WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Oleg Vasilyev

Case No. D2020-1694

1. The Parties

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

The Respondent is Oleg Vasilyev, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <lego-lepin.com> (the “Disputed Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2020. On June 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 30, 2020, 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 Registrar confirmed that the language of the Registration Agreement for the Disputed Domain Name is Russian. On July 13, 2020, the Center sent an email communication in both English and in Russian to the Parties regarding the language of the proceeding. On July 14, 2020, the Complainant confirmed the language of the proceeding to be English. The Respondent did not submit any comments on the language of the proceeding.

The Center verified that the Complaint 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 July 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2020.

The Center appointed Mariya Koval as the sole panelist in this matter on August 25, 2020. 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 a part of the Lego Group, which was founded in 1932 and is a company based in Billund, Denmark. The Complainant is one of the world leaders among toy manufacturers, namely it manufactures the toys, consisting mostly of interlocking plastic bricks. The Complainant has subsidiaries and branches throughout the world, its LEGO products are sold in more than 130 countries, including Russian Federation. The Lego Group has also built several amusement parks around the world, each known as the Legoland Resorts, and operates numerous retail stores.

The Complainant has provided evidence that previous UDRP panels have determined the LEGO trademark (the “LEGO Trademark”) as being well-known or famous. 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.”

The Complainant is the owner of numerous LEGO Trademark registrations around the world, among which are:

- International Registration No. 869258, registered on November 11, 2005, in respect of goods and services in classes 9, 16, 25, 28, and 41;

- Russian Federation Trademark No. 42932, registration date December 10, 1971, in respect of goods in class 28;

- Russian Federation Trademark No. 474693, registration date November 14, 2012, in respect of goods and services in classes 9, 21, 25, 35, and 41.

The Complainant has also a significant online presence, operating the main domain name <lego.com>, and is the owner of close to 5,000 domain names containing the term “lego” (Annex 5 to the Complaint). It is the strict policy of the Complainant that all domain names containing the term should be owned by the Complainant.

The Disputed Domain Name was registered on February 26, 2020. As at the date of this decision the Disputed Domain Name does note resolve to an active website and contains an indication “The domain [name] is registered and parked in REG.RU” (“Домен зарегистрирован и припаркован в REG.RU”).

5. Parties’ Contentions

A. Complainant

The Complainant contends that its LEGO Trademark is among the well-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO Trademark on all products, packaging, displays, advertising, and promotional materials. Moreover, the LEGO Trademark is a brand No. 1 in many rankings (Annex 6.1, Annex 6.2, Annex 6.3 to the Complaint).

The Complainant also 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 comprising the term LEGO, identical to the 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 in spite of the Disputed Domain Name being a combination of its LEGO Trademark and the third party LEPIN trademark, separated by a hyphen, it does not preclude recognizability of the Complainant’s LEGO Trademark in the Disputed Domain Name..

The Complainant also alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the following:

- the Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Disputed Domain Name;

- no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use its LEGO Trademark;

- the Respondent is using the Disputed Domain Name to redirect Internet users to a website that resolves to a parked page featuring the Registrar’s services. Therefore, the Respondent has failed to make use of the Disputed Domain Name’s website and has not demonstrated any attempt to make legitimate use of the Disputed Domain Name and website, which evinces a lack of rights or legitimate interests in the Disputed Domain Name;

- as no evidence has been found that the Respondent is using the name LEGO as a company name or has any other legal rights in the name, it is quite clear that the Respondent is simply trying to benefit from the Complainant’s world famous Trademark.

The Complainant further asserts that the Respondent registered and is using the Disputed Domain Name in bad faith since the Respondent registered the Disputed Domain Name on February 27, 2020, that is subsequent to when the Complainant registered the LEGO Trademark in Russian Federation where the Respondent allegedly resides, and elsewhere, by decades. The Complainant notices that it is quite obvious that it is the fame of the LEGO Trademark that has motivated the Respondent to register the Disputed Domain Name.

The Complainant also alleges that in spite of it first tried to contact the Respondent on March 19, 2020, through a cease-and-desist letter sent by email (Annex 9 to the Complaint) in which the Complainant advised the Respondent about the unauthorized use of the LEGO Trademark within the Disputed Domain Name and requested a voluntary transfer of the same, having offered a compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses), the Complainant did not receive any reply.

The Complainant further contends that in view of the Disputed Domain Name incorporating the Complainant’s LEGO Trademark in its entirety and including a hyphen and third party LEPIN trademark, which is a competitor of the Complainant, there is no plausible good-faith reason or logic for the Respondent to have registered the Disputed Domain Name. Rather it is indicative of an intention to hold the Disputed Domain Name for some future active use in a way, which would be competitive with or otherwise detrimental to the Complainant.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the complainant to succeed must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

6.1. Preliminary Issue: Language of Proceedings

According to paragraph 11 of the Rules 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.

The Registrar confirmed that the language of the registration agreement for the Disputed Domain Name is Russian.

The Complainant filed a request for English to be the language of proceeding, submitting the following arguments:

- the Complainant is unable to communicate in Russian and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter;

- the Disputed Domain Name is comprised of Latin characters;

- the term “lego”, which is the dominant part of the Disputed Domain Name, does not carry any specific meaning in the Russian language;

- the Complainant previously sent a cease-and-desist letter to the Respondent and the Respondent had ample time and opportunity to respond to such letter and request that communications continue in Russian. The Respondent neither issued such a request nor responded to the Complainant in any matter whatsoever. To allow the Respondent to dictate the course of this matter and further burden the Complainant at this juncture would contravene the spirit of the UDRP and disadvantage the Complainant;

- in light of the Respondent’s use of the Disputed Domain Name and the Respondent’s decision to register a domain name that misappropriates the famous LEGO Trademark and brand, it would unduly burden the Complainant to have to arrange and pay for translation where the Respondent has demonstrated behavior that disrupts the Complainant’s business and has already required the Complainant to devote significant time and resources to addressing this instance of abuse.

The Complainant is a Danish company and the Complainant’s representative is a Swedish company. Accordingly, neither the Complainant nor its representative are able to understand and to communicate in Russian. Forcing the Complainant to translate the Complaint and annexes thereto, would result in unfair additional expenses for the Complainant and would delay this UDRP proceeding.

Moreover, the Respondent was duly informed about this proceeding by the Center’s communications in English and Russian, but he did not make any submission with respect to the language of proceeding.

The Disputed Domain Name and generic Top-Level-Domain (“gTLD”), both are in Latin characters and not Cyrillic characters.

Paragraph 10(c) of the Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition.

Having considered all circumstances of this case, the Panel concludes under paragraph 11(a) of the Rules that English shall be the language of the proceeding.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Complainant has properly asserted its rights in the LEGO Trademark due to the long use and number of registrations globally, including in the Russian Federation.

The Disputed Domain Name reproduces the LEGO Trademark in its entirety in combination with the hyphen, the LEPIN third-party mark and the gTLD “.com”. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. Also in accordance with section 1.12 of the WIPO Overview 3.0, where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks (i.e., <mark1+mark2.tld>), is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element. The Panel finds that in view of the fact that in this case the Disputed Domain Name incorporates the entirety of the Complainant’s well-known LEGO Trademark, the addition of the LEPIN trademark does not in any case prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark.

Also, the use of a hyphen in the Disputed Domain Name is irrelevant in a finding of confusing similarity, see e.g. Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630 (“It is well established in decisions under the UDRP that the presence or absence of characters (e.g., hyphens, dots) in a domain name […] are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name”).

It is also well established that the gTLD, in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McReadyy, WIPO Case No. D2000-0429.

In light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s LEGO Trademark. Therefore paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Complainant has used its LEGO Trademark for more than 80 years, which is long before the Respondent registered the Disputed Domain Name in 2020. The Complainant’s LEGO Trademark is well-known throughout the world.

The Panel considers that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. There is no evidence that the Respondent appears to own any LEGO trademark, nor is the Respondent commonly known by the Disputed Domain Name. Furthermore, the Panel concludes that in view of the global fame of the LEGO Trademark it is highly unlikely that anybody, especially a natural person, could legitimately adopt the Disputed Domain Name for commercial use other than for an intent to create confusion with the Complainant.

Also, taking into consideration the reputation of the Complainant’s LEGO Trademark, it is impossible to assume that the Respondent was unaware of the Complainant’s brand and business at the time of registration of the Disputed Domain Name.

The Panel also finds that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the LEGO Trademark. Moreover, the website under the Disputed Domain Name is parked from the registration date, which gives no grounds for considering the use of the Disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.

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 letter, sent by the Complainant, and to the Complaint and consequently did not rebut the Complainant’s prima facie case.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in 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

Taking into consideration that the LEGO Trademark has been 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, incorporating the Complainant’s LEGO Trademark in its entirety, is clearly deceptive for the Internet users 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.

The website under the Disputed Domain Name is inactive since its registration date, which also is a factor indicating bad faith. According to section 3.3 of the WIPO Overview 3.0, from the inception of the UDRP, panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

The Panel therefore finds that, taking into consideration that the Complainant’s well-known LEGO Trademark is incorporated in the Disputed Domain Name in its entirety, 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.

Addition of the third-party mark 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. EstcoEnterprises Ltd., Estco Technology Group, WIPO Case No. D2000-0413.

Also, the Respondent did not respond to the Complainant’s cease-and-desist letter 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.

Finally, the Respondent, not participating in these proceedings, has failed to indicate any facts and/or evidence, which would show the good faith registration and use of the Disputed Domain Name.

In all the circumstances the Panel is satisfied that the Complainant has proved both the bad faith registration and the bad faith use requirements of 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 <lego-lepin.com> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: September 8, 2020