Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is DHR Jens of Tielt, Belgium.
The disputed domain name <legowinkel.org> is registered with Mijn InternetOplossing B.V. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2013. On May 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On May 15, 2013, the Center sent a request for clarification to the Registrar as the WhoIs data for the disputed domain name appeared to have changed. In reply to an email communication from the Registrar, the Center requested the Registrar on May 16, 2013 to restore if possible the original registrant data as confirmed in the Registrar verification response and advised the Registrar that the Complaint would be notified using both the original and new WhoIs data. On May 16, 2013, the Registrar indicated that the change to the WhoIs data had been reversed.
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 Respondent of the Complaint, and the proceedings commenced on May 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2013. On May 17, 2013, the Center received an email communication from Respondent (discussed in more detail below). On the same date, the Center invited Complainant to submit a request for suspension of the proceeding. Complainant submitted its request on May 21, 2013, and the proceeding was subsequently suspended until June 21, 2013 to permit the parties an opportunity to settle the matter without further formal proceedings.
After receipt of a request for extension of the suspension on June 20, 2013, the proceeding was further suspended, until July 4, 2013. On July 2, 2013, Complainant requested that the proceeding be re-instituted. On July 3, 2013, the Center re-instituted the proceeding and notified the parties that the Response due date would be July 18, 2013. Respondent did not submit any formal response. Accordingly, the Center informed the parties of the commencement of the panel appointment process on July 19, 2013.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on July 31, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant owns hundreds of trademark registrations worldwide that include the LEGO mark. This Panel is not alone in finding that the LEGO mark is famous. See, e.g., LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; Juris A/S v. Reginald Hastings Jr., WIPO Case No. D2009-0680.
The disputed domain name was registered on February 28, 2013, and currently routes to a parking page.1 Before the institution of these proceedings, the disputed domain name routed to pages offering online sales of Complainant’s products as well as products of Complainant’s competitors. While the webpage in the online archives differs from the annexes to the Complaint, both evidence the use of the disputed domain name for commercial offerings to the public.
Complainant alleges that its LEGO trademark is famous and that it owns more than 1,000 domain names that include the LEGO mark.
Under the Policy, Complainant alleges that (1) the disputed domain name is confusingly similar to Complainant’s trademark, (2) that Respondent has no rights or legitimate interests in the disputed domain name, and (3) that Respondent registered and uses the disputed domain name in bad faith.
Complainant avers that it sent Respondent a cease and desist letter on April 1, 2013 requesting transfer, but Respondent never replied.2
Complainant requests transfer of the disputed domain name.
Respondent did not formally reply to Complainant’s contentions, however on May 17, 2013, Respondent sent to the Center the following message by email: “I didn't know about the trademark. On the first day that i saw the mail i just deleted the domain and give it back to my registrar. Is there anything else i can do to set things right?”
Again, on May 21, 2013, Respondent emailed the Center with a similar message, adding, among other things, “I was not warned and it happened by mistake. I returned the domainname 'Legowinkel.org' back to my registrar. It has no website on it anymore. Please tell me how to stop this case.”
As a preliminary matter, the Registrar has confirmed that the Registration Agreement is in English. As provided under the Rules, paragraph 11(a), the Panel therefore determines that these proceedings will go forward in English, without considering Complainant’s discussion of authorities to support its formal request for English-language proceedings.
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not submit a Response. E.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
The Panel agrees with Complainant that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
The Top-Level Domain (TLD) suffix may be disregarded in determining whether a disputed domain name is identical or similar to a complainant’s marks. See, e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT
(HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
Without the gTLD suffix, the disputed domain name consists of the combination of Complainant’s LEGO trademark with the added word “winkel.” Although not raised by Complainant, the word “winkel” means “shop” or “store” in the Dutch, Yiddish, and Afrikaans languages.
The Panel concludes that the addition of the descriptive term “winkel” does not negate the confusion created by Respondent’s complete inclusion of the LEGO trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.
In fact, given that Respondent used its website to sell Complainant’s well-known products under the LEGO trademark, the addition of the term “winkel” to Complainant’s trademark in the disputed domain name simply increases the confusion that Internet users would experience. Cf. ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark….”).
The Panel therefore concludes that the first element of paragraph 4(a) of the Policy is established.
The Panel also concludes that the second element of paragraph 4(a) of the Policy is fulfilled.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the disputed domain name; or
(iii) the making of a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
Complainant must establish a prima facie case that Respondent lacks rights or legitimate interests. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is established if a prima facie case is established and Respondent does not rebut that prima facie case.
Complainant alleges that Respondent is not an authorized dealer in Complainant’s trademarked goods, that Respondent has no license to use Complainant’s trademark, and that Respondent does not have any trademark rights that would permit legitimate use of the disputed domain name. In the absence of any evidence or response to the contrary, the Panel accepts as true these uncontested, reasonable allegations.
Although the Complaint does not address the possibility, it appears that Respondent is not commonly known by the disputed domain name, and the Panel so finds.
Since Respondent’s website makes direct product offerings, the Panel also agrees that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The question remains whether the use of the disputed domain name is bona fide, since the annexes to the Complaint show that Respondent used its website to sell Lego products. The website also promotes the products of other companies, including Complainant’s competitors, however. The Panel concludes therefore that the use is not bona fide. E.g., Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774.
Filing no formal response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. UDRP panels may draw inferences about bad faith registration and use in light of the circumstances, including the failure to reply to a complaint and passive holding. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel finds that Respondent registered the disputed domain name with awareness of Complainant’s mark, which had already been registered in many countries (including Benelux) and used for decades. The Panel infers that the domain name registration was made with the intention of trading on the value of Complainant’s mark, as demonstrated by the screen shots of Respondent’s website which displayed Complainant’s logos and products. The Panel finds that Respondent deliberately attempted to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with Complainant’s mark. The Panel concludes, therefore, that Respondent registered the disputed domain name in bad faith. See, e.g., Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (disputed domain name “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
The Panel also concludes that the circumstances show bad faith use of the disputed domain name by Respondent, as elaborated below.
As noted earlier, the disputed domain name was used to promote sales of products in head-to-head competition with Complainant. This is evidence of use in bad faith. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. 2004-0784 (citing Google, Inc v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088).
The Panel also finds that Respondent’s notes to the Center, to the effect that Respondent was unaware of Complainant’s trademark, are self serving and lack credibility - particularly since Respondent’s website was used to offer products under Complainant’s trademarks.3 As further indications of bad faith, Respondent chose not to respond to Complainant’s cease and desist letter and also declined to submit a Response to these proceedings, Telstra, supra.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <legowinkel.org> be transferred to Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Date: August 9, 2013
1 The Panel has undertaken limited research by visiting the web pages to which the disputed domain name routes. See paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The Panel has also viewed historical web page images at “www.archive.org”.
2 A copy of the letter is annexed to the Complaint.
3 The Panel has carried out a limited search and it appears that Respondent is also registrant of dozens of other domain names. This also supports the inference that Respondent in this instance chose to turn a blind eye to Complainant’s trademark rights. While the Panel has no details of the settlement-related communications between the parties, the necessity for Complainant to request recommencement of these proceedings also suggests that Respondent’s emails to the Center were disingenuous.