WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Domain Administrator, See PrivacyGuardian.org, Sara Rhoades, John Munoz, Black Anna, David Sisk, Todd J Sumrall, Hlwa Jennifer, Amanda Lane, Sandra James, Wayne K Wilson, Theresa W Chavez, Rebecca Steele, Andrew Doyle, Judy Lay, Barbara Smith, Theresa Chavez, Pat Weaver, Christopher Morrison, Asa Uribe, Henry Johnson, Timmy Rodriguez, Todd Sumrall, Tiffany Freund, Fred Miles, Samuel Vaughan, Harvey Wells, Joseph Dale, Name Redacted, Joshua Pate, Tina Clark, Judith R Woodard, Giriykei, BB BBC, Tammy Price, Arlene Mora, jingui, Josie Porter, Terry Dunlap, Randy Tardiff, Jesse Smith, Fredrick Gadson, William Daniels, adsfd Sokolowski, dreamhhome.tdl, Mark Funk, Lucienne Labrador, Charlotte Murray, Carolyn Short, Antonia Gasparotto, Roger Vance, Susan Peterson, Margaret Bradley, Howard Diaz, Nancy Hunsaker, Mary C Hobbs, Francesco B Campbell, Adrienne K McNear, Wayne Rieley, Eugene Preston, Nichole Hutsell, Mary Dejesus, Bruce M Martinez, Michelle Verduzco, Lynn Morris, Cheryl Marshall, Lance J Hernandez, Lyman Katie, Candie Deloach, jacy fone, Elva W Rose

Case No. D2020-3305

1. The Parties

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

The Respondents are Domain Administrator, See PrivacyGuardian.org, United States of America (“United States” or “US”), Sara Rhoades, United States, John Munoz, United States, Black Anna, United States, David Sisk, United States, Todd J Sumrall, United States, Hlwa Jennifer, United States, Amanda Lane, United States, Sandra James, United States, Wayne K Wilson, United States, Theresa W Chavez, United States, Rebecca Steele, United States, Andrew Doyle, United States, Judy Lay, United States, Barbara Smith, United States, Theresa Chavez, United States, Pat Weaver, United States, Christopher Morrison, United States, Asa Uribe, United States, Henry Johnson, United States, Timmy Rodriguez, United States, Todd Sumrall, United States, Tiffany Freund, United States, Fred Miles, United States, Samuel Vaughan, United States, Harvey Wells, United States, Joseph Dale, United States, Name Redacted , Joshua Pate, United States, Tina Clark, United States, Judith R Woodard, United States, Giriykei, BB BBC, United States, Tammy Price, United States, Arlene Mora, United States, jingui, Josie Porter, United States, Terry Dunlap, United States, Randy Tardiff, United States, Jesse Smith, United States, Fredrick Gadson, United States, William Daniels, United States, adsfd Sokolowski, United States, dreamhhome.tdl, Mark Funk, United States, Lucienne Labrador, United States, Charlotte Murray, United States, Carolyn Short, United States, Antonia Gasparotto, United States, Roger Vance, United States, Susan Peterson, United States, Margaret Bradley, United States, Howard Diaz, United States, Nancy Hunsaker, United States, Mary C Hobbs, United States, Francesco B Campbell, United States, Adrienne K McNear, United States, Wayne Rieley, United States, Eugene Preston, United States, Nichole Hutsell, United States, Mary Dejesus, United States, Bruce M Martinez, United States, Michelle Verduzco, United States, Lynn Morris, United States, Cheryl Marshall, United States, Lance J Hernandez, United States, Lyman Katie, United States, Candie Deloach, United States, jacy fone, United States, Elva W Rose, United States.

2. The Domain Names and Registrar

The disputed domain names <amzlego.best>, <amzlego.shop>, <brklego.cc>, <brklego.club>, <calego.online>, <cclego.online>, <childlego.cc>, <childlego.club>, <ealego.shop>, <easylego.top>, <enlego.shop>, <eulego.best>, <happylego.top>, <hotlego.shop>, <legoboy.club>, <legoboys.club>, <legoboy.shop>, <legoboys.shop>, <legoboy.store>, <legobrick.top>, <legoclub.shop>, <legoclub.store>, <legoesptoys.com>, <legogirl.club>, <legogirl.shop>, <legogirls.shop>, <legogirl.store>, <lego-global.com>, <legogo.top>, <legohouse.online>, <legohouse.top>, <lego-ideals.com>, <legoin.cc>, <legoin.club>, <legoking.shop>, <legoo.club>, <lego-plays.com>, <legoplay.shop>, <legoroom.club>, <legoshop.buzz>, <legoshouse.club>, <legosilo.com>, <legostores.buzz>, <legostores.club>, <legostores.shop>, <legostores.xyz>, <legostoys.club>, <legotime.top>, <legotoy.buzz>, <legotoy.club>, <lego-toyhouse.com>, <legotoysbox.com>, <legotoys.buzz>, <legotoysgame.com>, <legotoysgb.com>, <legotoysshop.com>, <legotoys.top>, <legots.com>, <paylego.shop>, <playlego.top>, <salelego.online>, <stocklego.best>, <stocklego.shop>, <sunlego.top>, <sunnylego.top>, <thlego.shop>, <tilego.shop>, <toplego.best>, <toplego.shop>, <toylego.best>, <toylego.club>, <toylego.shop>, <toys-legos.com>, <toyslego.shop>, <uklego.best>, <uklego.shop>, <uslego.best>, <uslego.shop>, and <viplego.shop> (collectively the “Domain Names”) are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2020. On December 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 7, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. On December 8 and December 11, 2021, the Complainant submitted amended Complaints adding 6 domain names to the Complaint. On December 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional Domain Names. On December 28, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the additional Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 2, 2021 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 January 7, 2021.

The Center verified that the Complaint together with the amended Complaints 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 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2021. On March 12, 2021, a third party contacted the Center regarding the claimed unauthorized use of its identity in relation to the Domain Names <leoin.cc> and <legion.club>.

The Center appointed Karen Fong as the sole panelist in this matter on March 12, 2021. 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 trade mark LEGO which is famous for its construction toys. The Complainant has subsidiaries, branches, and licensees throughout the world, and LEGO products are sold in more than 130 countries including China and the United States. The Complainant’s LEGO brand is one of the best known trade marks in the world. In 2014, Time Magazine voted LEGO as the Most Influential Toy of All Time. In 2019, it was recognized by Superbrands UK as the number 1 Consumer Superbrand and number 8 in the Consumer Relevancy Index. The Complainant has an extensive global trade mark portfolio for the LEGO trade mark (the “Trade Mark”). The earliest trade mark submitted in evidence, US Trade Mark Registration No. 1018875, was registered on August 26, 1975. The Complainant also owns the figurative trade mark HOUSE HOME OF THE BRICK, European Union Trade Mark registration No. 015893357, registered on January 31, 2017.

The Complainant’s group of companies has expanded its use of the LEGO trade mark to other areas including computer hardware and software, books, videos, and computer controlled robotic construction sets. The Complainant is the owner of close to 5,000 domain names containing the mark LEGO. Its main website is located at the domain name <lego.com>.

The Complaint involves 79 Domain Names which are registered to multiple Respondents as detailed below:

71 of the Domain Names used to resolve to websites titled “LEGO House Home of Bricks” which closely resembled the Complainant’s website and prominently displayed the Complainant’s trade marks (Domain Names 2-17, 20-36, 39-42, 44-68, 70-77 and 79). Domain Names 1, 18, 19, 37, 38, 43, 69 and 78 were inactive. The Complainant sent cease and desist letters to the registrants but did not receive any response. At the time of the filing of the Complaint, all the Domain Names were inactive.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are identical or confusingly similar to the Trade Mark, the Respondents have no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and common control of a single entity or network. The basis of its belief that the registrants are related and under management and common control of a single network are as follows:

1. All 79 Domain names are registered with the Registrar and 78 use Cloudfare as its host, a pass through network. The only one that does not is Domain Name 43.

2. Domain Name 43 has the same registrant as Domain Names 44, 45 and 46.

3. 71 of the Domain Names used to resolve to websites which mimicked the Complainant’s website.

4. These websites all featured the same contact information at the top right hand corner of each home page.

5. The remaining 8 Domain Names resolved to inactive websites but have string similarities with the other Domain Names which did display content.

6. All 79 Domain Names were registered by individuals located in the United States, 48 of whom use Outlook email addresses, which are seemingly auto generated addresses, while 31 of them use either Gmail, Hotmail or GMX email addresses.

7. 77 of the 79 Domain Names are within the same IP address ranges.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, the Center received an email from a third party regarding the Domain Names 33 and 34 on March 12, 2021 denying any involvement in the registration of the Domain Names. The third party alleged identity theft after trying to buy some LEGO toys from “www.legotoys.com”.

6. Discussion and Findings

6.1 Consolidation of Proceedings

The Complainant has filed a single complaint in relation to 79 Domain Names against multiple respondents. In relation to the position of a complaint being filed against multiple respondents, section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that in such cases, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. UDRP panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).

The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 after reviewing the relevant UDRP decisions in relation to consolidation of multiple respondents took the view that the administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfil the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.

In the present case, the Complainant submits that the Domain Names are subject to common control for the reasons outlined above.

The evidence submitted points to the fact that the Domain Names are subject of common control by the Respondent. The above pattern evidences common conduct based on the registration and use of the Domain Names and that such conduct interferes with the Trade Mark. Furthermore, the Complainant’s claims against the Domain Names involve common questions of law and fact.

The Respondents had the opportunity but did not respond substantively to the Complaint.

Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. It would appear that the name and address of at least one of the registrants has been misappropriated by the Respondent. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding, also taking into account the potential identity theft relating to Domain Names 33 and 34. For the avoidance of doubt, Domain Names 33 and 34 are included in the consolidation. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all the Parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainants pursuant to paragraph 10(e) of the Rules.

In light of the above, the Respondents may be referred to collectively as the Respondent hereafter.

6.2 General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:

(i) The Domain Names are identical or confusingly similar to a trade mark 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 were registered and are being used in bad faith.

6.3 Substantive Analysis

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the LEGO trade mark.

The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself such that the trade mark would generally be recognizable within the domain name. In this case all the Domain Names comprise the well-known LEGO trade mark in its entirety together with generic, descriptive, geographical, random letters of the alphabet, misspellings, and/or hyphens. None of these additions in any way prevent a finding of confusing similarity between the Domain Names and the Trade Mark.

For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the various generic domain suffixes, generic Top-Level Domain (“gTLD”) which in this case are “.best”, “.shop”, “.cc”, “.com”, “.club”, “.online”, “.top”, “.store”, “.buzz”, and “.xyz”.

For the reasons above, the Panel finds that the Domain Names are confusingly similar to trade marks in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or 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; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant contents that the Respondent does not own any trade marks or trade names that correspond to the Domain Names. The Respondent is also not making any legitimate noncommercial or fair use of the Domain Names. The Complainant has never licensed or otherwise permitted the Respondent to use the Trade Mark or apply or use any domain names that incorporate the Trade Mark or trade marks which are confusingly similar. The Respondent is not commonly known by the Domain Names. Some of the Domain Names were connected to websites which were offering the Complainant’s LEGO products. None of the websites displayed the necessary information to disclose the Respondent’s relationship with the Domain Names required under the “Oki Data test”, see section 2.8.1 of the WIPO Overview 3.0. Further, the registration of at least two of the Domain Names appear to have been made using the stolen identity of a third party.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. Further, it would appear that the Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

C. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.

The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names. The Trade Mark is one of the world’s most famous trade marks, it pre-dates the registration of the Domain Names. The fact that 71 of the Domain Names were connected to websites which mimicked the Complainant’s website and displayed the Trade Mark prominently makes it clear that the Respondent was aware of the Trade Marks when it registered the Domain Names. The Panel finds that registration is in bad faith.

The Domain Names are also used in bad faith. On the evidence before the Panel it seems entirely clear that the Respondent is engaged in a scheme of misleading visitors that it is somehow connected to the Complainant and by doing so seek to divert its business to themselves. The Respondent produces multiple websites which are designed to look like those of the Complainant and which will no doubt entice customers to purchase LEGO products from the Respondent rather than the Complainant. Further, the evidence also points to the fact that it is very likely that some if not all the registrant information is false and some may be the result of identity theft. The fact that 8 of the Domain Names were historically inactive, and all of the Domain Names were inactive at the filing of the Complaint, does not in any way prevent a finding of bad faith, noting the distinctiveness and reputation of the Trade Mark, the Respondent’s use of false contact details for at least some of the Domain names, and the implausibility of any good faith use to which the Domain Names may be put. Further, the Respondent failed to respond to offer any evidence to the contrary.

From the above, the Panel concludes that the Domain Names were registered and are being used in bad faith under 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 Domain Names, <amzlego.best>, <amzlego.shop>, <brklego.cc>, <brklego.club>, <calego.online>, <cclego.online>, <childlego.cc>, <childlego.club>, <ealego.shop>, <easylego.top>, <enlego.shop>, <eulego.best>, <happylego.top>, <hotlego.shop>, <legoboy.club>, <legoboys.club>, <legoboy.shop>, <legoboys.shop>, <legoboy.store>, <legobrick.top>, <legoclub.shop>, <legoclub.store>, <legoesptoys.com>, <legogirl.club>, <legogirl.shop>, <legogirls.shop>, <legogirl.store>, <lego-global.com>, <legogo.top>, <legohouse.online>, <legohouse.top>, <lego-ideals.com>, <legoin.cc>, <legoin.club>, <legoking.shop>, <legoo.club>, <lego-plays.com>, <legoplay.shop>, <legoroom.club>, <legoshop.buzz>, <legoshouse.club>, <legosilo.com>, <legostores.buzz>, <legostores.club>, <legostores.shop>, <legostores.xyz>, <legostoys.club>, <legotime.top>, <legotoy.buzz>, <legotoy.club>, <lego-toyhouse.com>, <legotoysbox.com>, <legotoys.buzz>, <legotoysgame.com>, <legotoysgb.com>, <legotoysshop.com>, <legotoys.top>, <legots.com>, <paylego.shop>, <playlego.top>, <salelego.online>, <stocklego.best>, <stocklego.shop>, <sunlego.top>, <sunnylego.top>, <thlego.shop>, <tilego.shop>, <toplego.best>, <toplego.shop>, <toylego.best>, <toylego.club>, <toylego.shop>, <toys-legos.com>, <toyslego.shop>, <uklego.best>, <uklego.shop>, <uslego.best>, <uslego.shop>, <viplego.shop>, be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: April 3, 2021

¹ The registrant of the Domain Names <legoin.cc> and <legion.club> appears to have used the name of a third party when registering the Domain Names <legoin.cc> and <legion.club>. In light of the potential identity theft, the Panel has redacted the name provided in the registration for the Domain Names <legoin.cc> and <legion.club> from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the Domain Names <legoin.cc> and <legion.club>, which includes the name provided for the registration of the Domain Names <legoin.cc> and <legion.club>. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.