WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Private Whois, Knock Knock WHOIS Not There, LLC / Legos Deak

Case No. D2019-2385

1. The Parties

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

The Respondent is Private Whois, Knock Knock WHOIS Not There, LLC, United States of America / Legos Deak, United Republic of Tanzania.

2. The Domain Name and Registrar

The disputed domain names <lego-online.com> and <legoonline605238629.com> are registered with Automattic Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2019. On October 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 2, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 3, 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 October 8, 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 October 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2019.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 8, 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 is the owner of the United Republic of Tanzania trademark registration No. 18520 for the word mark LEGO, which has been renewed for a further period of ten years from the date of expiration of the last registration of February 7, 2012 (Annex 3 to the Complaint).

The Complainant uses the LEGO trademark to identify inter alia construction toys, computer hardware and software, books, videos and computer controlled robotic construction sets.

The disputed domain names were registered on December 8, 2018 and are being used in connection with a website that offers online loan services under the name of Saccos Vicoba.

5. Parties’ Contentions

A. Complainant

The Complainant asserts to own one of the best-known trademarks in the world, having been ranked number 1 at the top 20 Consumer Superbrands for 2018 by Superbrands United Kingdom in the category “Child Products – Toys and Education” (Annex 6 to the Complaint), as well as having been announced by Time as the “Most Influential Toy of All Time” (Annex 6 to the Complaint). The Complainant further asserts that its group sells LEGO products in more than 130 countries, having the LEGO trademark acquired substantial inherent distinctiveness, deserving the special protection awarded to well-known trademarks foreseen in the Paris Convention and the TRIPs Agreement.

According to the Complainant, the dominant part of the disputed domain names comprises the registered and well-known trademark LEGO, the addition of the generic expression “online” in both of them, a hyphen “-”, and numbers “605238629” not detracting it from the overall impression, thus being the disputed domain names confusingly similar to the Complainant’s trademark.

As to the absence of rights or legitimate interests, the Complainant argues that:

(i) it has not found any trademarks or trade names registered by the Respondent corresponding to the disputed domain names, nor has it found anything that would suggest the Respondent’s legitimate interests or rights in the disputed domain names, given that the Respondent appears to be trading under the name Saccos Vicoba (Annex 8 to the Complaint);

(ii) no license or authorization of any kind has been given by the Complainant to the Respondent to register the disputed domain names, not ever having the Respondent been in a business relationship with the Complainant;

(iii) the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services given that the disputed domain names resolve to a commercial website offering online loan services, not related to the Complainant in any way, having the Respondent intentionally chosen such disputed domain names based on the Complainant’s trademark in order to generate traffic and income through such commercial websites, what cannot be considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain names; and

(iv) the Certificate of Registration for Taxpayer Identification Number (TIN) displayed on the website available at the disputed domain names which certifies that Lego Company (T) Limited has been registered with the United Republic of Tanzania Revenue Authority is a false document given that an official search conducted by the Complainant before the United Republic of Tanzania Revenue Authority revealed that there is no company of that name (Annexes 8 and 11 to the Complaint).

Moreover, the Complainant has attempted to solve the matter amicably by sending a warning letter and two reminders to the Respondent (Annexes 9 and 10 to the Complaint) advising the Respondent of the unauthorized use of the LEGO trademark and requesting a voluntary transfer of the disputed domain names, also offering to compensate for the expenses of registration and transfer fees. No reply was received to these letters.

Lastly, the Complainant points out that given the well-known status of the LEGO trademark, the Respondent chose the disputed domain names to attract visitors to the websites offering online loan services which however are not linked to the Complainant in any way but do not contain any disclaimer in that sense and thus create a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement thereof, enhanced by the false company registration certificate displayed therein, misleadingly diverting consumers for commercial gain.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:

(i) the disputed 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 disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain names transferred to it, according to paragraph 4(a) of the Policy.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint

A. Identical or Confusingly Similar

The Complainant has established its rights in the trademark LEGO (Annex 3 to the Complaint). It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”, section 1.7).

The Complainant’s mark is entirely reproduced in the disputed domain names and the addition of the dictionary term “online”, a hyphen “-”, and numbers “605238629”, in this Panel’s point of view, does not dispel the confusing similarity between the disputed domain names and the trademark.

For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain names. These circumstances are:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.

In that sense, the Complainant indeed states that no authorization, license, permission or consent was granted for the use of LEGO in the disputed domain names.

The disputed domain names resolve to a website offering online loan services under the name of Saccos Vicoba. The website includes a Certificate of Registration for Taxpayer Identification Number (“TIN”) to certify that Lego Company (T) Limited has been registered with the United Republic of Tanzania Revenue Authority.

Of special importance to the analysis of this point is the search conducted by the Complainant before the United Republic of Tanzania Revenue Authority has revealed that the Certificate of Registration for TIN on the website at the disputed domain names which certifies that Lego Company (T) Limited has been registered before that authority is a false document given that no company of that name is registered (Annexes 8 and 11 to the Complaint).

In addition to the absence of any trademarks registered by the Respondent corresponding to the disputed domain names, the use of the website relating to the disputed domain names, corroborates with the indication of the absence of a right or legitimate interest. Further, the Panel notes that the Respondent’s name includes “Legos”, however, no evidence on record suggests the Respondent has been commonly known by the disputed domain names.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith can be found in the use of the domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, the use of the disputed domain names in connection with an online commercial website offering loans and including a false document that the Respondent would have rights in a tradename incorporating the LEGO well-known trademark characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely profiting from an undue association with the Complainant’s trademark.

Such use, in this Panel’s view, constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s notorious trademark, thus capitalizing on the fame of the Complainant’s LEGO mark by creating a likelihood of confusion in Internet users who likely believe that the disputed domain names are either connected, endorsed or authorized by the Complainant.

Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration and use of the disputed domain names.

Further, another element to be taken into account is the absence of any reply to the warning letter and respective reminders sent to the Respondent. Previous UDRP panels have already recognized that the failure of a respondent to respond to a warning letter is an indication of bad faith.

For the reasons as those stated above, the Panel finds that the disputed domain names were registered and are being used in bad faith pursuant to paragraph 4(b)(iv) 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 names, <lego-online.com> and <legoonline605238629.com>, be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: November 20, 2019