WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v Michael Fainshtein
Case No D2013-0464
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Michael Fainshtein of Ontario, Canada.
2. The Domain Names & Registrar
The disputed domain names <legodisplay.com>, <legodisplay.info>, <legodisplay.net>, <legodisplay.org> and <legomonitor.com> (the “Domain Names”) are registered with GoDaddy.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration & Mediation Center (the “Center”) on March 5, 2013. On March 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 6, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 2, 2013.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on April 16, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality & Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The following facts and circumstances are to be found in the Complaint and its Annexures and, in the absence of a response from the Respondent, can be accepted as background.
The Complainant is the owner of LEGO, and all other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products.
The Complainant's licencees are authorised to exploit the Complainant's intellectual property rights, including its trademark rights, in Canada and elsewhere.
Over the years the business of making and selling LEGO branded toys has grown remarkably.
The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in particular Canada. Not only does this appear from the schedule of trademarks registered throughout the world but notably the earliest trademark in Denmark was registered with effect from May 1, 1954, and that in Canada was filed on June 14, 1956, and registered on April 26, 1957.
The Complainant is also the owner of more than 1000 domain names containing the term “Lego” and it is the strict policy of the Complainant that all domain names containing the word “Lego” should be owned by it.
The LEGO trademark and brand are said to have been recognised as being famous, as appears from the list of the official top 500 super brands for 2012, provided by Super Brands UK, which shows that LEGO is No 31 of the most famous trademarks and brands in the world. Apart from having built up its business with extensive advertising and promotional materials which prominently depict the LEGO mark on all products, packaging, displays, advertising and materials, the Complainant has expanded its use of the trademark to computer hardware and software, books, videos and computer-controlled robotic instruction sets. It also maintains an extensive website under the domain name <lego.com>.
The domain names were registered as follows:-
<legodisplay.com> on December 24, 2012;
<legodisplay.info> on December 25, 2012;
<legodisplay.net> on December 24, 2012;
<legodisplay.org> on December 25, 2012;
<legomonitor.com> on December 24, 2012.
5. Parties' Contentions
The Complainant's Complaint is as follows:-
As appears from the factual background, the Complainant's LEGO trademark is known throughout the world. The fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions.
The addition of the suffixes "display" and "monitor" are not relevant and would accordingly not have any impact on the overall impression of the dominant part of the Domain Names, being that of LEGO.
Furthermore, the addition of top level domains such as "net", "org", "info" and "com" do not have any impact on the overall impression of the dominant portion of the Domain Names. Accordingly anyone seeing them would be bound to mistake them for names relating to the Complainant.
It follows, so the Complainant contends, that the Domain Names are clearly confusingly similar to the Complainant's registered trademark LEGO.
A search by the Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Names, nor anything which suggests that it has been using LEGO in any other way which would give him any right or legitimate interest in the Domain Names.
The only information furnished by the Respondent in response to the Complainant's "cease and desist" letter was that he planned a new start-up company which was supposed to plan and develop a new type of display and that the word LEGO was short for "light electro-luminescent graphic object". However, in response to a request for information supporting this claim, no reply was received from the Respondent, and no results were retrieved when doing a search on that term on “www.google.com”.
It is clear that no licence or authorisation of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO.
It is highly unlikely that the Respondent would not have been aware of the Complainant's legal rights in the trademark LEGO at the time of registration.
The Respondent is also not using the Domain Names bona fide but has intentionally chosen the Domain Names based on the registered trademark to generate traffic and income from Internet users.
The fact that the Domain Names are connected to the parked pay per click sites clearly demonstrates an intention to attract, for commercial gain, Internet users to websites, and creates a likelihood of confusion for the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its websites. Therefore it must follow that it is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and its value. Since there is no connection between the Respondent and the Complainant, the use of the Domain Names by the Respondent cannot be a legitimate noncommercial or fair use but must obviously mislead and divert customers for its own commercial gain.
By its failure to respond, the Respondent is in default in terms of paragraphs 5(e) and 14 of the Rules and paragraph 8(c) of the Supplemental Rules, with the result that the Panel must now deal with the matter on the Complaint.
6. Discussion & Findings
A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
"A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:-
(i) That the domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the complainant has rights.
(ii) That the respondent has no rights or legitimate interests in respect of the domain name.
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration and use of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent's rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii).
B. Effect of Default
Notwithstanding the fact that a respondent may be in default, the complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the complainant to a finding in its favor by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the complaint being denied (M Corentin Benoit Thiercelin v. CyberDeal Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, aka Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the provisional requirement of the Rules (Allianz Compañia de Seguros y Reaseguros S A v. John Michael, WIPO Case No. D2009-0942).
In the present instance, the Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a response, particularly in the light of the fact that the Complainant wrote on occasions to the Respondent, as did the Center when dealing with procedural matters and advising the Respondent of time limits, as against the Respondent's failure to respond to any further correspondence after his initial response to the Complainant's "cease and desist" letter.
From this the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Ltd v. Global Net 2000 Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons Inc v. Domain.Contact, WIPO Case No. D2003-0994; Standard Innovation Corporation,supra; VKR Holding A/S v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd, WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters Ltd v. Global Net 2000 Inc.,, supra; RX America LLC v. Matthew Smith, WIPO Case No. D2005-0540; Allianz Compañia de Seguros y Reaseguros S A v. John Michael, supra; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holdings A/S v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd, supra; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213).
C. Domain Names are Identical or Confusingly Similar
The Complainant put up an extensive list of its registered trademarks and the domain names which it owns in many countries.
The Complainant has cited several previous UDRP decisions which it contends confirm that the LEGO trademark is world famous. As the Respondent was not party to any of these decisions, the Panel considers that a doctrine such as res judicata or issue estoppel does not apply, and what may have been found proven in those decisions is not evidence in this matter or binding on the Panel.
On the basis of its evidence and contentions in this matter, however, the Panel considers that on the factual background relied upon by it, particularly as it is unchallenged by the Respondent, the Complainant has rights which fall within the provisions of Article 6 bis of the Paris Convention for the Protection of Industrial Property of March 20, 1893, as revised, and as confirmed and extended by Articles 6.2 and 6.3 of the GATT Agreement of Trade-Related Aspects of Intellectual Property Rights (commonly referred to as the "TRIPS Agreement"). These treaties enable the owner of a well-known trademark to seek protection not only in respect of products which might be marketed under an offending trademark in the same class, but outside that class as well (V&S Vin & Spirit v. Young Nah, WIPO Case No. D2004-0961; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412).
The fact that the word mark has been incorporated entirely into the Domain Names is sufficient to establish that it is identical or confusingly similar to the Complainant's registered mark (Quixtar Investments Inc v. Dennis Hoffmann, WIPO Case No. D2000-0253; Universal City Studios Inc v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopkin/NeoNet Ltd, WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services, WIPO Case No. D2008-0016).
The addition of the generic top level domains (“gTLD”) ".com", ".info", ".net" and ".org" respectively is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the Complainant's trademark and the Domain Names (Magnum Piering Inc v. The Mudjackers and Garwood S Wilson Sc, WIPO Case No. D2000-1525; Rollerblade Inc v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382). In these circumstances the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the Domain Names for the purposes of Paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Names, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Names, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the Domain Names, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies Inc v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Universal City Studios Inc v. David Burns and Adam-12 Dot Com, supra).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the sole proprietor of the trademark LEGO and associated domain names in question and that the Respondent has not been given any permission to register or use any domain name incorporating the trademark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the Domain Names and that any unauthorized use for commercial purposes would violate the exclusive trademark rights enjoyed by the Complainant. (Guerlain S A v. Peikang, WIPO Case No. D2000-0055; Caesar's World Inc & Park Place Entertain Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online Inc v. XianfengFu, WIPO Case No. D2000-1374; Sybase Inc v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase Inc v. Analytical Systems, supra).
In a similar case, LEGO Juris A/S v. Domainvault.corp, WIPO Case No. D2012-2344, the respondent there contended that it planned to launch a new business related to the disputed domain name. The UDRP panel in that case came to the conclusion that that allegation as to the use of the disputed domain name in connection with a different service or class of business was not substantiated by any evidence whatsoever, particularly in regard to the preparation for its use, such as business plans, advertisements, dedicated websites, or by any explanation as to why the disputed domain name had been chosen for such services, and concluded that the respondent had not been shown to have made "demonstrable preparations" in relation to such use or intended use.
Since this case, although involving the same Complainant, is not one where there is a pure factual finding, such as those to which the Panel has referred earlier, but constitutes a definition and application of a matter of principle, the Panel is satisfied that that reasoning applies in this instance as well.
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy.
E. Registration & Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(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 that 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 competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial again, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a produce or service on your website or location."
The Domain Names are connected to parked pay per click sites, with the result that the Respondent is using the Domain Names intentionally to attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its websites. Whether or not the Respondent is personally the beneficiary or whether the revenue accrues elsewhere does not, in the view of the Panel, attract the notion that any gain so sought to be derived need not be derived by a respondent himself in that it is sufficient if a third party stands to reap the profits of wrongful conduct (Villeroy & Bosch A G v. Mario Pingerna, WIPO Case No. D2007-1912).
The implication arising from the Domain Names, in the mind of a would-be customer, is therefore clearly that it is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with either the Complainant itself or someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith. (Media 24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra).
The selection of the Domain Names that are the same as, or confusingly similar to, the Complainants' trademark and the Complainant's domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the Domain Names in circumstances where it was very well aware of the Complainant's reputation and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC v Miami Investment Brokers Inc, supra).
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Names <legodisplay.com>, <legodisplay.info>, <legodisplay.net>, <legodisplay.org> and <legomonitor.com> be transferred to the Complainant.
Archibald Findlay SC
Date: April 30, 2013