WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-2834

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <legoeducational.com> (the “Disputed Domain Name”) 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 November 19, 2019. On November 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 19, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 21, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 22, 2019.

The Center verified that the Complaint together with the amended 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 December 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2020.

The Center appointed Lynda M. Braun as the sole panelist in this matter on January 13, 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 the owner of the famous LEGO brand of construction toys and other branded products. Over the years, the manufacture and sale of its branded toys has increased significantly. The Complainant has subsidiaries and branches throughout the world, and its Lego products are sold in more than 130 countries, including in the United States. The Complainant’s trademark is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts its trademark on its products, packaging, displays, advertising, and promotional materials. The fame of the Complainant’s brand has been confirmed in numerous UDRP decisions. See, e.g., 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”.).

The Complainant owns the following trademarks in the United States: LEGO, United States Reg. No. 1,026,871, registered on December 9, 1975, in International class 28 for toy building blocks; and LEGO, United States Reg. No. 1,889,004, registered on April 11, 1995, in International class 42 for childcare centers. In addition, the Complainant owns trademarks in dozens of jurisdictions worldwide. These trademarks will hereinafter collectively be referred to as the “LEGO Mark”.

The Complainant has expanded its use of its trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant also operates an education program in which it provides information, resources and hands-on learning opportunities to educators, parents and students in the area of STEAM learning ¹.

The Complainant owns the domain name <lego.com>, which resolves to its official website at “www.lego.com”. The Complainant also owns approximately 5,000 additional domain names incorporating the term “lego”. It is the Complainant’s policy that all domain names that take an unfair commercial advantage of its LEGO Mark should be recovered by the Complainant.

The Respondent registered the Disputed Domain Name on September 11, 2019, decades after the Complainant first registered the LEGO Mark in the United States. When the Complainant first became aware of the Disputed Domain Name, it resolved to a pay-per-click (“PPC”) website featuring sponsored third-party links that directly referenced the Complainant, its products and its education program, which the Complainant submitted as an annex to the Complaint. In addition, the Disputed Domain Name was offered for sale online in an amount that exceeded the Respondent’s out-of-pocket registration expenses.²

The Complainant’s counsel sent the Respondent a cease and desist letter via email on October 15, 2019. Subsequent reminders were sent on October 22 and October 29, 2019. The Respondent did not reply to those communications.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s trademark.

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- the Disputed Domain Name was registered and is being used in bad faith.

- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:

(i) the Disputed Domain Name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and

(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.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the LEGO Mark.

It is uncontroverted that the Complainant has established rights in the LEGO Mark based on its many years of use as well as its registered trademarks for the LEGO Mark in the United States and many jurisdictions worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the LEGO Mark.

The Disputed Domain Name consists of the LEGO Mark in its entirety along with the descriptive term “educational”, followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of descriptive terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “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”.

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s LEGO Mark.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its LEGO Mark. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. Based on the use made of the Disputed Domain Name, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a commercial website. Specifically, the website to which the Disputed Domain Name initially resolved featured sponsored third-party PPC links for products that directly referenced the Complainant, its products and its education business.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s LEGO Mark for commercial gain.

Second, the Respondent knew or should have known of the Complainant’s rights in its widely-used LEGO Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name long after the Complainant first used and obtained its trademark registrations for the LEGO Mark. Based on the widespread use of the LEGO Mark, it strains credulity to believe that the Respondent had not known of the Complainant or its LEGO Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (“a finding of bad faith may be made where the respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name”).

Third, given that the Disputed Domain Name is confusingly similar to the Complainant’s highly distinctive and famous mark, the Respondent’s online offer for sale of the Disputed Domain Name in excess of the Respondent’s out-of-pocket expenditures directly related to the Disputed Domain Name is suggestive of bad faith registration and use. See WIPO Overview 3.0, section 3.1.1.

Finally, the Respondent has been involved in 77 other UDRP cases involving cybersquatting, and in which the disputed domain names in those cases were ordered transferred. Thus, the Panel concludes that the Respondent in this case has engaged in a bad faith pattern of cybersquatting since the Respondent registered dozens of abusive domain names corresponding to the distinct trademarks of individual brand owners. See WIPO Overview 3.0, section 3.1.2.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <legoeducational.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: January 15, 2020

¹ Steam learning uses science, technology, engineering, the arts and mathematics as access points for guiding student inquiry, dialog, and critical thinking.

² As of the writing of this decision, however, the PPC website is no longer available online. Instead, the Disputed Domain Name resolves to a landing page that states:
“Before you continue to legoeducational.com
By clicking the button below you'll be redirected to the Chrome Store and will be given the option to either install Safe Surfing Extension or skip directly to your destination. This Extension will offer you a safer web search experience by changing your default search provider.
ACCEPT”.