Decisión del Panel Administrativo nº D2013-0464 of WIPO Arbitration and Mediation Center, April 30, 2013 (case LEGO Juris A/S v. Michael Fainshtein)
| Resolution Date | April 30, 2013 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer |
| Dominio | Generic Domains |
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Michael Fainshtein of Ontario, Canada.
The disputed domain names [legodisplay.com], [legodisplay.info], [legodisplay.net], [legodisplay.org] and [legomonitor.com] (the “Domain Names”) are registered with GoDaddy.com LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration & Mediation Center (the “Center”) on March 5, 2013. On March 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 6, 2013, 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 March 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 2, 2013.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on April 16, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality & Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The following facts and circumstances are to be found in the Complaint and its Annexures and, in the absence of a response from the Respondent, can be accepted as background.
The Complainant is the owner of LEGO, and all other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products.
The Complainant's licencees are authorised to exploit the Complainant's intellectual property rights, including its trademark rights, in Canada and elsewhere.
Over the years the business of making and selling LEGO branded toys has grown remarkably.
The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in particular Canada. Not only does this appear from the schedule of trademarks registered throughout the world but notably the earliest trademark in Denmark was registered with effect from May 1, 1954, and that in Canada was filed on June 14, 1956, and registered on April 26, 1957.
The Complainant is also the owner of more than 1000 domain names containing the term “Lego” and it is the strict policy of the Complainant that all domain names containing the word “Lego” should be owned by it.
The LEGO trademark and brand are said to have been recognised as being famous, as appears from the list of the official top 500 super brands for 2012, provided by Super Brands UK, which shows that LEGO is No 31 of the most famous trademarks and brands in the world. Apart from having built up its business with extensive advertising and promotional materials which prominently depict the LEGO mark on all products, packaging, displays, advertising and materials, the Complainant has expanded its use of the trademark to computer hardware and software, books, videos and computer-controlled robotic instruction sets. It also maintains an extensive website under the domain name [lego.com].
The domain names were registered as follows:-
[legodisplay.com] on December 24, 2012;
[legodisplay.info] on December 25, 2012;
[legodisplay.net] on December 24, 2012;
[legodisplay.org] on December 25, 2012;
[legomonitor.com] on December 24, 2012.
The Complainant's Complaint is as follows:-
As appears from the factual background, the Complainant's LEGO trademark is known throughout the world. The fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions.
The addition of the suffixes "display" and "monitor" are not relevant and would accordingly not have any impact on the overall impression of the dominant part of the Domain Names, being that of LEGO.
Furthermore, the addition of top level domains such as "net", "org", "info" and "com" do not have any impact on the overall impression of the dominant portion of the Domain Names. Accordingly anyone seeing them would be bound to mistake them for names relating to the Complainant.
It follows, so the Complainant contends, that the Domain Names are clearly confusingly similar to the Complainant's registered trademark LEGO.
A search by the Complainant has not found that the...
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