The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Douglas Bale, Doug Bale Ent., United States of America (“United States”).
The disputed domain name <prolegostore.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2020. On July 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 9, 2020, 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 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2020.
The Center appointed Jon Lang as the sole panelist in this matter on August 21, 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.
The Complainant is the owner of the LEGO trademark and all other trademarks used in connection with the LEGO brands of construction toys and other LEGO-branded products. The Complainant has several registered marks for LEGO in numerous countries all over the world, including United States trademark registration number 1018875, which has a registration date of August 26, 1975. The Complainant has subsidiaries and branches throughout the world and LEGO products are sold in more than 130 countries, including in the United States.
The Complainant is the owner of almost 5,000 domain names containing the trademark LEGO, and the LEGO Group maintains an extensive website at “www.lego.com”.
The Respondent registered the Domain Name on April 26, 2020, and it resolves to a website advertising predominantly (but not exclusively) LEGO-branded products and contains links, again predominantly but not exclusively, to <amazon.com>.
Below is a brief summary of the key assertions of the Complainant.
General
LEGO is one of the best-known trademarks in the world and the mark and brand have been recognized as being famous. For instance, in a list of top 10 consumer superbrands for 2019 (compiled by Superbrands UK), LEGO is ranked number 1. The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos, and computer controlled robotic construction sets. The LEGO trademark has substantial inherent and acquired distinctiveness.
The Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The LEGO trademark forms the dominant part of the Domain Name <prolegostore.com>.
As well as the LEGO mark, the Domain Name includes the prefix “pro” and suffix “store”. The addition of generic prefixes and suffixes to well-known trademarks does not diminish the confusing similarity between domain name and mark. Neither the prefix “pro” nor the suffix “store” detract from the overall impression created by the Domain Name.
The addition of the generic Top-Level Domain (“gTLD”) “.com” does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to the question of confusing similarity.
There is a considerable risk that the trade public will perceive the Domain Name as owned by the Complainant or assume that there is some kind of commercial relationship with the Complainant.
By using the trademark as a dominant part of the Domain Name, the Respondent exploits the goodwill and image of the LEGO trademark, which may result in dilution or other damage.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has found no registered trademarks or trade names owned by the Respondent corresponding to the Domain Name, or anything else that might suggest the Respondent has been using LEGO in any way that could afford any legitimate rights in that name.
No license or authorization has been given by the Complainant to the Respondent who is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
It is clear that the Respondent is simply trying to benefit from the Complainant’s world famous trademark.
The Respondent has not used the Domain Name in connection with a bona fide offering of goods or services but instead intentionally chose a domain name based on a registered trademark to generate Internet traffic (and income) to a website (with no disclaimer to explain the lack of relationship with the Complainant) with links to <amazon.com>, offering all kinds of products from a wide range of different brands besides the Complainant. The Respondent is not an authorized reseller or a reseller at all; the reseller in question was Amazon.
The Domain Name currently resolves to an inactive site (with a blank page and no content).
The Domain Name was registered and is being used in bad faith
The LEGO trademark has a substantial and widespread reputation throughout the world. Use of the LEGO trademark in combination with other words has always been attractive to domain name infringers.
Registration of the Domain Name post-dates the Complainant’s registration of the LEGO trademark in the United States, where the Respondent resides, and elsewhere, by decades. It is obvious that it is the fame of the trademark that has motivated the Respondent to register the Domain Name.
The Complainant first tried to contact the Respondent on May 11, 2020 through a cease and desist letter sent by email. The letter requested a voluntary transfer of the Domain Name and offered compensation for the expense of registration and transfer fees (not exceeding out-of-pocket expenses). Despite reminders, no reply was ever received, hence the filing of the Complaint.
The failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered in other UDRP cases as relevant in a finding of bad faith.
Whilst (as noted earlier), the Domain Name once resolved to a website directing Internet users to <amazon.com>, it currently resolves to an inactive site. Past UDRP panels however have noted that “use” in the context of bad faith under the Policy does not require a positive act on the part of the Respondent; a passive holding can be a relevant factor in finding bad faith registration and use.
LEGO is a famous trademark worldwide and it is clear that the Respondent was aware of the Complainant’s rights at the point of registration. There is no connection between the Respondent and the Complainant and by using the Domain Name, the Respondent is not making a legitimate noncommercial or fair use, but is misleadingly diverting consumers for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
A finding of bad faith hinges squarely on the probability that it was more likely than not that the respondent knew of, and targeted, a complainant’s trademark and it is submitted that such is the case in this Complaint. Accordingly, the Respondent should be considered as having registered and used the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
The Complainant clearly has rights in its famous LEGO trademark.
Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s LEGO trademark, preceded by the word “pro” and followed by the word “store.”
As the LEGO trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the disputed domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognizable as such within the disputed domain name. The addition of common, dictionary, descriptive or negative terms are usually regarded as insufficient to prevent confusing similarity.
The LEGO trademark is clearly recognizable within the Domain Name. The words that precede and follow it (“pro” and “store” respectively) are descriptive or common in nature (“pro” being a common abbreviation for “professional”) and do not prevent a finding that the Domain Name is confusingly similar to the Complainant’s LEGO trademark. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The Panel finds that the Domain Name is confusingly similar to the LEGO trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint, however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
Paragraph 4(c) of the Policy sets out a (non-exhaustive) list of circumstances which, if proved, will demonstrate that a respondent has rights to, or legitimate interests in a domain name. Thus, even if a respondent has not been licensed by or affiliated with a complainant (as is the case here), it might still be able to demonstrate rights or legitimate interests by reference to paragraph 4(c), or otherwise. For instance, a respondent can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.
The Panel finds that the Respondent is not commonly known by the Domain Name.
Whilst the Complainant suggests the Domain Name once resolved to a website containing links to <amazon.com>, but currently resolves to an inactive site, the Panel, as it is entitled to do under the Policy, carried out its own limited research by visiting the website to which the Domain Name is presently linked (WIPO Overview 3.0, section 4.8.). The website is not inactive. It advertises predominantly (but not exclusively) LEGO branded products and contains links, again predominantly but not exclusively, to <amazon.com>. Other websites apart from Amazon are accessible too and which advertise non-LEGO products or services. Some of the advertisements appearing on the website to which the Domain Name resolves may be automatically generated.
The websites to which the Domain Name resolves (directly or indirectly) do not appear “noncommercial” in nature. Even if they were, paragraph 4(c) of the Policy contemplates “use” being without intent (for commercial gain) to misleadingly divert consumers. But, given the inevitable impression of association with the Complainant, it appears that that is what the Domain Name was designed to do. In the circumstances, the Respondent would also likely fail in any attempt to demonstrate “fair use”.
A respondent can also show that before any notice of dispute, it was using or had made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. It is unlikely that any offering by the Respondent using a Domain Name confusingly similar to the famous LEGO trademark could be regarded as bona fide, particularly given the ultimate destinations of some of the links on the website to which the Domain Name resolves, e.g., to <amazon.com>, which no doubt offers competing products to those of the Complainant and certainly third-party products. The fact that some of the advertisements on the website linked to the Domain Name may be automatically generated does not absolve the Respondent from responsibility. Moreover, it is unlikely that the Respondent could maintain an argument that it was unaware at the outset that registration of the Domain Name to be used in the way that it has, would likely spark a dispute.
Even if it were the case that no positive use is currently being made of the Domain Name, i.e. it is being passively held, that would not assist the Respondent. A Panel cannot ignore earlier use. Moreover, it is clear that the Domain Name was designed to create in the minds of Internet users a connection with the Complainant. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”.
Given the circumstances, it is unlikely that the Respondent could have said anything to support an argument that he does have rights or legitimate interests in the Domain Name. The Panel is of the view that there would be nothing inappropriate in finding that the Respondent has no rights or legitimate interests in the Domain Name. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it (paragraph 4(b)(iv) of the Policy).
Given the nature of the website to which the Domain Name resolves (i.e. one that predominantly advertises LEGO products), it is beyond doubt that the Respondent was aware of the Complainant’s LEGO trademark. The purpose behind registration of the Domain Name was clearly to attract Internet users to the Respondent’s website using a domain name confusingly similar to the Complainant’s LEGO trademark. In other words, the circumstances envisaged by paragraph 4(b)(iv) of the Policy.
Even if the Respondent was passively holding the Domain Name, again that in itself would not assist him. As already mentioned, past use cannot be ignored and moreover, a passive holding of a domain name can, in some circumstances, support a finding of bad faith. UDRP panels must examine all the circumstances of the case. WIPO Overview 3.0, section 3.3, states:
“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
The Panel finds that, for the purposes of the Policy, there is sufficient evidence of both registration and use of the Domain Name 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 Name <prolegostore.com> be transferred to the Complainant.
Jon Lang
Sole Panelist
Date: September 4, 2020