Case number | CAC-ADREU-006183 |
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Time of filing | 2012-02-28 19:11:48 |
Domain names | LEGO-bg.eu |
Case administrator
Tereza Bartošková (Case admin) |
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Complainant
Organization | Mette M Andersen (LEGO Juris A/S) |
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Respondent
Organization | Paisiy Aleksandrov (Company) |
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Factual Background
The Complainant is based in Denmark and carries on a well known global business in the manufacture and sale of construction toys and other branded products both directly and through its licensees.
The Complainant is the owner of a large portfolio of registered trademarks and Internet domain names more particularly described below and in particular in this case relies on its rights in CTM LEGO registration number 000039800 filed on 1 April 1996 registered on 5 October 1998 in respect of goods and services in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42.
In the absence of a Response, there is no information on file relating to the Respondent except that furnished in the Complaint and the information on the WhoIs database. According to the WhoIs database the disputed domain name is registered in the name of the Respondent with an address in Sofia, Bulgaria.
The disputed domain name was registered on 30 August 2011 and expires on 31 August 2012.
The disputed domain name was in active use at the time the Complaint was filed and the Complainant has furnished a print out of the active web site to which the disputed domain name resolved on 15 November 2011.
The Complainant is the owner of a large portfolio of registered trademarks and Internet domain names more particularly described below and in particular in this case relies on its rights in CTM LEGO registration number 000039800 filed on 1 April 1996 registered on 5 October 1998 in respect of goods and services in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42.
In the absence of a Response, there is no information on file relating to the Respondent except that furnished in the Complaint and the information on the WhoIs database. According to the WhoIs database the disputed domain name is registered in the name of the Respondent with an address in Sofia, Bulgaria.
The disputed domain name was registered on 30 August 2011 and expires on 31 August 2012.
The disputed domain name was in active use at the time the Complaint was filed and the Complainant has furnished a print out of the active web site to which the disputed domain name resolved on 15 November 2011.
A. Complainant
The Complainant is the owner of the LEGO trademark that is used in connection with construction toys and other products and services. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in Germany and elsewhere. Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the U.S. during 1953, to identify construction toys made and sold by them.
The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Bulgaria.
Over the years, the business of making and selling LEGO branded toys has grown remarkably. The revenue for the LEGO Group in 2009 had grown to more than $2,8 billion. The Complainant’s global market share rose from 4.8% at the close of 2009 to approx. 5.9% at end 2010.
The Complainant is the owner of the LEGO trademark and has registered the trademark in a number of jurisdictions throughout the world.
In particular for the purposes of this Complaint the Complainant relies on its rights in CTM LEGO registration number 000039800 filed on 1 April 1996 registered on 5 October 1998 in respect of goods and services in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42.
The Complainant submits that its group of companies also maintains an extensive web site under the domain name <lego.com>. The Complainant claims to be the owner of more than 1,000 domain names containing the term “lego”. The Complainant has furnished a list of 101 Internet domain names composed of the word “lego” and thirty Internet domain names composed of the word “legoland” that it claims to own. The list includes Internet domain names registered on generic top level domains such as <lego.asia>, <lego.biz>, <lego.com>, <lego.info> , <lego.net>, <lego.pro>, <lego.shop>, <lego.tel>, <legoland.asia>, <legoland.biz>, <legoland.com>, <legoland.info>, <legoland.net>, <legoland.org> and also registrations on a number of code domains within the EU and in the wider world, including the Bulgarian cc top level domain name <lego.bg> - a jurisdiction where, according to the details furnished on the WhoIs database, the Respondent resides. The Complainant submits that it is the strict policy of the Complainant that all domain names containing the word LEGO should be owned by the Complainant.
The Complainant submits that 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 of the Complainant.
The Complainant submits that the LEGO trademark and brand have been recognized as being famous. In support of this claim the Complainant has furnished is a list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world. Additionally, the Complainant states that in a recently published image survey, conducted by the Reputation Institute, the LEGO trademark was named as being the number one brand in Europe. The Complainant has filed a copy of the survey in an annex to the Complaint.
The Complainant submits that its group of companies has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.
The Complainant submits that its trade mark LEGO has substantial inherent and acquired distinctiveness and there is a significant awareness of the trademark LEGO throughout the European Union. The Complainant submits that accordingly the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), provides the Complainant as owner of the well-known trademark LEGO, with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the Complainant submits that the protection for LEGO goes far beyond toys and goods similar to toys.
The Complainant submits that the dominant element in the disputed domain name <lego-bg.eu> is the word “lego” which is identical to the Complainant’s registered trademark LEGO.
The Complainant submits that the fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions notably WIPO Case No. 2010-0840 LEGO Juris A/S v. Rampe Purda; “LEGO is clearly a well-known mark”, WIPO Case No. 2010-1260 LEGO Juris A/S v. Domain Administrator; “In the present case, the disputed domain names incorporate the Complainant’s well known registered trademark LEGO”, and WIPO Case No. D2009-0680 LEGO Juris A/S v. Reginald Hastings Jr; “LEGO is a mark enjoying high reputation as construction toys popular with children.”
The Complainant submits that the disputed domain name is confusing similar to the Complainant’s world famous trademark LEGO. The addition of a hyphen and the suffix “bg” is not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO, instantly recognizable as a world famous trademark. Furthermore, the suffix “bg” gives reference to the Respondent’s residential country Bulgaria. In ADR decision 5446, iloveikea.eu, the Panel stated; “The disputed domain name <iloveikea.eu> incorporates the trademark in its entirety with the addition of the descriptive words “I” and “love”. The ability for such descriptive words to distinguish the disputed domain name from the trademark of the Complainant is limited. The disputed domain name <iloveikea.eu> is therefore considered confusingly similar to the Complainant’s trademark IKEA.” The same discussion applies in this case as well.
The Complainant asks this Panel to note that it has already won two UDRP complaints against the same Respondent namely WIPO Case No. D2010-1965 regarding LEGO-bg.com and WIPO Case No. D2011-1055 regarding bg-LEGO.com and in each case the disputed domain names were held to be confusingly similar to the Complainant’s trademark.
The Complainant submits that it is standard case law that the top level domain <.eu> should be ignored when comparing Complainant’s rights and the disputed domain name, citing for example ADR decision 3292.
The Complainant submits that there is an obvious likelihood of confusion by an association with the trademark of the Complainant and because of the reputation of the trademark LEGO there is a considerable risk that the trade public will perceive the disputed domain name either as a domain name owned by the Complainant or will be led to believe that the disputed domain name has some commercial relationship with the Complainant. The Complainant further submits that there is a risk that the Complainant’s trademark may be tarnished by being connected to a third party web site.
The Complainant argues that by using the LEGO trademark as a dominant part of the disputed domain name, the Respondent is exploiting the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark.
The Complainant submits that the disputed domain name was registered by its holder without rights or legitimate interests.
The Complainant asserts that it has not found any evidence that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Neither has the Complainant found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in the name. Consequently the Respondent may not claim any rights established by common usage.
It is also clear, that no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO. In WIPO Case No. D2000-0055 Guerlain S.A. v. Peikang the panel stated that, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. This was stated by the panel as a factor in the finding of non legitimate interest with the Respondent in WIPO Case No. D2004-0312 Dr. Ing. h.c. F. Porsche AG v. Ron Anderson.
The Respondent has never replied to the emails or cease and deist letters sent by the Complainant in regards to any of the three domain names, or to the two earlier filed complaints. If the Respondent should have had any rights to use and trade under the LEGO mark, the natural thing would be to reply back – at least the second time around having been served with a Complaint.
The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the disputed domain name. The registration date of the disputed domain name, August 30, 2011, is subsequent to the decisions in earlier referred UDRPs so it is apparent that the Respondent was well aware of the Complainant’s trademark rights at the time of registration. Despite this knowledge, the Respondent registered a new similar disputed domain name under another TLD.
The Complainant submits that it is obvious that the fame of the Complainant’s trademark has motivated the Respondent to register the disputed domain name. The Respondent cannot claim to have been using LEGO, without being aware of the Complainant’s rights to it. This, among other facts, proves that the Respondent’s interests cannot have been legitimate.
LEGO is a famous trademark worldwide and in WIPO Case No. D2001-1314, Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc. it was established that any use of such a trademark in a domain name would violate the rights of the trademark owner. The panel stated that "given the notoriety of the Complainant's Deutsche Bank Mark, any use which the Respondent would make of any domain name, as here, that incorporated the Complainant's Deutsche Bank Mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the Complainant has long held in its mark".
The Respondent is not making a legitimate or non-commercial or fair use of the disputed domain name as it is redirecting to a commercial site offering LEGO products for sale. In this regard the Complainant refers to a print out of a number of pages from the website to which the disputed domain name resolved on 15 November 2011. The web pages contain content in both Latin and Cyrillic script.
The Complainant argues that one criterion for making a bona fide offering is that the Respondent should accurately disclose the registrant’s relationship with the trademark owner, which is not done in this case. Instead, at the bottom of the website following texts is displayed; “Copyright © 2005-2010 LEGO Магазин sgloi.com.”. The Bulgarian word “Магазин” translates into “shop”. This text rather confuses a visitor into believing that the registrant has legal rights to use the LEGO trademark.
The Complainant argues that the website to which the disputed domain name resolves could easily be mistaken for a website and shop affiliated with or authorized by the Complainant. At the top of the website the text “Добре дошли в LEGO® онлайн магазин” is displayed. In English this text is interpreted similar to “Welcome to the LEGO® Store”. This text is clearly misleading a visitor into believing that the website is authorized or owned by the Complainant. Further, the website displays the Complainant’s colours and figures and the Complainant’s LEGO logotype is placed at the top of the page. This, together with the fact that there is no disclaimer stating the absence of any relationship between the companies proves that the Respondent is using the LEGO trademark to mislead Internet users to a commercial web site and consequently, the Respondent is tarnishing the trademark LEGO. No evidence has been found that the Respondent uses the name as a company name or has any other legal right in the name LEGO. The Respondent is trying to take advantage of the Complainant’s world famous trademark. In case, D2001-0067; Drexel University v. David Brouda, the Panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.”
The website is exactly the same as in the earlier decided cases between the Complainant and the Respondent, Case No. D2010-1965 and Case No. D2011-1055. In both cases the panels stated that the requirements of paragraph 4(a)(ii) of the Policy was satisfied.
Referring to the above mentioned the Respondent has no rights or legitimate interest in respect of the disputed domain name. Under the ADR Rules, a Complainant shall demonstrate that the Respondent has no legitimate interest in the domain name, or has registered or is using the domain name in bad faith, compared to the UDRP Rules, where both criteria must be fulfilled. In the light of above stated, the Complainant notes that, in case the Respondent is found to have registered the disputed domain name without rights or legitimate interests in it, it is not necessary to investigate Respondent’s possible bad faith under Article B11(d)(1)(iii) of the ADR Rules. In several UDRP cases the Panels find that there is no legitimate interest if bad faith use is established.
The Complainant submits that the disputed domain name was registered or used in bad faith The trademark LEGO in respect of toys belonging to the Complainant has the status of a well-known trademark with a substantial and widespread reputation throughout the whole European Union and throughout the world. The number of third party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed the last years because of the fame of the LEGO trademark. The Complainant cites as examples WIPO Case No. D2011-0617, WIPO Case No. D2011-0537, WIPO Case No. D2011-0505, WIPO Case No. D2011-0442, WIPO Case No. D2011-0226, WIPO Case No. D2010-2191, WIPO Case No. D2010-2178, WIPO Case No. D2010-2115, WIPO Case No. D2010-2101, WIPO Case No. D2010-2047, WIPO Case No. D2010-2043, WIPO Case No. D2010-2042, WIPO Case No. D2010-2030, WIPO Case No. D2010-0835, WIPO Case No. D2010-0839, WIPO Case No. D2010-0840, WIPO Case No. D2010-0881, WIPO Case No. D2010-0660, WIPO Case No. D2010-0545.
The Complainant claims that it first tried to contact the Respondent on August 25, 2010 through a cease and desist letter regarding the domain name <LEGO-bg.com>, as there was no amicable solution the matter a complaint was filed to WIPO on November 17, 2010 and the domain was transferred to the Complainant in accordance with the decision in WIPO Case No. D2010-1965). On March 11, 2011 the Complainant once again contacted the Respondent regarding the domain name <bg-LEGO.com>. As there was no amicable solution in this matter either a subsequent complaint was filed with WIPO on June 22, 2011 and the domain was subsequent transferred to the Complainant in accordance with the decision WIPO Case No. D2011-1055.
On August 30, 2011 the Respondent registered the disputed domain name, and the Complainant contacted him on September 26, 2011, together with the decisions from the earlier two disputes, requesting a voluntarily transfer of the disputed domain name to the Complainant. The Respondent did not reply, and a reminder was sent on October 4, 2011. Since the efforts of trying to solve the matter amicably were unsuccessful the Complainant chose to file a complaint according to the ADR process.
The Complainant submits that the disputed domain name is currently connected to a web site containing toys for sale. Consequently, the Respondent is using the disputed domain name to attract Internet users, for commercial gain to the Respondent’s website or other on-line location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and Community law, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent. In WIPO Case No. D2002-0946 Philip Morris Inc. v. Alex Tsypkin, the panel stated “It follows from what has been said about legitimacy that the Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internauts to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).”
Since the Respondent uses the brand and a logotype that resembles the LEGO logotype on the website of his company, it is obvious that he is well aware of the trademark LEGO. Further, he uses the LEGO brick in the URL bar which enhances the impression that the website is an official LEGO website. It is strongly indicated that the Respondent intentionally chose the disputed domain name, based on a registered well-known trademark in order to generate more traffic to his own business. Furthermore, the Respondent uses LEGO’s colour and a brick pattern on the website. This design is most likely used to mislead a visitor into believing that the site in some way is affiliated with the Complainant. Furthermore, there is no disclaimer on the website explaining the non-existing relationship between the parties. In ADR case decision 2235 the panel stated; “Given the Complainant’s rights to the use the name ‘Palmer’s Cocoa Butter’ in Europe, there are only a limited number of ways in which the Respondent could use the domain name that would not be in bad faith. In this respect, Article 21.3(d) of Commission Regulation (EC) No 874/2004 and Paragraph B11(f)(4) of the ADR Rules are relevant, which include, as an example of bad faith, the use of a domain name to attract Internet users for commercial gain by creating a likelihood of confusion with a name on which a right is established. If the domain name was used for any commercial purpose (including the offering of the domain name for sale, or for sponsored links or affiliate sales) this would therefore be evidence of bad faith.” The Complainant finds that the same reasoning should apply here as well.
In the earlier mentioned WIPO Case No. D2011-1055 the panelist stated regarding use of bad faith; “The Panel finds this contention reasonable, because the LEGO mark is incorporated in the disputed domain name in its entirety; the Respondent’s website re-creates the look, feel, colors and the logo of the Complainant; and the Complainant’s products are offered for sale on the Respondent’s website. Critically, the Panel finds that the second attempt to trade on the LEGO mark’s fame, confirms use in bad faith.”
Also, in the first case against the Respondent, WIPO Case No. D2010-1965, the panelist stated; “Moreover, the website located at <lego-bg.com> offers LEGO branded products including construction toys. Based on this content, Respondent is clearly aware of Complainant’s business and appears to have chosen the <lego-bg.com> domain name in an effort to deceive customers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by Complainant, most probably the Bulgarian website for the Complainant.” and “Continued use of the <lego-bg.com> domain contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <lego.com> website.”. The same conclusion should be made in this present case as the website is identical to the earlier two ones.
To summarize, LEGO is a famous trademark worldwide. There is no doubt that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. The Respondent is not commonly known by the disputed domain name either through trademark use or a registered company name. The Domain Name is used as a gate-way to the Respondent’s own website www.sglobi.com and thus, the disputed domain name registration is an attempt to retrieve internet users to his own website. Redirecting the Domain Name may also cause confusion and reflect badly on the Complainant. This use does not amount to legitimate noncommercial or fair use of the disputed domain name, and the use of an identical or confusingly similar domain name to redirect users to a third-party website cannot amount to a bona fide offering of services.
The fact that the Respondent has registered and lost two earlier disputes including similar domain names, and registered the disputed domain name after the last decision shows that the Respondent has engaged in a pattern of conduct. There is no connection between the Respondent and the Complainant. By using the disputed domain name the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain. Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.
The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Bulgaria.
Over the years, the business of making and selling LEGO branded toys has grown remarkably. The revenue for the LEGO Group in 2009 had grown to more than $2,8 billion. The Complainant’s global market share rose from 4.8% at the close of 2009 to approx. 5.9% at end 2010.
The Complainant is the owner of the LEGO trademark and has registered the trademark in a number of jurisdictions throughout the world.
In particular for the purposes of this Complaint the Complainant relies on its rights in CTM LEGO registration number 000039800 filed on 1 April 1996 registered on 5 October 1998 in respect of goods and services in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42.
The Complainant submits that its group of companies also maintains an extensive web site under the domain name <lego.com>. The Complainant claims to be the owner of more than 1,000 domain names containing the term “lego”. The Complainant has furnished a list of 101 Internet domain names composed of the word “lego” and thirty Internet domain names composed of the word “legoland” that it claims to own. The list includes Internet domain names registered on generic top level domains such as <lego.asia>, <lego.biz>, <lego.com>, <lego.info> , <lego.net>, <lego.pro>, <lego.shop>, <lego.tel>, <legoland.asia>, <legoland.biz>, <legoland.com>, <legoland.info>, <legoland.net>, <legoland.org> and also registrations on a number of code domains within the EU and in the wider world, including the Bulgarian cc top level domain name <lego.bg> - a jurisdiction where, according to the details furnished on the WhoIs database, the Respondent resides. The Complainant submits that it is the strict policy of the Complainant that all domain names containing the word LEGO should be owned by the Complainant.
The Complainant submits that 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 of the Complainant.
The Complainant submits that the LEGO trademark and brand have been recognized as being famous. In support of this claim the Complainant has furnished is a list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world. Additionally, the Complainant states that in a recently published image survey, conducted by the Reputation Institute, the LEGO trademark was named as being the number one brand in Europe. The Complainant has filed a copy of the survey in an annex to the Complaint.
The Complainant submits that its group of companies has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.
The Complainant submits that its trade mark LEGO has substantial inherent and acquired distinctiveness and there is a significant awareness of the trademark LEGO throughout the European Union. The Complainant submits that accordingly the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), provides the Complainant as owner of the well-known trademark LEGO, with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the Complainant submits that the protection for LEGO goes far beyond toys and goods similar to toys.
The Complainant submits that the dominant element in the disputed domain name <lego-bg.eu> is the word “lego” which is identical to the Complainant’s registered trademark LEGO.
The Complainant submits that the fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions notably WIPO Case No. 2010-0840 LEGO Juris A/S v. Rampe Purda; “LEGO is clearly a well-known mark”, WIPO Case No. 2010-1260 LEGO Juris A/S v. Domain Administrator; “In the present case, the disputed domain names incorporate the Complainant’s well known registered trademark LEGO”, and WIPO Case No. D2009-0680 LEGO Juris A/S v. Reginald Hastings Jr; “LEGO is a mark enjoying high reputation as construction toys popular with children.”
The Complainant submits that the disputed domain name is confusing similar to the Complainant’s world famous trademark LEGO. The addition of a hyphen and the suffix “bg” is not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO, instantly recognizable as a world famous trademark. Furthermore, the suffix “bg” gives reference to the Respondent’s residential country Bulgaria. In ADR decision 5446, iloveikea.eu, the Panel stated; “The disputed domain name <iloveikea.eu> incorporates the trademark in its entirety with the addition of the descriptive words “I” and “love”. The ability for such descriptive words to distinguish the disputed domain name from the trademark of the Complainant is limited. The disputed domain name <iloveikea.eu> is therefore considered confusingly similar to the Complainant’s trademark IKEA.” The same discussion applies in this case as well.
The Complainant asks this Panel to note that it has already won two UDRP complaints against the same Respondent namely WIPO Case No. D2010-1965 regarding LEGO-bg.com and WIPO Case No. D2011-1055 regarding bg-LEGO.com and in each case the disputed domain names were held to be confusingly similar to the Complainant’s trademark.
The Complainant submits that it is standard case law that the top level domain <.eu> should be ignored when comparing Complainant’s rights and the disputed domain name, citing for example ADR decision 3292.
The Complainant submits that there is an obvious likelihood of confusion by an association with the trademark of the Complainant and because of the reputation of the trademark LEGO there is a considerable risk that the trade public will perceive the disputed domain name either as a domain name owned by the Complainant or will be led to believe that the disputed domain name has some commercial relationship with the Complainant. The Complainant further submits that there is a risk that the Complainant’s trademark may be tarnished by being connected to a third party web site.
The Complainant argues that by using the LEGO trademark as a dominant part of the disputed domain name, the Respondent is exploiting the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark.
The Complainant submits that the disputed domain name was registered by its holder without rights or legitimate interests.
The Complainant asserts that it has not found any evidence that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Neither has the Complainant found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in the name. Consequently the Respondent may not claim any rights established by common usage.
It is also clear, that no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO. In WIPO Case No. D2000-0055 Guerlain S.A. v. Peikang the panel stated that, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. This was stated by the panel as a factor in the finding of non legitimate interest with the Respondent in WIPO Case No. D2004-0312 Dr. Ing. h.c. F. Porsche AG v. Ron Anderson.
The Respondent has never replied to the emails or cease and deist letters sent by the Complainant in regards to any of the three domain names, or to the two earlier filed complaints. If the Respondent should have had any rights to use and trade under the LEGO mark, the natural thing would be to reply back – at least the second time around having been served with a Complaint.
The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the disputed domain name. The registration date of the disputed domain name, August 30, 2011, is subsequent to the decisions in earlier referred UDRPs so it is apparent that the Respondent was well aware of the Complainant’s trademark rights at the time of registration. Despite this knowledge, the Respondent registered a new similar disputed domain name under another TLD.
The Complainant submits that it is obvious that the fame of the Complainant’s trademark has motivated the Respondent to register the disputed domain name. The Respondent cannot claim to have been using LEGO, without being aware of the Complainant’s rights to it. This, among other facts, proves that the Respondent’s interests cannot have been legitimate.
LEGO is a famous trademark worldwide and in WIPO Case No. D2001-1314, Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc. it was established that any use of such a trademark in a domain name would violate the rights of the trademark owner. The panel stated that "given the notoriety of the Complainant's Deutsche Bank Mark, any use which the Respondent would make of any domain name, as here, that incorporated the Complainant's Deutsche Bank Mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the Complainant has long held in its mark".
The Respondent is not making a legitimate or non-commercial or fair use of the disputed domain name as it is redirecting to a commercial site offering LEGO products for sale. In this regard the Complainant refers to a print out of a number of pages from the website to which the disputed domain name resolved on 15 November 2011. The web pages contain content in both Latin and Cyrillic script.
The Complainant argues that one criterion for making a bona fide offering is that the Respondent should accurately disclose the registrant’s relationship with the trademark owner, which is not done in this case. Instead, at the bottom of the website following texts is displayed; “Copyright © 2005-2010 LEGO Магазин sgloi.com.”. The Bulgarian word “Магазин” translates into “shop”. This text rather confuses a visitor into believing that the registrant has legal rights to use the LEGO trademark.
The Complainant argues that the website to which the disputed domain name resolves could easily be mistaken for a website and shop affiliated with or authorized by the Complainant. At the top of the website the text “Добре дошли в LEGO® онлайн магазин” is displayed. In English this text is interpreted similar to “Welcome to the LEGO® Store”. This text is clearly misleading a visitor into believing that the website is authorized or owned by the Complainant. Further, the website displays the Complainant’s colours and figures and the Complainant’s LEGO logotype is placed at the top of the page. This, together with the fact that there is no disclaimer stating the absence of any relationship between the companies proves that the Respondent is using the LEGO trademark to mislead Internet users to a commercial web site and consequently, the Respondent is tarnishing the trademark LEGO. No evidence has been found that the Respondent uses the name as a company name or has any other legal right in the name LEGO. The Respondent is trying to take advantage of the Complainant’s world famous trademark. In case, D2001-0067; Drexel University v. David Brouda, the Panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.”
The website is exactly the same as in the earlier decided cases between the Complainant and the Respondent, Case No. D2010-1965 and Case No. D2011-1055. In both cases the panels stated that the requirements of paragraph 4(a)(ii) of the Policy was satisfied.
Referring to the above mentioned the Respondent has no rights or legitimate interest in respect of the disputed domain name. Under the ADR Rules, a Complainant shall demonstrate that the Respondent has no legitimate interest in the domain name, or has registered or is using the domain name in bad faith, compared to the UDRP Rules, where both criteria must be fulfilled. In the light of above stated, the Complainant notes that, in case the Respondent is found to have registered the disputed domain name without rights or legitimate interests in it, it is not necessary to investigate Respondent’s possible bad faith under Article B11(d)(1)(iii) of the ADR Rules. In several UDRP cases the Panels find that there is no legitimate interest if bad faith use is established.
The Complainant submits that the disputed domain name was registered or used in bad faith The trademark LEGO in respect of toys belonging to the Complainant has the status of a well-known trademark with a substantial and widespread reputation throughout the whole European Union and throughout the world. The number of third party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed the last years because of the fame of the LEGO trademark. The Complainant cites as examples WIPO Case No. D2011-0617, WIPO Case No. D2011-0537, WIPO Case No. D2011-0505, WIPO Case No. D2011-0442, WIPO Case No. D2011-0226, WIPO Case No. D2010-2191, WIPO Case No. D2010-2178, WIPO Case No. D2010-2115, WIPO Case No. D2010-2101, WIPO Case No. D2010-2047, WIPO Case No. D2010-2043, WIPO Case No. D2010-2042, WIPO Case No. D2010-2030, WIPO Case No. D2010-0835, WIPO Case No. D2010-0839, WIPO Case No. D2010-0840, WIPO Case No. D2010-0881, WIPO Case No. D2010-0660, WIPO Case No. D2010-0545.
The Complainant claims that it first tried to contact the Respondent on August 25, 2010 through a cease and desist letter regarding the domain name <LEGO-bg.com>, as there was no amicable solution the matter a complaint was filed to WIPO on November 17, 2010 and the domain was transferred to the Complainant in accordance with the decision in WIPO Case No. D2010-1965). On March 11, 2011 the Complainant once again contacted the Respondent regarding the domain name <bg-LEGO.com>. As there was no amicable solution in this matter either a subsequent complaint was filed with WIPO on June 22, 2011 and the domain was subsequent transferred to the Complainant in accordance with the decision WIPO Case No. D2011-1055.
On August 30, 2011 the Respondent registered the disputed domain name, and the Complainant contacted him on September 26, 2011, together with the decisions from the earlier two disputes, requesting a voluntarily transfer of the disputed domain name to the Complainant. The Respondent did not reply, and a reminder was sent on October 4, 2011. Since the efforts of trying to solve the matter amicably were unsuccessful the Complainant chose to file a complaint according to the ADR process.
The Complainant submits that the disputed domain name is currently connected to a web site containing toys for sale. Consequently, the Respondent is using the disputed domain name to attract Internet users, for commercial gain to the Respondent’s website or other on-line location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and Community law, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent. In WIPO Case No. D2002-0946 Philip Morris Inc. v. Alex Tsypkin, the panel stated “It follows from what has been said about legitimacy that the Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internauts to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).”
Since the Respondent uses the brand and a logotype that resembles the LEGO logotype on the website of his company, it is obvious that he is well aware of the trademark LEGO. Further, he uses the LEGO brick in the URL bar which enhances the impression that the website is an official LEGO website. It is strongly indicated that the Respondent intentionally chose the disputed domain name, based on a registered well-known trademark in order to generate more traffic to his own business. Furthermore, the Respondent uses LEGO’s colour and a brick pattern on the website. This design is most likely used to mislead a visitor into believing that the site in some way is affiliated with the Complainant. Furthermore, there is no disclaimer on the website explaining the non-existing relationship between the parties. In ADR case decision 2235 the panel stated; “Given the Complainant’s rights to the use the name ‘Palmer’s Cocoa Butter’ in Europe, there are only a limited number of ways in which the Respondent could use the domain name that would not be in bad faith. In this respect, Article 21.3(d) of Commission Regulation (EC) No 874/2004 and Paragraph B11(f)(4) of the ADR Rules are relevant, which include, as an example of bad faith, the use of a domain name to attract Internet users for commercial gain by creating a likelihood of confusion with a name on which a right is established. If the domain name was used for any commercial purpose (including the offering of the domain name for sale, or for sponsored links or affiliate sales) this would therefore be evidence of bad faith.” The Complainant finds that the same reasoning should apply here as well.
In the earlier mentioned WIPO Case No. D2011-1055 the panelist stated regarding use of bad faith; “The Panel finds this contention reasonable, because the LEGO mark is incorporated in the disputed domain name in its entirety; the Respondent’s website re-creates the look, feel, colors and the logo of the Complainant; and the Complainant’s products are offered for sale on the Respondent’s website. Critically, the Panel finds that the second attempt to trade on the LEGO mark’s fame, confirms use in bad faith.”
Also, in the first case against the Respondent, WIPO Case No. D2010-1965, the panelist stated; “Moreover, the website located at <lego-bg.com> offers LEGO branded products including construction toys. Based on this content, Respondent is clearly aware of Complainant’s business and appears to have chosen the <lego-bg.com> domain name in an effort to deceive customers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by Complainant, most probably the Bulgarian website for the Complainant.” and “Continued use of the <lego-bg.com> domain contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <lego.com> website.”. The same conclusion should be made in this present case as the website is identical to the earlier two ones.
To summarize, LEGO is a famous trademark worldwide. There is no doubt that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. The Respondent is not commonly known by the disputed domain name either through trademark use or a registered company name. The Domain Name is used as a gate-way to the Respondent’s own website www.sglobi.com and thus, the disputed domain name registration is an attempt to retrieve internet users to his own website. Redirecting the Domain Name may also cause confusion and reflect badly on the Complainant. This use does not amount to legitimate noncommercial or fair use of the disputed domain name, and the use of an identical or confusingly similar domain name to redirect users to a third-party website cannot amount to a bona fide offering of services.
The fact that the Respondent has registered and lost two earlier disputes including similar domain names, and registered the disputed domain name after the last decision shows that the Respondent has engaged in a pattern of conduct. There is no connection between the Respondent and the Complainant. By using the disputed domain name the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain. Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.
B. Respondent
No Response was filed.
Discussion and Findings
The Complainant is obliged to prove that the disputed domain name is identical or confusingly similar to the name or names in respect of which a right or rights are recognized or established by national and/or Community law (as specified and described in accordance with Paragraph B 1 (b) (9)); and, either that the disputed domain name has been registered by its holder without rights or legitimate interests in respect of the disputed domain name; or that the disputed domain name should be considered as having been registered or being used in bad faith.
The Complainant has furnished evidence that it is the owner of the LEGO trade mark through its trade mark registrations and long established use as manufacturers and merchants of toys and other products. In particular the Complainant has made out a prima facie case that it has acquired rights that are recognised in Community law, by its ownership of CTM LEGO registration number 000039800 filed on 1 April 1996 registered on 5 October 1998 in respect of goods and services in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42,.
Having compared both the Complainant’s mark and the disputed domain name, this Panel accepts the Complainant’s submissions that the disputed domain name is confusingly similar to the Complainant’s LEGO trade mark. The word LEGO is the dominant element in the disputed domain name and the disputed domain name has no other distinguishing features.
The Complainant has furthermore made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. The LEGO mark is a valuable asset of the Complainant. The Complainant has not licensed the Respondent to use the LEGO trade mark or to register the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name.
On the evidence the Respondent registered the disputed domain name after there had been two separate findings against him in UDRP proceedings brought by the Complainant to protect its rights in the LEGO trade mark namely LEGO Juris A/S v. pcmaniabg, Paisiy Aleksandrov WIPO Case No. D2010-1965 brought in respect of the gTLD domain name <lego-bg.com> and LEGO Juris A/S v. pcmaniabg WIPO Case No. D2011-1055 brought in respect of the gTLD domain name <bg-lego>.com. It follows that the Respondent was aware of the Complainant’s rights the LEGO trade mark.
The Complainant has furnished a copy of pages from the website to which the disputed domain name resolves and it is clear that the disputed domain name is actively used by the Respondent. The appearance of the website gives the impression that it is associated with the Complainant. The web pages contain images of the Complainant’s products and the Complainant’s logo is prominently displayed. There is no indication on the website that the Complainant is not associated with the website. Given that the Complainant’s LEGO trade mark is the dominant element of the disputed domain name and given Complainant’s statutory rights in its CTM registration and the strength of the Complainant’s reputation in the field of toy products, it is most improbable that the Respondent could have acquired any rights in the domain name.
Similarly, in the circumstances described by the Complainant such use of the domain name which takes predatory advantage of the goodwill and reputation of the Complainant in its LEGO trade mark, cannot be a legitimate use.
Since the Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, there is an onus on the Respondent to furnish some evidence of his rights. He has failed to deliver a Response or give any explanation.
In the circumstances this Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name.
Furthermore, on the balance of probabilities, the Respondent intentionally chose and registered the disputed domain name, in full knowledge that it is confusingly similar to the Complainant’s LEGO trade mark. The Respondent had acquired a substantial reputation and goodwill in the LEGO trade mark prior to the registration of the disputed domain name. Furthermore, on the evidence the Respondent has in the past two years been the unsuccessful respondent in two UDRP cases brought by the Complainant to protect its LEGO trade mark. This Panel finds that the Respondent chose the disputed domain name because it is confusingly similar to the Complainant’s trade mark in order to take predatory advantage of the Complainant’s goodwill and reputation.
Furthermore having considered the evidence, this Panel finds that the intentional use of the disputed domain name that is confusingly similar to the Complainant’s LEGO trade mark to resolve to a website that purports to offer toys for sale, wrongfully giving the impression that the Respondent’s website is associated with the Complainant is a use in bad faith.
On the balance of probabilities, the Respondent is using the disputed domain name to attract Internet users, for commercial gain to the Respondent’s website or other on-line location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and Community law, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent. It follows that the disputed domain name is being used in bad faith.
In the circumstances the Complainant is entitled to succeed in its application.
The Complainant has furnished evidence that it is the owner of the LEGO trade mark through its trade mark registrations and long established use as manufacturers and merchants of toys and other products. In particular the Complainant has made out a prima facie case that it has acquired rights that are recognised in Community law, by its ownership of CTM LEGO registration number 000039800 filed on 1 April 1996 registered on 5 October 1998 in respect of goods and services in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42,.
Having compared both the Complainant’s mark and the disputed domain name, this Panel accepts the Complainant’s submissions that the disputed domain name is confusingly similar to the Complainant’s LEGO trade mark. The word LEGO is the dominant element in the disputed domain name and the disputed domain name has no other distinguishing features.
The Complainant has furthermore made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. The LEGO mark is a valuable asset of the Complainant. The Complainant has not licensed the Respondent to use the LEGO trade mark or to register the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name.
On the evidence the Respondent registered the disputed domain name after there had been two separate findings against him in UDRP proceedings brought by the Complainant to protect its rights in the LEGO trade mark namely LEGO Juris A/S v. pcmaniabg, Paisiy Aleksandrov WIPO Case No. D2010-1965 brought in respect of the gTLD domain name <lego-bg.com> and LEGO Juris A/S v. pcmaniabg WIPO Case No. D2011-1055 brought in respect of the gTLD domain name <bg-lego>.com. It follows that the Respondent was aware of the Complainant’s rights the LEGO trade mark.
The Complainant has furnished a copy of pages from the website to which the disputed domain name resolves and it is clear that the disputed domain name is actively used by the Respondent. The appearance of the website gives the impression that it is associated with the Complainant. The web pages contain images of the Complainant’s products and the Complainant’s logo is prominently displayed. There is no indication on the website that the Complainant is not associated with the website. Given that the Complainant’s LEGO trade mark is the dominant element of the disputed domain name and given Complainant’s statutory rights in its CTM registration and the strength of the Complainant’s reputation in the field of toy products, it is most improbable that the Respondent could have acquired any rights in the domain name.
Similarly, in the circumstances described by the Complainant such use of the domain name which takes predatory advantage of the goodwill and reputation of the Complainant in its LEGO trade mark, cannot be a legitimate use.
Since the Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, there is an onus on the Respondent to furnish some evidence of his rights. He has failed to deliver a Response or give any explanation.
In the circumstances this Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name.
Furthermore, on the balance of probabilities, the Respondent intentionally chose and registered the disputed domain name, in full knowledge that it is confusingly similar to the Complainant’s LEGO trade mark. The Respondent had acquired a substantial reputation and goodwill in the LEGO trade mark prior to the registration of the disputed domain name. Furthermore, on the evidence the Respondent has in the past two years been the unsuccessful respondent in two UDRP cases brought by the Complainant to protect its LEGO trade mark. This Panel finds that the Respondent chose the disputed domain name because it is confusingly similar to the Complainant’s trade mark in order to take predatory advantage of the Complainant’s goodwill and reputation.
Furthermore having considered the evidence, this Panel finds that the intentional use of the disputed domain name that is confusingly similar to the Complainant’s LEGO trade mark to resolve to a website that purports to offer toys for sale, wrongfully giving the impression that the Respondent’s website is associated with the Complainant is a use in bad faith.
On the balance of probabilities, the Respondent is using the disputed domain name to attract Internet users, for commercial gain to the Respondent’s website or other on-line location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and Community law, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent. It follows that the disputed domain name is being used in bad faith.
In the circumstances the Complainant is entitled to succeed in its application.
Decision
For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the domain name LEGO-BG be transferred to the Complainant
PANELISTS
Name | James Bridgeman |
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Date of Panel Decision
2012-02-25