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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Nihat Senol, Prodesign Mimarlik Insaat / Domain Admin Domain Admin, whoisprotection biz

Case No. D2017-0696

1. The Parties

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

The Respondent is Nihat Senol, Prodesign Mimarlik Insaat of Antalya, Turkey / Domain Admin Domain Admin, whoisprotection biz of Istanbul, Turkey, self-represented.

2. The Domain Name and Registrar

The disputed domain name <legotugla.com> is registered with FBS Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2017. On April 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint and stating that the registration agreement of the disputed domain name is in Turkish. The Center sent an email communication to the Complainant on April 13, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 13, 2017.

Pursuant to the Complaint submitted in English and the registrar verification dated April 10, 2017 stating that Turkish is the language of the registration agreement of the disputed domain name, on April 13, 2017, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On April 13, 2017, the Complainant submitted its request for English to be the language of the proceeding, by referring to the amended Complaint. On April 15, 2017, the Respondent stated that it is able to communicate in English but did not submit any request regarding the language of the proceeding.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2017. The Respondent sent informal email communications to the Center on April 15, 2017 and April 18, 2017. The Response was filed with the Center on April 24, 2017 and it was confirmed by the Respondent that it should be regarded as its final Response.

The Center appointed Kaya Köklü as the sole panelist in this matter on April 27, 2017. 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.

4. Factual Background

The Complainant is the owner of the famous LEGO trademark commonly known in relation to construction toys. The Complainant has subsidiaries and branches throughout the world and its products are sold in more than 130 countries.

The LEGO trademark is registered in a large number of jurisdictions worldwide, e.g., in the European Union (registration no. 000039800 of 1998) and in Turkey (registration no. 119057 of 1990).

The Complainant additionally owns more than 1,000 domain names comprising the trademark LEGO. The Complainant operates its main website at <lego.com>.

The disputed domain name was created on December 28, 2016.

The Respondent is composed of a domain name privacy registration service and an individual from Turkey, who acts under a company name, which is apparently active in the construction sector.

On the website linked to the disputed domain name, the Respondent offers stackable bricks, which are apparently dedicated to be used for construction purposes.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant believes that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark.

The Complainant argues that the main difference between the disputed domain name and the Complainant’s trademark is that the disputed domain name additionally comprises the descriptive term “tuğla”, which means “brick” in the Turkish language. The Complainant is of the opinion that the addition of this descriptive term does not negate the confusing similarity with its LEGO trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its LEGO trademark. The Complainant further alleges that the Respondent has never used and does not intend to use the LEGO trademark in connection with a bona fide offering of goods and services.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly believes that due to the fame of the LEGO trademark, the Respondent was aware of the LEGO trademark when it registered the disputed domain name. Furthermore, the Complainant is of the opinion that the Respondent tries to gain illegitimate benefits by freeriding on the goodwill of the LEGO trademark and misleadingly diverting consumers.

B. Respondent

In its various email communications to the Center and its Response of April 24, 2017, the Respondent mainly argues that it is the legitimate owner of the disputed domain name. It believes that the Complainant, which is mainly active in the toy sector, cannot claim exclusivity for the use of the LEGO trademark also within the construction sector. It further argues that there are many other registered domain names comprising the LEGO trademark, which are apparently not authorized by the Complainant. Finally, the Respondent argues that using a disclaimer on the website linked to the disputed domain name should suffice to avoid the risk of confusion among Internet users.

6. Discussion and Findings

6.1. Language of the Proceeding

The Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the language of the registration agreement of the disputed domain name is the Turkish language, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a costly and time-consuming Turkish translation of the Complaint, while the Respondent did not raise objections to the Complainant’s request for English to be the language of the proceeding and indicated that it is able to communicate in English. By submitting all communications to the Center in the English language, the Panel even believes that the Respondent provided an implied consent to conduct the proceedings in English. In any case, the Panel is convinced that the Respondent will not be prejudiced by a decision being rendered in the English language as the Respondent explicitly confirmed and demonstrated of being able to read and write in English.

6.2. Substantive Issues

According to paragraphs 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to the trademarks 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.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the LEGO trademark of the Complainant.

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant is the owner of a large number of word and figurative trademarks comprising the mark LEGO in many jurisdictions worldwide, including in Turkey, for many decades. Due to the undisputable worldwide recognition of the Complainant’s trademark, also in Turkey, the Panel believes that LEGO is a well-known trademark.

Although not identical, the disputed domain name fully incorporates the Complainant’s LEGO trademark.

The disputed domain name differs from the LEGO trademark only by the addition of the generic term “tuğla”, which means “brick” in the Turkish language. In the Panel’s view, the addition of such a dictionary term does not negate the confusing similarity between the Complainant’s trademark LEGO and the disputed domain name. Due to the fame of the LEGO trademark, the Panel is of the opinion that the disputed domain name is even likely to confuse Internet users in their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s LEGO trademark in the disputed domain name.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).

The Respondent has particularly failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or provide any other evidence of a right or legitimate interest in the disputed domain name. In view of the Panel, the Respondent was aware of the Complainant’s famous LEGO trademark long before registering and using the disputed domain name. The Panel rather believes that the Respondent deliberately has chosen the disputed domain name in order to cause confusion with the Complainant’s trademark and to gain illegitimate benefits by freeriding on the Complainant’s goodwill and reputation. The Respondent’s allegation that the construction products offered under the website linked to the disputed domain name are substantially different than the toy bricks offered by the Complainant does not affect the Panel’s assessment in this regard, particularly as famous trademarks like LEGO gain comprehensive protection, which goes even beyond the goods and services mentioned in the respective trademark registration.

The Respondent’s allegation that there are also other third parties using the LEGO mark within their domain names apparently without authorization by the Complainant is irrelevant for the present assessment as such unauthorized use by third parties does, in view of the Panel, not give the Respondent a right to use the Complainant’s LEGO trademark himself.

In fact, the Panel finds it hard to conceive of any use of the disputed domain name by the Respondent, which would qualify as a legitimate use.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith, particularly for the following reasons.

The Panel finds that the Respondent must have been well aware of the Complainant’s trademark when it registered the disputed domain name on December 28, 2016. At the date of registration of the disputed domain name, the Complainant’s LEGO trademark was already registered and famous worldwide, including in Turkey.

Even if the Respondent nominally targets a different group of customers than the Complainant, it is obvious to the Panel that the Respondent intentionally attempted to freeride on the goodwill of the Complainant’s famous LEGO trademark and, hence, to create a likelihood of confusion among customers.

The Respondent’s disclaimer on the website linked to the disputed domain name, which has been obviously implemented after the filing of the Complaint, does, in view of the Panel, not change its finding of bad faith use.

All in all, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of 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 <legotugla.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: May 11, 2017

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