The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”).
The disputed domain names <legolandflorida.net>, <legolandflorida.top>, <legolandflorida.win>, <legolandflorida.xyz>, and <legolandvacation.win> (the “Domain Names”) are registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2019. On July 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 3, 2019, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2019.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on August 9, 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.
The following facts are undisputed.
The Complainant is a worldwide well-known company, famous for its construction toys and other LEGO branded products. The Complainant has subsidiaries and branches throughout the world, and Lego products are sold in more than 130 countries, including the United States. Furthermore, the Complainant operates the Legoland Florida Resort in Florida, United States. The Legoland parks are owned by a third party, namely, Merlin Entertainments. The Lego group, of which the Complainant is part of, owns 20 per cent of Merlin Entertainments. The trademarks regarding LEGOLAND are owned by the Complainant, which has given an exclusive license to Merlin Entertainments.
The Complainant is the owner of a number of registrations for the trademark LEGO and the trademark LEGOLAND in various jurisdictions, including but not limited to various United States trademarks (word marks) LEGO, the earliest of which was registered on August 26, 1975 (trademark registration no. 1018875) for goods in class 28, United States trademark LEGOLAND (e.g. trademark registration no. 75504012, registered March 28, 2000) for goods and services in classes 35, 41, and 42 (hereinafter in singular referred to as the “Trademark”). Furthermore, the Complainant owns close to 5,000 domain names incorporating the Trademark, including <lego.com> and <legoland.com>.
The disputed domain names <legolandvacation.win> and <legolandflorida.win> were registered by the Respondent on March 31, 2019. These disputed domain names resolve to the website “www.new.ourlandoparkdeals.com” on which the Trademark is used while promoting services of Walt Disney World Resorts.
The disputed domain name <legolandflorida.net> was registered by the Respondent on April 1, 2019. This disputed domain name is currently resolving to an blank page, apparently hosted by the Registrar.
The disputed domain names <legolandflorida.xyz> and <legolandflorida.top> were registered by the Respondent on April 8, 2019. Those disputed domain names are resolving to a website on which several links to other websites are found. These website seems to be pay-per-click websites.
Insofar as relevant, the Complainant contends the following.
The Domain Names are confusingly similar to the Trademark. The dominant part of the Domain Names reproduce the Trademark. In addition, the Domain Names comprise the suffixes “vacation” and “florida”, which do not have any impact on the overall impression of the dominant part of the Domain Names, being “legoland”. Moreover, the suffix “florida” is directly connected to the business of the Complainant, as the Complainant is operating the Legoland Florida Resort in Florida, United States.
The Respondent has no rights or legitimate interests in respect of the Domain Names. The Respondent has not registered any trademarks or trade names corresponding with the Domain Names. Furthermore, the Respondent is not sponsored by or affiliated with the Complainant in any way. No license or authorization of any kind has been given by the Complainant to the Respondent to use the Trademark. The Respondent is not using the Domain Names in connection with a bona fide offering of goods or services. The domain names <legolandvacation.win> and <legolandflorida.win> are resolving to websites on which goods and services are offered that directly compete with the goods and services of the Complainant. The domain names <legolandflorida.xyz> and <legolandflorida.top> are being used for a pay-per-click websites. The domain name <legolandflorida.net> is currently resolving to a blank page. The Respondent is using the Domain Names in an attempt to profit off the fame of the Trademark.
The Domain Names were registered and is being used in bad faith. The Trademark is a well-known trademark with a substantial and widespread reputation throughout the world. Domain names registrations compromising the Trademark in combination with other words haves been attractive for domain name “infringers”, given the many domain name decisions regarding the Trademark. The Respondent has registered the Domain Names, which are confusingly similar to the Trademark with the intent of disrupting the business of the Complainant. The domain names <legolandvacation.win> and <legolandflorida.win> are being used to promote services of a direct competitor of the Complainant. The domain names <legolandflorida.xyz> and <legolandflorida.top> are connected and redirected to commercial websites with sponsored ads, and thereby the Respondent is clearly using the domain names for commercial purpose. Therefore, the Respondent is using these domain names to intentionally attempt to attract Internet users to its own websites for commercial gain, by creating a likelihood of confusion with the Complainant’s Trademark as the source, sponsorship, affiliation or endorsement of its website. The Complainant has sent a cease and desist letter and several reminders to the Respondent. However, the Respondent failed to reply. The Respondent is using a privacy service to hide its identity, which serves as evidence for registration in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Names are 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 Domain Names; and
(iii) the Domain Names have been registered and is being used in bad faith.
The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Names must be shown to be identical or confusingly similar to the aforementioned trademark.
The Complainant has shown that it has rights in the Trademark.
The Domain Names incorporate the Trademark (both LEGO and LEGOLAND) and add the word “vacation” or “florida”. The addition of such descriptive and/or geographical term does not prevent that the Domains Names are confusingly similar to the Trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The addition of the generic Top-Level Domains (“gTLD”) “.net”, “.top”, “.win”, and “.xyz” is in this matter irrelevant in the determination of the confusing similarity between the Trademark and the Domain Names, see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. See also, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903: “[T]he fact that a domain name wholly incorporates a Complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”.
Thus, the Panel finds that the Domain Names are confusingly similar to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Names, such as:
(i) use or preparation to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Names (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “legoland vacation” and/or “legoland florida” are the Respondent’s name or that the Respondent is commonly known as “legoland vacation” and/or “legoland florida”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s marks, or to apply for or use any domain name incorporating any of the Complainant’s trademarks.
Furthermore, the use of the Domain Names cannot be considered a bona fide offering of goods and services. The domain names <legolandvacation.win> and <legolandflorida.win> are being used to offer goods and services of a competitor of the Complainant and thus not using these domain name for a bona fide offering of goods or services. The domain names <legolandflorida.xyz> and <legolandflorida.top> are used for pay-per-click websites. Therefore, the Respondent is competing with or capitalizing on the reputation and the goodwill of the Trademarks and these domain names are thus not used in connection with a bona fide offering of goods or services (see WIPO Overview 3.0, section 2.9).
Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Names may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP panels, “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090; and Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493).
Therefore, the Panel is satisfied that the second element of the Policy is met.
In light of the evidence filed by the Complainant, the Panel finds that the Complainant’s Trademark and activities are well-known throughout the world.
In the Panel’s view there is no other plausible explanation why the Respondent registered the Domain Names, other than the Respondent being aware of the Complainant and the Trademark and intending to trade off the goodwill and reputation associated with the Complainant. The Complainant has shown that numerous third parties are trying to profit from the well-known reputation of the Trademark, by registering domain names confusingly similar to the Trademark. The Complainant has acted against many third parties’ domain name registrations containing the Trademark by initiating proceedings against many of such third parties, e.g., 28 cases in 2018 alone.
The domain names <legolandvacation.win> and <legolandflorida.win> are being used to promote services of a direct competitor of the Complainant. The domain names <legolandflorida.xyz> and <legolandflorida.top> are connected and redirected to commercial websites with sponsored ads, and thereby the Respondent is clearly using the domain names for commercial purpose. These uses support a finding of bad faith registration and use though their clear targeting of and use of the Trademark for commercial gain.
Furthermore, the Panel finds that the Respondent has intentionally attempted to attract users to the websites to which the Domain Names resolve by creating a likelihood of confusion with the Trademark.
The domain name <legolandflorida.net> is currently resolving to a blank page. However, UDRP panels have consistently held that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. The present circumstances, including the registration of five domain names containing the Trademark, lack of a Response, and use of a privacy service, support a finding of bad faith registration and use under the doctrine of passive holding.
Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use of the Domain Names by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Names were registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <legolandflorida.net>, <legolandflorida.top>, <legolandflorida.win>, <legolandflorida.xyz>, and <legolandvacation.win>, be transferred to the Complainant.
Willem J. H. Leppink
Sole Panelist
Date: August 22, 2019