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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Anton Skorokhodov, AStore

Case No. D2018-2519

1. The Parties

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

The Respondent is Anton Skorokhodov, AStore of Gatchina, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <megalego.net> (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2018. On November 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 5, 2018, 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.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2018.

The Center appointed Mariya Koval as the sole panelist in this matter on December 4, 2018. 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, LEGO Juris A/S, is based in Denmark and is the owner of large portfolio of registrations for LEGO trademark (the “LEGO Trademark”) around the world, which is set out in Annex 6 to the Complaint, including Russian Federation trademark No. 42932, registration date December 10, 1971 (covering class 28).

The Complainant has subsidiaries and branches throughout the world, its LEGO products are sold in more than 130 countries, including Russian Federation.

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. Indeed, the LEGO trademark has been recognized as famous by most relevant rankings and publications.

The Complainant has provided evidence that previous UDRP panels have determined the LEGO Trademark as being well-known. See LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692 (“The Panel finds that the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive”); LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715 (“The Panel finds, as numerous panels have found before, that the Complainant has established that LEGO is a well-known trademark and that the trademark is distinctive and famous”); LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680 (“LEGO is a mark enjoying high reputation as construction toys popular with children”).

The Complainant has a great online presence, operating the main domain name <lego.com> and almost 5,000 domain names which contain the LEGO trademark, including <lego.net>, <legomega.com>, <legorobot.com>, <legoclub.com>.

The Complainant tried to contact the Respondent on June 27, 2018 by sending a cease and desist letter by email and requested a voluntary transfer of the Disputed Domain Name. The Complainant sent two additional reminders, however no response have been received from the Respondent.

The Disputed Domain Name was registered on March 1, 2018. As at the date of this decision the Disputed Domain Name is resolving to an active website where the page of club for children under the name “MegaLego Roboclub” is located.

5. Parties’ Contentions

A. Complainant

The Complainant has large portfolio of LEGO Trademarks in numerous jurisdictions.

The Complainant contends that the Disputed Domain Name is confusingly similar to the Complainant’s LEGO Trademark in view of the dominant part of the Disputed Domain Name comprises the name LEGO, identical to the registered LEGO Trademark registered by the Complainant not only as trademarks but also as domain names in numerous countries all over the world. At the same time, the Complainant contends that addition of the prefix “mega” to the Disputed Domain Name will not have any impact on the overall impression of the dominant part of the name, LEGO, recognizable as a world famous trademark.

The Complainant also alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name since the Respondent does not own any registered LEGO trademarks, he was not licensed or authorized by the Complainant to use the LEGO Trademark, he is not using the Disputed Domain Name in connection with a bona fide offering of goods and services.

Also, the Complainant notes that its LEGO Trademark has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world and therefore the considerable value and goodwill of the LEGO Trademark is most likely, a large contribution to this and also what made the Respondent register the Disputed Domain Name.

Furthermore, the Complainant asserts that, trying to solve the matter amicably, it tried to contact the Respondent three times with a request to voluntary transfer of the Disputed Domain Name and offered compensation for the expenses of registration and transfer fee, however, no reply was ever received.

The Complainant next argues that in view of the Disputed Domain Name is currently connected to a commercial website advertising a robotics and outdoor camp for children, thereby, it is clearly using for a commercial purpose, and consequently, the Respondent is using the Disputed Domain Name to intentionally attempt to attract Internet users to its own website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.

Finally, the Complainant contends that the Respondent was aware of the rights the Complainant has in the trademarks, and the value of said trademarks, at the point of the registration.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant provided more than enough evidences that it has the established rights in the LEGO Trademark on the base of great number of trademark registrations worldwide, almost in all jurisdictions. At the same time the Complainant’s LEGO Trademark is undisputedly a well-known mark that has been also confirmed by previous Panels, see. e.g. LEGO Juris A/S v. P N S Enterprises, WIPO Case No. D2009-0170; LEGO Juris A/S v. Admin Hostmaster, WIPO Case No. D2016-1474. It is obvious that over the years of use of the LEGO Trademark, the Complainant has made great efforts to promote its trademark and its fame throughout the world.

The Panel finds that the Disputed Domain Name incorporates the Complainant’s LEGO Trademark in its entirety, combined with the term “mega”, and the Complainant’s trademark is clearly recognizable in it. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Therefore, addition of the term “mega” to the Complainant’s LEGO Trademark does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark. The generic Top-Level-Domain (“gTLD”) “.net” is typically not taken into account for purposes of considering the first element under the Policy.

In view of foregoing, the Panel concludes that the Disputed Domain Name is confusingly similar to the LEGO Trademark in which the Complainant has rights. Consequently, the Panel considers the Complainant satisfied the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel considers the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in view of the Respondent not being commonly known by the Disputed Domain Name, it does not have any registered trademarks or trade name corresponding to the Disputed Domain Name.

The Panel finds that that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the LEGO Trademark. At the same time, the Respondent is not obviously using the Disputed Domain Name in connection with a bona fide offering of goods and services, or a legitimate, noncommercial or fair use of the Disputed Domain Name.

According to the evidences presented by the Complainant (Annex 11 to the Complaint) and a review made by the Panel, the website’s home page under the Disputed Domain Name advertises a children’s robotics club (“MegaLego Roboclub”) with use of products of the Complainant, namely LEGO construction toys and robots. Therefore, it is obvious that the Respondent has registered the Disputed Domain Name with the only intention to make them think that it is somehow connected with the Complainant, which is not the case. Therefore, the Panel concludes that the Disputed Domain Name has been registered and has been used by the Respondent with the sole intention of obtaining the benefit from the Complainant’s reputation.

Taking into consideration the global fame of the Complainant’s LEGO Trademark, it is almost impossible to even assume that the Respondent was unaware of the Complainant's brand and business at the time of registration of the Disputed Domain Name.

Furthermore, in this case, the Respondent, having a chance to invoke any circumstances for demonstration of his rights or legitimate interests in the Disputed Domain Name, did not submit any response to the cease and desist letters, sent by the Complainant, and to the Complaint and consequently did not discuss the Complainant’s prima facie case.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests to use the Disputed Domain Name. Therefore, the second element in paragraph 4(a) of the Policy has been satisfied by the Complainant.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that indicate bad faith conduct on the part of the respondent, namely:

“(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.”

Taking into consideration that the LEGO Trademark is in use more than 80 years and that the Complainant has spent huge amounts and efforts for promotion of its trademark, which is undoubtedly globally known, the Panel considers it is clear that the Respondent was well aware of the Complainant and its trademark at the time of registration of the Disputed Domain Name. Moreover the Disputed Domain Name, completely incorporating the Complainant’s LEGO Trademark, is clearly deceptive for the consumers with respect to the person producing the goods: entering the website under the Disputed Domain Name the Internet users will most likely believe that they are entering the website related to the Complainant’s business. This finding is also supported by kind of the Respondent’s activity through the commercial website under the Disputed Domain Name that is as well connected with the Complainant’s products that, in its turn, cannot be considered as bona fide offering goods and services.

The Panel therefore finds that the Respondent has obviously registered and has used the Disputed Domain Name for the only purpose of attracting the Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

Further, taking into consideration that the Complainant’s well-known LEGO Trademark is incorporated in the Disputed Domain Name in its entirety and that the Respondent has tried to divert the consumers of the Complainant’s products to its website for commercial gain, the Panel finds that the Respondent has registered and has used the Disputed Domain Name in bad faith. Addition of the term “mega” to the LEGO Trademark does not change an impression of strong association of the Disputed Domain Name with the Complainant’s trademark. Previous UDRP panels have concluded that in appropriate circumstances, bad faith is established where the Complainant’s trademark has been well-known or in wide use at the time of registering a domain name, see, e.g., CHANEL, INC. v. ESTCO TECHNOLOGY GROUP, WIPO Case No. D2000-0413.

Also, the Respondent did not respond to the Complainant’s cease and desist letter and its two reminders as an attempt to resolve the dispute without initiating of the administrative proceeding, that also evidences in these circumstances the Respondent’s bad faith registration and use of the Disputed Domain Name.

In light of the above, this Panel finds that the Complainant has satisfied 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 <megalego.net> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: December 17, 2018

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