WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Tom de Vries, TDV Holding B.V.

Case No. D2014-0370

1. The Parties

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

The Respondent is Tom de Vries, TDV Holding B.V. of Kaag, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <legoplein.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 11, 2014. On March 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2014, 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. On March 13, 2014, the Center sent an email communication to the Parties in both Dutch and English regarding the language of the proceedings. On March 14, 2014, the Complainant requested that English be the language of the proceedings. The Respondent did not submit any comments with regard to the language of the proceedings.

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 in both Dutch and English, and the proceedings commenced on March 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 10, 2014. On the same date, the Respondent sent an email communication to the Center indicating that it had already sent a response by post. The Center acknowledged receipt of the Respondent's email communication and informed the Respondent that all submissions and communications to the Center should be submitted by email, and that the panel would decide in its sole discretion whether to consider a response (if submitted later) in deciding the case. The Center did not receive any communication by post or any further email communication from the Respondent.

The Center appointed Benoit van Asbroeck as the sole panelist in this matter on April 15, 2014. 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.

The Center received from the Registrar on March 12, 2014, information according to which the language of the registration agreement for the disputed domain name was Dutch. The Center notified the Parties on March 13, 2014. This Panel determines that the language of the proceeding will be English, as discussed herein.

4. Factual Background

The Complainant is Lego Juris A/S, based in Denmark and owner of the trademark LEGO for construction toys and other LEGO branded products.

The Complainant submitted evidence that it is the owner of numerous national, European and international trademarks for the sign LEGO, both in words and figurative forms.

The Complainant commenced use of the LEGO trademark in the United States of America ("U.S.") in 1953 to identify construction toys made and sold by the Complainant and its licensees.

The Complainant and its subsidiaries and branches are selling LEGO products in more than 130 countries, including in the United States, as well as in the Benelux, where the Respondent is located.

The Complainant is also the owner of more than 2,400 domain names containing the term "lego". The Complainant maintains an extensive website under the domain name <lego.com>.

The LEGO trademark and brand have been recognized as being well known.

The Respondent registered the disputed domain name <legoplein.com> on July 15, 2013.

5. Parties' Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is and has been for many years the right holder of the mark LEGO (the "Trademark") in numerous countries worldwide. The Trademark is used for construction toys and other LEGO branded products.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademark LEGO as it comprises the word "lego".

The Complainant submits that the top-level suffix ".com" in the disputed domain name has no impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant when determining the confusing similarity.

The Complainant further contends that the addition of the suffix "plein" will have no impact on the overall impression of the dominant part of the disputed domain name, namely "lego". The Complainant concludes, on the basis of previous UDRP decisions that pairing well-known trademarks with a generic suffix or prefix established confusing similarity.

Finally, the Complainant submits that, given the reputation of the Trademark, there is a considerable risk that the trade public will perceive the disputed domain name as being owned by the Complainant or that there is some kind of commercial relationship with the Complainant. The Complainant therefore contends that such association is likely to create confusion with the Complainant's Trademark.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant argues that the Respondent has no trademark rights or trade names corresponding to the disputed domain name and that it is not using LEGO in any way that would give it any legitimate rights.

The Complainant has trademark rights for LEGO and no license or authorization was granted to the Respondent to use the trademark in the dispute domain name or in any other manner.

Further, the Complainant contends that the Respondent was aware of the Complainant's rights in the Trademark at the time of registration and that the fame of the Trademark motivated the Respondent to register the disputed domain name. By incorporating the famous Trademark, the Respondent's interests could therefore not have been legitimate.

The Complainant submits that the Respondent is not using the dispute domain name in connection with a bona fide offering of goods and services and that the disputed domain name was registered and used in order to mislead Internet users and thus generate traffic and income through an online shop where the Respondent sells products of the Complainant.

Finally, the Complainant contends that the Oki Data test, should it be applied, is not fulfilled given that, on the one hand, the Respondent does not disclose a relationship between the Respondent and the Complainant and, on the other hand, the Respondent does not use the site connected to the disputed domain name to only sell the trademarked goods given that it provides links directing to other commercial sites.

The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.

Firstly, the Complainant submits that registration in bad faith is established on the basis of the fact that the Complainant's trademark has a strong reputation and is reputed throughout the world in the field of toys and that the awareness of the Trademark is considered to be significant and substantial.

The Complainant further indicates that the Respondent has stated, in a response to a cease-and-desist letter, that it is using the disputed domain name to sell LEGO products, even though the shop was not yet opened. The Complainant provides evidence that the site at the disputed domain name is currently containing LEGO products for sale. The Complainant concludes that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its site.

Secondly, the Complainant puts forward several elements showing use in bad faith of the disputed domain name by the Respondent, and in particular the fact that (i) the Respondent uses the LEGO and DUPLO logotypes on the site at the disputed domain name, which would prove that the Respondent was aware of the Trademark and registered it to generate more traffic to its own business and to mislead visitors; and (ii) the Respondent has a pattern of abusive registrations, including with famous trademarks.

B. Respondent

The Respondent did not formally reply to the Complainant's contentions.

6. Discussion and Findings

A. Language of the proceeding

In accordance with the Rules, paragraph 11(a), "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".

In the notification of March 13, 2014, the Center requested the Complainant to provide, at least one of the following:

- satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or

- the Complaint translated into Dutch; or

- a request for English to be the language of the administrative proceedings.

The Center also notified the Parties that the power to decide the language of the proceedings lies with the panel to be appointed.

By letter dated March 15, 2014, the Complainant requested for English to be the language of the proceeding. In support of its request, the Complainant evidences that the language in the pre-Complaint correspondence between the Parties has been English.

In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.3; Biotechnology and Biological Sciences Research Council of Swindon v. Kim Jung Hak, WIPO Case No. D2009-1583).

In the present dispute, this Panel finds that there is sufficient evidence to enable the Panel to conclude that the Respondent has the proficiency in the English language to understand the contents of the Complaint and the annexes.

In light of the foregoing, this Panel concludes that it will accept the Complaint as filed in English and issue a decision in English.

B. Substantive Elements of the Policy

Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".

Notwithstanding a respondent's default, the complainant must nevertheless still establish each of the three elements required by paragraph 4(a) of the Policy (see WIPO Overview 2.0, paragraph 2.1 and paragraph 4.6, and the relevant decisions cited therein). Nonetheless, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and, in the absence of exceptional circumstances, draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

As a result, asserted facts that are not unreasonable will be taken as true by this Panel.

Finally, in accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, this Panel will examine whether each the following three elements are present:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the 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.

Consequently, this Panel shall further analyse the eventual concurrence of these three grounds in the present case.

C. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to LEGO since well before the disputed domain name was registered.

For the sake of completeness, this Panel further analyzed the Complainant's contention with regard to the notoriety of the LEGO trademark. This Panel believes that in order to determine whether the Trademark should be considered as being well known, various factual elements shall be taken into account, including the degree of knowledge and recognition of the mark in the relevant sector; the duration, extent and geographical area of any use and promotion of the mark; and the enforcement efforts and success of rights in the mark. This Panel finds that the trademark LEGO shall be considered, at least for the purposes of this administrative procedure, as a well-known trademark. Such conclusion is supported by previous UDRP decisions where Lego Juris A/S was the complainant.

Also, the Complainant has sufficiently demonstrated and evidenced that it has a lengthy use of its Trademarks for its commercial activities, and in particular to offer toys.

Secondly, the disputed domain name fully incorporates the Complainant's distinctive and widely known LEGO trademark in which the Complainant has exclusive rights. This Panel finds, similarly to other UDRP panels, that it is established that where the domain name incorporates a complainant's registered trademark, as the dominant element, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy.

Thirdly, this Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (gTLD) ".com" to the disputed domain name does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Fourthly, this Panel finds on the basis of previous UDRP decisions that the mere addition of generic terms is, in general, insufficient to make a disputed domain name distinctive such that it is not confusingly similar to the complainant's registered trademark. (See Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488; Moncler S.r.l. v. xie guoren, WIPO Case No. D2010-2161; Allianz SE v. Antonio Porchia, WIPO Case No. D2010-0694; Sanofi-Aventis, Aventis Inc., Aventisub II Inc. v. Yur Bar, WIPO Case No. D2010-0663). Consequently, this Panel finds that the mere addition of the descriptive or generic term "plein", which is the Dutch word for "square", does not distinguish the disputed domain name from the Trademark, nor dispel the risk of confusing similarity.

This Panel finds in the present case that the disputed domain name incorporates the Complainant's

well-known trademark LEGO in its entirety and only with the addition of the generic term "plein", and ending with the suffix ".com".

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant's LEGO trademark.

D. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent's rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

"When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".

This Panel finds in light of the Complainant's asserted facts, that no license, permission or authorization of any kind to use the Complainant's trademark has been granted to the Respondent. Thus, the Respondent has no own rights in LEGO.

Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a right or legitimate interest in the domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent's relationship with the trademark owner; and

- the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

This Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorised reseller, such as it is the case in this proceeding (National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., WIPO Case No. D2007-1524).

Examination of the website operating under the disputed domain name, as it appeared before the Complainant initiated this proceeding and as properly evidenced by the Complainant, and as it appears following this Panel's independent researches, shows that it does not fulfil the Oki Data criteria. Indeed, the Respondent does not disclose a relationship it would have with the Complainant and does not use the site connected to the disputed domain name to only sell the trademarked goods given that it provides links directing to other commercial sites.

Moreover, this Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has any registered trademark or trade name corresponding to the dispute domain name, nor has it been commonly known by the disputed domain name.

This Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. In fact, this Panel has considered the Complainant's assertions and evidence with regard to the Respondent's registration of the disputed domain name, and finds after reviewing the website as evidenced by the Complainant, and as it appears following this Panel's independent researches, that the Respondent had or should have had full knowledge of the Trademark and that its only intention was to deprive the Complainant from a strategic domain name, mislead Internet users to one or more other commercial site and thus generate traffic and income by free riding on the good reputation of the Complainant and its Trademark.

For all the foregoing reasons, this Panel finds the Respondent's use of the disputed domain name cannot be considered to be in accordance with a bona fide offering of goods or services. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

E. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

"For the purposes of Paragraph 4(a)(iii), 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 gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location".

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of "registration and use of a domain name in bad faith".

This Panel has considered the Complainant's assertions and evidence with regard to the Respondent's registration of the disputed domain name. In this respect, this Panel believes, after reviewing the website and its content as evidenced by the Complainant, and as it appears following this Panel's independent researches, that the Respondent must have known and was aware of the rights in the prior well-known trademark LEGO and the associated products at the time of the registration of the disputed domain name.

Such conclusion is further evidenced by the fact that the Respondent uses the LEGO and DUPLO logotypes on the site at the disputed domain name and sells products of the Complainant.

Furthermore, this Panel has considered the Complainant's assertions and evidence with regard to the Respondent's use of the disputed domain name.

In this respect, this Panel believes after reviewing the site at the disputed domain name and its content as evidenced by the Complainant that the Respondent registered and uses the disputed domain name to sell products of the Complainant and to attract, for commercial gain, Internet users to the site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its site.

Consequently, this Panel finds that the Respondent intentionally registered and used the disputed domain name for commercial gain and that the Respondent's actual use of the disputed domain name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behaviour is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.

Also, this Panel notes that the Complainant has submitted evidence from which it appears that the Respondent has registered various other domain names including well-known third-party trademarks such as of the Complainant.

In light of the foregoing, this Panel finds that the disputed domain name was registered and used by the Respondent in bad faith under the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <legoplein.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: April 28, 2014