The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is M. Moench of Eindhoven, the Netherlands.
2. The Domain Name
The disputed domain name <legoracers.nl> (the “Domain Name”) is registered with SIDN.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2009. On September 8, 2009, the Center transmitted by email to SIDN a request for registration verification in connection with the Domain Name. On September 9, 2009, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”) as then in force.
On September 14, 2009, the Complainant requested the Center to suspend proceedings until October 15, 2009 as the Respondent had notified the Complainant that he was willing to transfer the Domain Name to the Complainant. On September 14, 2009 the Center notified the Parties that proceedings were suspended until October 14, 2009. On October 14, 2009, the Complainant requested the Center to re-institute the proceedings.
On October 14, 2009, the Center sent a notification to the Parties stating that the Complaint had been submitted in the English language and therefore, in accordance with Article 16 of the Regulations, requesting the Complainant to provide at least one of the following by October 19, 2009:
1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) the Complaint translated into Dutch; or
3) a request for English to be the language of the proceedings, including arguments and supporting material.
On October 14, 2009, the Complainant responded to the Center by requesting English to be the language of the proceedings, as the Respondent understands the English language, the registrar is established in Germany, and the website under the Domain Name is not in Dutch, for which reason it would be cumbersome and to the Complainant's disadvantage if it had to translate the Complaint into Dutch. Therefore, the Complainant requested the proceedings to take place in English.
In accordance with the Regulations, Articles 5.1 and 15.5, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 22, 2009. In accordance with the Regulations, Article 7.1, the due date for Response in either English or Dutch was November 11, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 12, 2009.
The Center appointed Alfred Meijboom as the panelist in this matter on November 12, 2009. The Panelist finds that the Panelist was properly appointed. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, Article 8.2.
4. Factual Background
The Complainant holds many LEGO trademarks all around the world, including Benelux word mark LEGO (No. 54491), registered since 1971, and the Community word mark LEGO (No. 39800), registered since 1998.
The Domain Name was registered on August 25, 2004. The Domain Name leads to a website displaying a list of so-called sponsored links.
5. Parties' Contentions
A. Complainant
The Complainant contends that the LEGO trademark is among the best-known trademarks in the world, protected under Article 6bis of the Paris Convention and Article 16.2 and 16.3 of the TRIPS Agreement.
The Complainant puts forward that the dominant part of the Domain Name <legoracers.nl> is LEGO, which is identical to the Complainant's famous mark. According to the Complainant the addition of the generic term “racers”, nor the addition of the country code top-level domain “.nl” does detract from the overall impression, which is confusingly similar to the Complainant's LEGO trademark.
Furthermore, the Complainant has not licensed or otherwise authorized the Respondent to use the LEGO trademark. The Complainant furthermore contends that the Domain Name is used to generate income through sponsored links and therefore clearly is not being used in connection with the bona fide offering of goods or services. Consequently, the Complainant concludes that the Respondent has no rights or legitimate interests in the Domain Name.
Lastly, the Complainant states that since LEGO is a famous trademark, there is no doubt that the Respondent was aware of the Complainant's rights at the point of registration. Consequently, the Domain Name has been registered in bad faith. Furthermore, according to the Complainant, the Domain Name is also being used in bad faith since the Respondent is misleadingly diverting consumers for his own commercial gain.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Introductory Remarks
Language of the Proceedings
Article 16 of the Regulation provides that “In principle, the language of the proceedings shall be Dutch. If either or both of the parties has/have no knowledge of the Dutch language, the panelist may decide that the proceedings shall be conducted in English. Prior to the appointment of a panelist, the center may take a provisional decision on this matter”.
The Complainant filed the Complaint in the English language without providing the reason why it was not filed in the Dutch language, as is the principle pursuant to Article 16 of the Regulations. In response to a notification by the Center regarding the language of the proceedings, the Complainant submitted a reasoned request for English to be the language of the proceedings. Subsequently the Center, using its provisional authority, decided to accept the Complaint as filed in English and accept a Response either in English or Dutch, leaving the eventual decision to determine the language of the proceedings to the Panelist.
A party that wishes the language of “.nl” domain name proceedings to be English, should substantiate that it would be unreasonably onerous if the proceedings would take place in Dutch (e.g. AB Electrolux v. Marcel Vlaar,WIPO Case No. DNL2008-0005). The Complainant substantiated its request by putting forward that the Respondent understands the English language, his registrar is established in Germany, and the website under the Domain Name is not in Dutch, for which reason it would be cumbersome and to the Complainant's disadvantage if it had to translate the Complaint into Dutch.
The Panelist agrees with the Complainant that the Respondent is able to communicate in English, since both the Complainant's letter as well as the Respondent's answer thereto were in English. Furthermore, the Respondent has not objected to the Complainant's request for English being the language of the proceedings. All in all, the Panelist finds that the Respondent's right of defense is not prejudiced by the choice of English as the language of the proceedings. In these circumstances the current proceedings shall be in English.
Grounds of the Complaint
According to Article 2.1 of the Regulations, the requested remedy shall be granted if the Complainant asserts and establishes each of the following:
a) that the Domain Name is identical or confusingly similar to
I a trademark, or trade name, protected under Dutch law in which the Complainant has rights; or
II a personal name registered in a Dutch municipal register of persons (“gemeentelijke basisadministratie”), or a name of a Dutch public legal entity or a name of an association or foundation located in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and
b) that the Respondent has no rights to or legitimate interests in the Domain Name; and
c) that the Domain Name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant holds a Benelux LEGO word mark, as well as a Community LEGO word mark. Therefore, the Panelist finds that the Complainant has rights in the LEGO trademarks protected under Dutch law.
For the purpose of assessing whether the Domain Name is identical or confusingly similar to the LEGO trademark in which the Complainant has rights, the “.nl” suffix is disregarded, it being a necessary component for registration and use of a domain name. Furthermore, the Panelist considers LEGO to be the dominant component of the Domain Name, since “racers” is a generic term. The addition of the generic term “racers” does not diminish the likelihood of confusion with the LEGO trademark. Consequently, the Panelist finds the Domain Name <legoracers.nl> to be confusingly similar to the Complainant's LEGO trademark.
B. Rights or Legitimate Interests
According to the Regulations, Article 2.1(b), the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. This condition is met if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to rebut that showing by for example providing evidence of one of the three circumstances mentioned in the Regulations, Article 3.1.
The Complainant has contended that it has not licensed or otherwise authorized the Respondent to use its LEGO trademark and the Respondent did not dispute the Complainant's claim to that effect. Nor could the Panelist establish any indication that the Respondent, (a) before having notice of the dispute, made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, (b) is commonly known by the Domain Name, or (c) is making a legitimate noncommercial use of the Domain Name. For these reasons, the Panelist finds that the Complainant has satisfied the Regulations, Article 2.1(b).
Consequently, the Panelist concludes that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered or Used in Bad Faith
The Regulations, Article 2.1(c), provides that the Domain Name has been registered or is being used in bad faith.
The Complainant has stated that the LEGO trademark is among the best-known trademarks in the world. It has submitted a list of “the official top 500 brands for 2009/10”, provided by Superbrands UK, showing LEGO as the number 8 of the most famous trademarks and brands in the world. Furthermore, the reputation of the LEGO trademark has been confirmed in different UDRP decisions (LEGO Juris A/S v. Level 5 Corp, WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo,
WIPO Case No. D2008-1715 and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case D2009-0680). For these reasons, the Panelist finds that the Complainant has established that the LEGO trademark has acquired a high reputation and should be considered as well-recognized and world famous.
Consequently, the Panelist agrees with the Complainant that there is no doubt that the Respondent was aware of the Complainant's LEGO trademark when registering/acquiring the Domain Name. Therefore, based on the evidence, the Panelist finds that the Domain Name was registered in bad faith.
Since as a result of the finding above, the Complainant has satisfied Article 2.1(c) of the Regulations, there is no need to discuss whether the Domain Name is also being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Articles 1 and 13 of the Regulations, the Panel orders that the Domain Name <legoracers.nl> be transferred to the Complainant.
Alfred Meijboom Sole Panelist
Dated: November 25, 2009
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