WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Manipavitra Yarlagadda

Case No. D2014-0731

1. The Parties

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

The Respondent is Manipavitra Yarlagadda of Hyderabad, India, represented by RVR Associates and Prometheus Patent Services Pvt Ltd RVR Associates, India.

2. The Domain Name and Registrar

The disputed domain name <legoszone.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 5, 2014. On May 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 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.

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, and the proceedings commenced on May 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2014. The Response was filed with the Center on May 31, 2014.

The Center appointed Gonçalo M.C. Da Cunha Ferreira as the sole panelist in this matter on June 6, 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.

4. Factual Background

The Complainant LEGO Juris A/S is the owner of the leading global manufacturer of toys under the trade mark LEGO and also of all other trademarks used in connection with it.

Today, LEGO has been registered as trademark in numerous countries all over the world, including in India, where the Respondent is located.

The Complainant also owns more than 2,400 domain names containing the term "lego", including the country code Top-Level domain (ccTLD) for India ".in" and maintains an extensive web site under the domain name <lego.com>, its official website.

The trademark LEGO is globally recognized and the Complainant has received significant acknowledgements. For instance, in 2000, Fortune magazine and the British Association of Toy Retailers named LEGO the Toy of the Century, and in 2013 the Reputation Institute nominated the LEGO Group as number 10 on their list of "the World's Most Reputable Companies", and in 2014, the list of the official top 500 Superbrands for 2014, provided by Superbrands UK, showed LEGO as winner in the category "Child Products - Toys and Education".

The Complainant offers its own "Lego Education Services" through various authorized distributors.

The Respondent registered the disputed domain name on February 21, 2014. The disputed domain name is currently connected to a website offering "Lego Birthday Parties", in addition to "DayCare" and educational services.

5. Parties' Contentions

A. Complainant

The Complainant submits that the dominant part of the domain name <legoszone.com> comprises the term "lego", which is identical to the registered trademark LEGO.

The Complainant submits it holds exclusive rights of the trademark LEGO and only the Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in India - where the Respondent is located - and elsewhere.

Also, the Complainant argues it is the strict policy of the Complainant that all domain names containing the word "lego" should be owned by the Complainant.

The Complainant submits that the disputed domain name is confusingly similar to the Complainant's world famous trademark LEGO. The Respondent uses the trademark LEGO followed by the letter "s" and the word "zone".

The Complainant argues that the addition of the suffixes "s" and "zone" will not have any impact on the overall impression of the dominant part of the dispute domain name, "lego", instantly recognizable as a world famous trademark and also that the addition of the Top-Level Domain ".com" is irrelevant in terms of differentiating the disputed domain name.

The Complainant submits that with reference to the reputation of the trademark LEGO there is a considerable risk that the trade public will perceive the disputed domain name either as a domain name owned by the Complainant, or that there is some kind of commercial relation with the Complainant.

The Complainant claims that the Respondent's interests cannot have been legitimate because the Respondent cannot claim to have been using LEGO without being aware of the Complainant's rights to the mark. It also claims that the Respondent was motivated by the trademark fame to register the domain name.

The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name nor has it found any evidence that the Respondent uses the name LEGO as a company name or has any other legal rights in the name.

The Complainant states that it has not given the Respondent any license or authorization of any other kind to use the trademark LEGO.

The Complainant claims that the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.

The Complainant submits that the Respondent knew of the Complainant's legal rights in the LEGO mark at the time of registering the disputed domain name, since LEGO is not only a world famous trademark but has also been growing considerably in Asia during the past years.

The Complainant argues that the disputed domain name is currently connected to a website offering "Lego Birthday Parties", in addition to "DayCare" and educational services, and thereby, has a clear commercial purpose, and therefore the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source.

The Complainant first tried to contact the Respondent on March 21, 2014 through a cease and desist letter sent by e-mail requesting a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). Two additional reminders were sent on March 31 and April 8, 2014.

B. Respondent

The Respondent firstly contacted the Complainant, by e-mail, January 13, 2014, with the intent of setting up "a centre where people can come and play with lego toys" and the Complainant, after identifying the most suitable contact to deal with the request, put the Respondent in contact with the sole authorized partner for LEGO Education in South India, LEGO Edutech.

The Respondent states that after contacting the Complainant and presenting its will of setting up an educational center with LEGO in India, it then inquired with Edutech India Pvt Ltd and FUNSKOOL INDIA LIMITED, who are the authorized partners of the Complainant in India.

The Respondent purchased LEGO learning products from Edutech and toys from FUNSKOOL, providing the respective invoices.

The Respondent argues that "apart from taking orders for sale of products and processing the same, there was no response to Cure Poly Clinic's queries with respect to setting up of an educational centre with LEGO Education in India".

Meanwhile and therefore, the Respondent set up an educational center and registered the disputed domain name <legoszone.com>.

The Respondent strongly reinforced its interest in partnering with the Complainant with respect to its educational center, requesting more than once a contact with whom it could address this issue.

On May 19, 2014, the Respondent replied to the Complainant's cease and desist letter, justifying that the delay on the response was due to the Respondent not being "aware of your [the Complainant's] mails since they were marked as spam mail."

Being aware of the communication from the Center that a complaint had been filed by the Complainant with respect to the disputed domain name, the Respondent stated that before taking a decision with regards to the domain name <legoszone.com> it would like to "get in contact in LEGO" due to its interest "in partnering with LEGO Juris A/S with respect to its educational centre".

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights". Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has "no rights or legitimate interests in respect of the domain name". Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the "domain name has been registered and is being used in bad faith". Policy, paragraph 4(a)(iii).

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant's well-known trademark LEGO with the addition of the letter "s" and the generic term "zone".

It has been clearly held by previous UDRP panels that the addition of a generic term does not limit the risk of confusion between a complainant's trademark and a disputed domain name.

As noted by the Complainant, in Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 it was stated that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes.

As previously mentioned in The Sonae SGPS, S.A. v. Luso Digital - Web Hosting Services,WIPO Case No. D2008-1907 the addition of the suffix ".com" is for registration purposes only, being a technical requirement of the registration of a domain name, and does not serve as a distinguishing feature for purposes of paragraph 4(a)(i) of the Policy.

Accordingly, the requirement of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Following Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666 "in order for a complainant to prove that a respondent has no rights or legitimate interests in the Disputed Domain Name, UDRP case law has consistently held that it is sufficient for a complainant to prove a prima facie case (see amongst others, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the panel".

The fact that the Respondent has interests in the disputed domain name due to it wanting the Complainant to concede an authorization to officially represent the Complainant in India, does not mean per se that this interest is legitimate, and even less that the Respondent has any rights to the disputed domain name.

The Complainant has clearly stated that it has not given any license or permission to the Respondent. Furthermore, the use of the disputed domain name, as further discussed below, cannot give rise to any rights or legitimate interests on the part of the Respondent as an unauthorized reseller or distributor. Therefore, since the Complainant has already proved that it is the owner of the well-known trademark LEGO, and the Respondent cannot claim any rights or legitimate interests either as an unauthorized reseller or distributor, it is clear for the Panel that the Respondent does not have any rights or legitimate interests in the disputed domain name.

The Panelist finds that the second element of the Policy is satisfied.

C. Registered and Used in Bad Faith

The fact that the Respondent contacted the Complainant stating its interest "in partnering with LEGO Juris A/S with respect to its educational centre" means the Respondent is clearly aware of the trademark LEGO being an undoubtedly well-known trademark.

Consequently, when registering the disputed domain name, the Respondent had to be aware of the fact that the Complainant holds exclusive rights of the trademark LEGO in India - where the Respondent is located - and elsewhere.

As mentioned by the Complainant, in a similar case, regarding a website offering "lego learning services", namely LEGO Juris A/S v. Ningbo LEGO Culture Communication Co., Ltd., WIPO Case No. D2013-1208, the panel stated: "Respondent's use of the LEGO trademark in a website closely resembling Complainant's LEGO Education website (in the absence of authorization to do so by Complainant) thus establishes Respondent's bad faith in the use of the disputed domain name." The Panel finds that the Respondent's use of the disputed domain name for a website offering "Lego Birthday Parties", in addition to "DayCare" and educational services, falls within the scope of paragraph 4(b)(iv) of the Policy.

Having regard to all the circumstances, the Panel finds that there is evidence of bad faith on the part of the Respondent.

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 <legoszone.com> be transferred to the Complainant.

Gonçalo M.C. Da Cunha Ferreira
Sole Panelist
Date: June 20, 2014