

4. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant;

Furthermore, the Respondent has not indicated any sort of legitimate reason for having registered the disputed domain name, nor provided any plausible bona fide reason for having registered it.

Consequently, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.

A.3. Registered or Used in Bad Faith

The Complainant contends that it is rather obvious that the Respondent was aware of the Complainant’s LEGO trademark at the time of registration. This is because LEGO is a famous trademark worldwide, including in the Islamic Republic of Iran where the Respondent resides and the date of the Respondent’s registration of the disputed domain name is subsequent to when the Complainant registered the trademark LEGO in the Islamic Republic of Iran, and elsewhere, by several decades. Furthermore, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith because of the Respondent’s failure to respond to cease and desist letters from the Complainant three times.

The Complainant further contends 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 Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. This is because the disputed domain name is currently connected to a commercial website where the Respondent is offering its design and marketing services. Further, the use of Lego bricks on the website at the disputed domain name reinforces the likelihood that the Respondent is trying to trade on the goodwill associated with the well-known LEGO trademark.

Consequently, the Complainant contends that it is established that the Respondent did both register and use the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has produced substantial evidence to demonstrate that it has registered trademark rights in the mark LEGO in many countries throughout the world including Iran.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned. In this case the average consumer is the Internet users seeking to purchase or download information about the Complainant’s construction toys and other Lego branded products.

The disputed domain name comprises (a) an exact reproduction of the Complainant’s trademark LEGO, (b) the English word “web”, and (c) the ccTLD “.ir”. The Complainant’s mark has been reproduced in its entirety in the disputed domain name. The Panel accepts the Complainant’s contention that the addition of the English word “web” does not detract from the overall impression of the well-known Complainant’s trademark and is descriptive and adds no distinctiveness or source of origin elements whatsoever to the disputed domain name, which essentially incorporates the Complainant’s well-known trademark. Therefore, the Panel finds that the addition of the English word “web” to the word “lego” does not serve to distinguish the disputed domain name from the Complainant’s LEGO trademark. The Panel also accepts the Complainant’s contention that the addition of the ccTLD “.ir” is non-distinctive and is without legal significance when assessing the identity or similarity of a domain name to a complainant’s prior trade mark rights.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark (LEGO) in which the Complainant has rights.

The Panel finds for the Complainant on the first element.

B. Rights or Legitimate Interests

The burden of proof on this element lies 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 disputed domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. While this decision is being rendered under the Policy and not the UDRP, given the textual similarities between the two policies the Panel finds UDRP precedent relevant to this proceeding.

According to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you of the dispute, your use of, or 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 mark at issue.

The Panel finds that the Complainant has made out a prima facie showing and notes that the Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name.

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. There is no evidence to show that the Complainant has authorized, licensed or otherwise consented to the Respondent’s use of the disputed domain name;

2. There is no evidence that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, or has been using the disputed domain name in connection with a bona fide offering of goods or services.¹

The Panel finds for the Complainant on the second element.

C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, 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 the 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 complainant; or

(iv) by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Panel concludes that the circumstance referred to in paragraph 4(b)(iv) of the Policy is applicable for the following reasons:

First, the Panel finds that the Complainant enjoys a substantial and widespread reputation in its LEGO trademark with regard to its construction toys and other Lego branded products. The Respondent registered the disputed domain name after the Complainant registered the trademark LEGO in the Islamic Republic of Iran, and elsewhere, by several decades. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s LEGO trademark at the time of the registration of the disputed domain name. Consequently, in the absence of contrary evidence from the Respondent, the Panel finds that the LEGO trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation for its choice of the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products.

Second, the Complainant has also adduced evidence to prove that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract Internet users to a 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. Further, the Panel accepts the Complainant’s contention that the use of Lego bricks on the website at the disputed domain name reinforces the likelihood that the Respondent is trying to trade on the goodwill associated with the well-known LEGO trademark. Given the widespread reputation of the Complainant’s LEGO trademark, the compelling conclusion is that the Respondent, by choosing to register and use the disputed domain name, which is confusingly similar to the Complainant’s widely known and distinctive trademark, intended to free ride on the goodwill of the Complainant’s trademark in an attempt to divert, for commercial gain, Internet traffic destined for the Complainant. Consequently, the Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the Complainant’s LEGO trademark and this constitutes a misrepresentation to the public that the Respondent’s website is in one way or the other associated or connected with the Complainant. Further, the Respondent did not respond to the Complainant’s cease and desist letters. In the absence of evidence to the contrary and a rebuttal from the Respondent, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

The Panel finds for the Complainant on the third element.

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 <legoweb.ir> be transferred to the Complainant.

Yukukazu Hanamizu
Sole Panelist
Date: March 3, 2015

¹ The Panel agrees with the Complainant that in the circumstances of this case any design and marketing services offered at the website under the disputed domain name cannot amount to a bona fide offering of services. The Respondent is clearly attempting to promote these services by creating a false impression of association with the Complainant, via use of the Complainant’s trademark in the disputed domain name and use of images of Lego bricks on the website at the disputed domain name.