WIPO Arbitration and Mediation Center

Alternative Dispute Resolution Proceeding

Case No. DSE2018-0006

1. Petitioner

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

2. Domain Holder

The Domain Holder is S. D. of Sweden.

3. Domain Names and Procedural History

This Alternative Dispute Resolution proceeding concerns the domain names <exclusive-lego.se> and <exclusivelego.se>.

This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).

The WIPO Arbitration and Mediation Center (“the Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on February 26, 2018. The Domain Holder did not submit any formal response but submitted several email communications to the Center.

The Center appointed Johan Sjöbeck as the sole Arbitrator in this matter on April 12, 2018. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.

4. Factual Background

The Petitioner, a company based in Denmark, is the owner of the trademark LEGO for construction toys in a large number of jurisdictions, including Sweden. For example, the Petitioner is the owner of the European Union (EU) trademark LEGO with registration number 000039800 and registration date October 5, 1998.

The Domain Holder registered the disputed domain names <exclusive-lego.se> and <exclusivelego.se> on August 22, 2017.

The Domain Holder has been served with the Petition for the alternative dispute resolution but has not submitted a formal response.

5. Claim

The Petitioner requests that the disputed domain names <exclusive-lego.se> and <exclusivelego.se> shall be transferred from the Domain Holder to the Petitioner.

In an informal email message to the Center dated March 29, 2018, the Domain Holder agrees to the Petitioner’s claim by writing “We are willing to give up the domain names”.

6. Parties’ Contentions

A. Petitioner

The Petitioner is the owner of the LEGO trademark registered in the EU with priority from April 6, 1956 in Sweden. Furthermore, the Petitioner’s EU registrations have had legal force in Sweden since 1999.

The Petitioner has subsidiaries and branches throughout the world and LEGO products are sold in more than 130 countries, including in Sweden. Moreover, the Petitioner is the owner of approximately 5,000 domain names containing the term LEGO. The LEGO trademark is among the best-known trademarks in the world, due to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. The LEGO trademark has been recognized as famous.

The Petitioner has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Petitioner also maintains a website in connection with the domain name <lego.com>.

The addition of the country code top-level domain “.SE” does not alleviate the potential confusion between the disputed domain names and the Petitioner’s trademark. The addition lacks distinctiveness and is not sufficient to give the disputed domain names individual meaning.

The disputed domain names contain the LEGO trademark in its entirety along with the generic term “exclusive” to the beginning of the trademark. The mere addition of this generic term to the trademark does not negate the confusing similarity between the disputed domain names and the trademark. Furthermore, the addition of a hyphen in the disputed domain name <exclusive-lego.se> does nothing to distinguish the disputed domain name from the LEGO trademark. In other words, the use of the hyphen does not diminish the confusing similarity between the disputed domain name and the trademark and should be disregarded for purposes of making this determination. Thus, the disputed domain names are confusingly similar to the Petitioner’s LEGO trademark.

With reference to the reputation of the LEGO trademark, there is a considerable risk that the public will perceive the disputed domain names either as domain names owned by the Petitioner or that there is some kind of commercial relation with the Petitioner. By using the trademarks as a dominant part of the disputed domain names, the Domain Holder exploits the goodwill of the trademark, which may result in dilution and other damage for the Petitioner’s trademark.

The Domain Holder registered the disputed domain names on August 22, 2017. The Petitioner’s first trademark registrations predate the domain names registrations by decades. The Domain Holder can hardly claim to have been using the LEGO trademark without being aware of the Petitioner’s older rights.

The Domain Holder is using the disputed domain names to forward Internet users to its own website “www.exclusive-brick.se” where the Domain Holder offers the Petitioner’s own products for sale. In light of the above, it is not possible to conceive of a plausible situation in which the Domain Holder would have been unaware of the Petitioner’s brands at the time the disputed domain names were registered.

Further to the above, the Domain Holder’s use of the disputed domain names constitutes a disruption of the

Petitioner’s business and qualifies as bad faith registration and use because the disputed domain names are confusingly similar to the Petitioner’s trademark and the website, to which the disputed domain names resolve, is being used to sell the Petitioner’s goods without the Petitioner’s authorization or approval. As such, the Domain Holder is using the disputed domain names to intentionally attempt to attract Internet users to its own website for commercial gain, by creating a likelihood of confusion with the Petitioner’s mark as to the source, sponsorship, affiliation or endorsement of its website.

Despite the fact that the Petitioner sent Cease and Desist Letters to the Domain Holder, the Petitioner never received any reply. The Domain Holder’s failure to provide an explanation of his choice in the disputed domain names is a further indication of bad faith registration.

The Petitioner has not found that the Domain Holder owns any registered trademarks or trade names corresponding to the disputed domain names. The Domain Holder may not claim any rights established by common usage. The Domain Holder is not an authorized dealer of the Petitioner’s products and has never had a business relationship with the Petitioner. The Domain Holder has intentionally chosen domain names based on the registered LEGO trademark in order to generate traffic, and presumably income, through a website which offers the Petitioner’s own products for sale. By this, the Domain Holder is using the Petitioner’s trademark to mislead Internet users to its own commercial website. There is no evidence indicating that the Domain Holder has any rights in the name. Thereby, it is rather clear that the Domain Holder is trying to profit from the Petitioner’s world famous trademark.

B. Domain Holder

Although the Domain Holder did not submit a formal response, the Domain Holder sent two short email messages to the Center stating that the Domain Holder is willing to end the administrative proceeding and give up the disputed domain names. The Domain Holder stated: “We are willing to give up the domain names”.

7. Discussion and Findings

A domain name may be deregistered or transferred to the party requesting dispute resolution proceedings if the following three conditions in Section 7.2 of the .se Policy are fulfilled:

1. The domain name is identical or similar to:

a. a distinguishing product feature,

b. a distinguishing business feature,

c. a family name,

d. an artist’s name (if the name is not associated with someone who deceased a long time ago),

e. a title of another party’s copyrighted literary or artistic work,

f. a name that is protected by the Regulation concerning Certain Official Designations (1976:100),

g. a geographic designation or a designation of origin that is protected by the European Council’s Regulation (EU) 510/2006,

h. a geographic designation that is protected by the European Council’s Regulation (EU) 110/2008,

i. a geographic designation that is protected by the European Council’s Regulation (EU) 1234/2007, or

j. the name of a government authority that is listed in the registry that Statistics Sweden must maintain under the Swedish Code of Statutes SFS 2007:755 (Government Agencies Register Ordinance), or its generally accepted abbreviation, which is legally binding in Sweden and to which the party requesting dispute resolution can prove its rights, and

2. The domain name has been registered or used in bad faith, and

3. The domain holder has no rights or justified interest in the domain name.

All three conditions must be met in order for the party requesting dispute resolution to succeed with a claim for transfer of the domain name.

A. The domain names are identical or similar to a name which is legally binding in Sweden and to which the Petitioner can prove its rights

The Petitioner is, according to the submitted evidence, the owner of the registered trademark LEGO. The disputed domain names <exclusive-lego.se> and <exclusivelego.se> incorporate the LEGO trademark in their entirety with the addition of the descriptive term “exclusive”. The addition of a common, descriptive term, such as “exclusive”, to a petitioner’s trademark, is typically considered insufficient to avoid a finding of confusing similarity. In the present case, the Petitioner’s trademark is readily recognizable in the disputed domain names.

Having the above in mind, the Arbitrator concludes that the disputed domain names <exclusive-lego.se> and <exclusivelego.se> are confusingly similar to the Petitioner’s trademark LEGO and that the Petitioner has proved the first requirement under Section 7.2 of the .se Policy.

B. The domain names have been registered or used in bad faith

According to the evidence in the case, the Petitioner’s LEGO trademark predates the registration of the disputed domain names <exclusive-lego.se> and <exclusivelego.se> by many years. Furthermore, it is clear that the Domain Holder’s commercial website, to which the disputed domain names resolve, contains direct references to the Petitioner’s products and trademark as the Domain Holder is offering LEGO-branded products for sale. The Petitioner has not licensed, approved or in any way consented to the Domain Holder’s registration and use of the trademark in the disputed domain names. The Petitioner sent a Cease and Desist Letter to the Domain Holder who ignored the letter and continued to use the disputed domain names without replying to the Petitioner.

Given the fame of the LEGO trademark and the Domain Holder’s use of the disputed domain names, it is impossible to conclude that the Domain Holder coincidentally registered and used the disputed domain names without any knowledge of the Petitioner and its trademark. The evidence in the case indicates that the Domain Holder registered and used the disputed domain names in order to take advantage of the goodwill associated with the Petitioner’s LEGO trademark. Thus, the Domain Holder has attempted to attract Internet users to the Domain Holder’s commercial website by creating a likelihood of confusion with the Petitioner’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product on the website.

There is no evidence in the case file that refutes the Petitioner’s submissions. Consequently, the Arbitrator concludes that the Petitioner has also proved the second requirement under Section 7.2 of the .se Policy and that the disputed domain names <exclusive-lego.se> and <exclusivelego.se> have been registered and used in bad faith.

C. The Domain Holder has no rights or justified interest in the domain names.

It has been argued by the Petitioner that the Domain Holder lacks rights or justified interest in the disputed domain names <exclusive-lego.se> and <exclusivelego.se>. The Petitioner has not authorized the Domain Holder to use the trademark LEGO and the Domain Holder has never had a business relationship with the Petitioner.

Although given the opportunity, the Domain Holder has not submitted any evidence in this case to demonstrate that the Domain Holder is the owner of a trademark, or any other right, similar to the disputed domain names or that the Domain Holder is or has been commonly known by the disputed domain names. The Domain Holder’s lack of rights or justified interest in the disputed domain names is further emphasized by the Domain Holder’s email communication to the Center, which stated: “We are willing to give up the domain names”.

By not submitting a formal response, the Domain Holder has failed to invoke any circumstances, which could demonstrate pursuant to Section 7.2 of the .se Policy, any rights or justified interests in respect of the disputed domain names. Thus, there is no evidence in the case that refutes the Petitioner’s submissions, and the Arbitrator concludes that the Petitioner has also proved the third requirement under Section 7.2 of the .se Policy.

8. Decision

For the foregoing reasons, in accordance with Section 7.2 of the .se Policy, the Arbitrator orders that the domain names <exclusive-lego.se> and <exclusivelego.se> shall be transferred to the Petitioner.

9. Summary

The Arbitrator concludes that the disputed domain names <exclusive-lego.se> and <exclusivelego.se> are confusingly similar to the Petitioner’s trademark LEGO and that the Petitioner has proved the first requirement under Section 7.2 of the .se Policy. The Arbitrator furthermore concludes that the Petitioner has proved the second requirement under Section 7.2 of the .se Policy and that the disputed domain names <exclusive-lego.se> and <exclusivelego.se> have been registered and used in bad faith, and that the Domain Holder has failed to invoke any circumstances, which could demonstrate pursuant to Section 7.2 of the .se Policy, any rights or justified interests in respect of the disputed domain names.

Johan Sjöbeck
Date: May 1, 2018