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. D2019-0248

1. The Parties

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

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

2. The Domain Name and Registrar

The disputed domain name <wwwthelegostore.com> (“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 January 31, 2019. On January 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 February 6, 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 February 11, 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 February 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2019.

On March 11, 2019, the Center sent an email to the Parties, noting that, presumably due to an administrative oversight, the Center’s Written Notice was not faxed to the Respondent, and granting the Respondent a

five-day period to indicate whether it wished to participate in the proceedings. The Respondent did not submit any response.

The Center appointed Shwetasree Majumder as the sole panelist in this matter on March 26, 2019. 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 based in Denmark and owns a large portfolio of trademark registrations for the LEGO trademark (the LEGO Trademark”) around the globe, used mainly in connection with construction toys and other products being manufactured, marketed and sold by the Complainant under its “Lego” brand. The Complainant has set out in Annexure 6.1- 6.2 to the Complaint, a list of its valid and subsisting worldwide registrations for the LEGO Trademark which includes registrations in United States with registration number 1018875 since August 26, 1975 and in Panama with registration number 23428 since June 11, 1979. The earliest registration in favour of the Complainant for the LEGO Trademark dates back to the year 1955. The Panel observes that the all the above-mentioned registrations of the Complainant pre-date the registration of the Disputed Domain Name by the Respondent, which was on November 7, 2018.

The Complainant has subsidiaries and branches throughout the world and its products under the LEGO Trademark are sold in more than 130 countries.

The Complainant prominently depicts the LEGO mark on all the products, packaging, displays, advertising, and promotional materials. The LEGO Trademark has been conferred with various awards, honors and titles as is apparent from Annexure 9 of the Complaint.

The Complainant has a significant online presence and operates its official website on the domain name <lego.com> (Annex 10 to Complaint). In addition, the Complainant owns close to 5,000 domain names which contain the LEGO Trademark (Annexure 8 to the Complaint).

The Complainant tried to contact the Respondent on December 13, 2018 by sending a cease and desist letter by email and requested a voluntary transfer of the Disputed Domain Name. The Complainant also sent two additional reminders dated December 20, 2018 and December 31, 2018, however no response has been received from the Respondent.

5. Parties’ Contentions

The Complainant contends that the dominant part of the Disputed Domain Name comprises the term “Lego” identical to the LEGO Trademark as has been registered by the Complainant both as trademarks and domain names in numerous countries all over the world. The Complainant also contends that the addition of generic prefixes “www” and “the”, the suffix “store” and the Top-Level Domain (“TLD”) “.com” do not have any impact on the overall impression of the dominant portion of the Disputed Domain Name namely “Lego” recognizable as a world-famous trademark. Placing reliance on previous UDRP panel decisions, the Complainant has submitted that the Disputed Domain Name is confusingly similar to its well-known LEGO Trademark.

The Complainant alleges that by using its registered and well-known LEGO Trademark as a dominant part of the Disputed Domain Name, the Respondent is misleading Internet users into believing of an association/nexus/affiliation of the Complainant with the Disputed Domain Name. The Complainant contends that the Respondent is exploiting the goodwill and the image of the Complainant’s trademark, which might result in its dilution and also cause other damage to the said trademark.

The Complainant further alleges that the Respondent does not have any registered trademarks or trade names corresponding to the Disputed Domain Name. Further the Complainant claims that it has not found anything that would suggest that the Respondent has been using “Lego” in any other way that would give it rights or legitimate interests in the Disputed Domain Name. No license or authorization of any other kind has been given by the Complainant to the Respondent to use the LEGO Trademark and the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.

The Respondent is also not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Instead, the Complainant asserts that the Respondent has intentionally chosen the Disputed Domain Name based on the Complainant’s registered LEGO Trademark in order to generate traffic and income through a website which has a sponsored link on it (Annexure 11 of the Complaint).

The Complainant alleges that the LEGO Trademark has acquired the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world and that it is the considerable value and goodwill of the said trademark that motivated the Respondent to register the Disputed Domain Name. The Complainant asserts that the Respondent cannot claim to have been using the LEGO mark without being aware of the Complainant’s rights to the LEGO Trademark, so the registration of the Disputed Domain Name by the Respondent was clearly in bad faith.

The Complainant has relied on previous UDRP panel decisions which demonstrate that the Respondent is a habitual cybersquatter and is engaged in a bad faith pattern of cybersquatting. Furthermore, the Complainant contends that in trying to solve the matter amicably, it tried to contact the Respondent three times with a request for voluntary transfer of the Disputed Domain Name and even offered compensation for the expenses of registration and the transfer fee, however, no reply was ever received.

The Respondent has used the Disputed Domain Name to attract individuals/users for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement. The Disputed Domain Name was registered and is being used by the Respondent in bad faith.

Thus, the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests for the transfer of the Disputed Domain Name.

B. Respondent

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

6. Discussion and Findings

The Respondent did not file any response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favour of the complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy.

Although the panel may draw appropriate inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.

Under the Policy, the Complainant must prove that:

i. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark 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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has provided more than satisfactory evidence that it has established rights in its LEGO Trademark on the basis of its wide portfolio of trademark registrations worldwide, encompassing several jurisdictions.

In several UDRP decisions, various panels have found that the fact that a domain name wholly incorporates a complainant’s registered trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy. See Oki Data Americas, Inc. v. the ASD, Inc., WIPO Case No. D2001-0903, Go Daddy.com, Inc. v. Shoneye’s Enterprise, WIPO Case No. D2007-1090, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The Panel further agrees with the Complainant’s submission that the addition of prefixes “www” and “the”, the suffix “store” and the TLD “.com” do not in any way disguise the confusing similarity of the Disputed Domain Name with the Complainant’s registered and well-known LEGO Trademark. The Panel relies on decisions of previous UDRP panels namely Philip Morris USA Inc. v. Janet C Lundy, WIPO Case No. D2018-1249, Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Accordingly, the Panel finds that the Disputed Domain Name <wwwthelegostore.com> is confusing similar to the Complainant’s registered and well-known LEGO Trademark. The Panel therefore holds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, which the Respondent may rebut. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No.D2003-0455. The burden of production therefore shifts onto the Respondent to come forward with evidence of a right or legitimate interest in the Disputed Domain Name, once the Complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

Given that the Respondent was duly notified of the Complaint and has chosen not to rebut it on merits, the Panel draws an adverse inference against the Respondent with respect to the allegations made by the Complainant, from the silence of the Respondent. Talk City, Inc. v. MichaelRobertson, WIPO Case No. D2000-0009. In any event, the Panel has also carefully reviewed the material on record and has arrived at the following conclusions:

i. The Complainant has effectively demonstrated that it is the registered proprietor and owner of the LEGO Trademark, the rights in respect of which have accrued in the Complainant’s favour long prior to the Respondent’s registration of the Disputed Domain Name on November 7, 2018.

ii. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, in view of the Respondent not having any registered trademarks or trade name corresponding to the Disputed Domain Name. The Respondent does not have any rights in the LEGO Trademark that can be established by common use.

iii. The Panel finds that no license or authorization of any other kind has been given by the Complainant to the Respondent to use its registered and well-known LEGO Trademark. The Panel agrees with the reliance placed by the Complainant on Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.

iv. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods and services, or a legitimate, noncommercial or fair use of the Disputed Domain Name. According to the evidence presented by the Complainant (Annexure 11 to the Complaint) and a review made by the Panel, the Disputed Domain Name resolves into a commercial website with sponsored links, thereby establishing that it is clearly serving a commercial purpose.

v. The Respondent has registered the Disputed Domain Name with the sole intention to make Internet users think that it is somehow connected or affiliated with the Complainant, which is not the case. Therefore, the Panel concludes that the Disputed Domain Name has been registered and is being used by the Respondent in bad faith for wrongly free riding on the Complainant’s goodwill and reputation.

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

The Complainant’s LEGO Trademark has acquired the status of a well-known mark as it has been recognized by previous UDRP Panels in LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715, LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680, and LEGO Juris A/S v. Level 5 Corp, WIPO Case No. D2008-1692. It is obvious that over the years of use of the LEGO Trademark, the Complainant has made great efforts to promote its trademark and its fame throughout the world.

By virtue of the Complainant’s widespread reputation, use and trademark registrations, the Panel finds it clear that the Respondent ought to have constructive notice of the Complainant’s rights in the LEGO Trademark. The Panel relies on the decisions of previous UDRP panels to the effect that:

i. the Respondent should have known of the Complainant’s trademark if it is shown to be well-known or in wide use on the Internet or otherwise and;

ii. Such knowledge of the Respondent is an indicator of bad faith of the Respondent in registering the disputed domain name

Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320 and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.

The Complainant has further drawn attention in its Complaint of previous UDRP panel decisions in which domain names have been transferred away from the Respondent indicating the Respondent’s bad faith pattern of cybersquatting. The Panel has also reviewed the evidence furnished by the Complainant namely Annexure 13 of the Complaint and agrees with the Complainant’s submissions.

Anyone who sees the Disputed Domain Name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the LEGO Trademark of the Complainant.

The bad faith of the Respondent is further evident from the unresponsive attitude of the Respondent to the Complainant’s cease and desist letter dated December 13, 2018 and two additional reminders of December 20, 2018 and December 31, 2018, the same being a deliberate attempt to overlook the Complainant’s legitimate rights in the LEGO Trademark.

Moreover, by completely incorporating the Complainant’s LEGO Trademark in the Disputed Domain Name, and using it for a website with sponsored links the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or service on the Respondent’s website or location. The Respondent is also taking advantage of the users’ confusion for its own commercial advantage.

By using the Disputed Domain Name therefore, the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is in fact misleadingly diverting consumers to another website for making commercial gains through a sponsorship link listed on the website.

The Respondent registered the Disputed Domain Name on November 7, 2018 as is evident from Annexure 2 to the Complaint. This date is subsequent to when the Complainant registered the LEGO Trademark in the United States, Panama and elsewhere, by decades. It is obvious to the Panel that it was the fame of the LEGO Trademark that motivated the Respondent to register the Disputed Domain Name in bad faith. The Respondent cannot claim to have been using the trademark LEGO without being aware of the Complainant’s rights to it.

The Panel therefore agrees with the Complainant that pursuant to paragraph 4(b)(iv) of the Policy the conduct of the Respondent constitutes evidence of both bad faith registration and bad faith use, for the purposes 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 <wwwthelegostore.com> be transferred to the Complainant.

Shwetasree Majumder
Sole Panelist
Date: April 16, 2019