The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondents are Registration Private, DomainsByProxy.com, LLC, United States of America (“United States”) / Abdican Ergin, Turkey / SHADI ABURASHED, Jordan.
The disputed domain names <legobahisbonus.com>, <legobahis.com>, <legobahis101.com>, <legobahis102.com>, <legobahis103.com>, <legobahis104.com>, <legobahis105.com>, <legobahis106.com>, <legobahis107.com>, <legobahis108.com>, <legobahis109.com>, <legobahis110.com>, <legobahis369.com>, <legobahis6.com>, and <legobahis7.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2020. On December 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 16, 2020, 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 January 12, 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 14, 2021.
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 January 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2021.
The Center appointed Alistair Payne as the sole panelist in this matter on March 9, 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.
The Complainant is the owner of the long standing worldwide business that produces the LEGO brands of 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 in the United States and Jordan and Turkey.
The Complainant owns registered trade marks globally for its renowned LEGO mark including a Jordanian designation of International trade mark registration 16194 for LEGO registered on August 23, 1978; Turkish trade mark registration 119057 for LEGO filed on April 28, 1964 and granted on August 2, 1990; and United States registration 1018875 for LEGO registered on August 26, 1975. In addition the Complainant owns close to 5,000 domain names containing the LEGO mark.
The disputed domain names <legobahis101.com>, <legobahis102.com>, <legobahis103.com>, <legobahis104.com>, <legobahis105.com>, <legobahis106.com>, <legobahis107.com>, <legobahis108.com>, <legobahis109.com>, <legobahis110.com>, and <legobahisbonus.com> redirect Internet users to websites featuring links to third-party websites. Certain of these lead to unrelated businesses, while others directly compete with Complainant’s business by offering third party links for toys, games, building toys and online games. Certain other of the disputed domain names feature links that directly refer to the Complainant and its business. The disputed domain name <legobahis6.com> was connected to commercial websites offering online gambling services but now leads to an inactive site, as does the disputed domain name <legobahis.com> and <legobahis7.com>. The disputed domain name <legobahis369.com> is currently connected to a website offering email marketing services.
The Complainant submits that that the 15 disputed domain names are under common control for the following reasons:
- The registrant street, postal code and email addresses are the same for all fifteen disputed domain names;
- The disputed domain names, <legobahis.com>, <legobahis6.com> and <legobahis7.com> and <legobahis369.com> and <legobahisbonus.com>, share the same registrant street (secondary), city and province;
- The disputed domain names, <legobahis369.com>, <legobahis101.com>, <legobahis102.com>, <legobahis103.com>, <legobahis104.com>, <legobahis105.com>, <legobahis106.com>, <legobahis107.com>, <legobahis108.com>, <legobahis109.com>, <legobahis110.com>, and <legobahisbonus.com> share the same registrant country and phone number;
- The disputed domain names <legobahis369.com>, <legobahis101.com>, <legobahis102.com>, <legobahis103.com>, <legobahis104.com>, <legobahis105.com>, <legobahis106.com>, <legobahis107.com>, <legobahis108.com>, <legobahis109.com>,< legobahis110.com>, and <legobahisbonus.com> are all registered to Shadi Aburashed and share the same registrant street (primary), postal code and email as <legobahis.com>, <legobahis6.com> and <legobahis7.com>;
- All 15 disputed domain names were registered with GoDaddy;
- Five (5) of the disputed domain names use the same privacy WhoIs service while the remaining 10 use redacted details;
- All 15 disputed domain names share the same composition: the term LEGO plus the additional term ‘bahis’; 13 add an integer to the end of the disputed domain name;
- All 15 disputed domain names are hosted on the servers Cloudflare.com.
The Complainant says that it is almost certain that all 15 disputed domain names are under common control as they all share the same registrant information: street, postal code and email. Moreover, all 15 disputed domain names use the same composition, are all registered with GoDaddy and are all hosted on the servers Cloudflare.com making it highly likely that all 15 disputed domain names are being controlled by a single entity and thus are subject to common control.
The Complainant submits that the dominant part of each of the disputed domain names is the term LEGO which is identical to the Complainant’s well known registered trade mark LEGO and as a result each of the disputed domain names is confusingly similar to the Complainant’s LEGO trade mark. In addition to the LEGO trade mark says the Complainant, the disputed domain names also incorporate the suffix “bahis” (Turkish for “bet”) along with any of the integers: 6, 7, 101, 102, 103, 104, 105, 106, 107, 108, 109, 110 or the term “bonus”, which it says do not diminish the confusing similarity between each of the disputed domain names and the Complainant’s trade mark. Anyone who sees the disputed domain names is, says the Complainant, bound to mistake them for names related to its business. This likelihood of confusion includes an obvious association with the LEGO trade mark of the Complainant and because of the reputation attaching to the LEGO trade mark there is a considerable risk that the trade public will perceive the disputed domain names either as domain names owned by the Complainant, or that there is some kind of commercial relationship with the Complainant in relation to each disputed domain name.
The Complainant submits that it has not found that the Respondents have any registered trade marks or trade names corresponding to the disputed domain names. Neither has the Complainant found anything, including any WhoIs details, that would suggest that the Respondents have been using LEGO in any other way that would give them any legitimate rights in the name. Consequently, sys the Complainant, the Respondents cannot claim any rights established by common usage. No license or authorization of any other kind, has been given by the Complainant to the Respondents to use the trade mark LEGO. Further, the Respondents are not authorised dealers of the Complainant’s products and have never had a business relationship with the Complainant and is not using any of the disputed domain names in connection with a bona fide offering of goods or services.
As set out above the Respondents note that various of the websites at the disputed domain names(<legobahis101.com>, <legobahis102.com>, <legobahis103.com>, <legobahis104.com>, <legobahis105.com>, <legobahis106.com>, <legobahis107.com>, <legobahis108.com>, <legobahis109.com>, <legobahis110.com>, and <legobahisbonus.com>) feature links to third-party websites and others namely, <legobahis102.com>, <legobahis105.com>, <legobahis106.com>, <legobahis107.com>, <legobahis108.com>, <legobahis109.com>, and <legobahis110.com> directly compete with Complainant’s business. The Complainant notes that prior UDRP decisions have consistently held that respondents that monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name. As no evidence has been found that the Respondents are using the name LEGO as a company name or has any other legal rights in the name, it is quite clear, according to the Complainant, that the Respondents are simply trying to benefit from the Complainant’s world famous trade mark and therefore have no rights or legitimate interest in respect of any of the disputed domain names.
The Complainant submits that the Respondents registered the disputed domain names during the timeframe March 25, 2020 to October 24, 2020, which period is many decades after the dates at which the Complainant registered the trademark LEGO in the United States, Jordan, Turkey, and elsewhere. The Complainant says that it is quite obvious that it is the fame of the trade mark that has motivated the Respondents to register the disputed domain names and that in the circumstances the Respondents cannot claim to have been using the trademark LEGO, without being aware of the Complainant’s rights to it.
The Complainant says that it first tried to contact the Respondents regarding the disputed domain names <legobahis6.com> and <legobahis7.com> on July 14, 2020, through a cease and desist letter sent by email and in spite of reminders it never received a response but subsequently discovered that the Respondents had registered another 12 of the disputed domain names.
Prior to receiving Complainant’s cease and desist letters says the Complainant, the disputed domain names, <legobahis6.com> and <legobahis7.com> were connected to commercial websites offering online gambling services and the disputed domain name <legobahis369.com> is currently connected to a website offering email marketing services, neither of which are related to Complainant in any way. The Complainant notes that “bahis” means “betting”. The Complainant submits that this amounts to use in bad faith in terms of paragraph 4(b)(iv) and 4(a)(iii) of the Policy.
The Complainant also notes that presently the disputed domain names <legobahis.com>, <legobahis6.com> and <legobahis7.com> all resolve to inactive sites and asserts that this amounts to passive holding in bad faith.
It says that the disputed domain names <legobahis101.com>, <legobahis102.com>, <legobahis103.com>, <legobahis104.com>, <legobahis105.com>, <legobahis106.com>, <legobahis107.com>, <legobahis108.com>, <legobahis109.com>, <legobahis110.com>, and <legobahisbonus.com> are connected to websites displaying sponsored links and the Complainant alleges that this amounts to bad faith conduct in terms of paragraph 4(b)(iv) of the Policy.
Further, says the Complainant, the fact that the Respondents have registered 15 domain names that each infringe upon Complainant’s LEGO well known trademark amounts to circumstances indicating that the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use in terms of paragraph 4 (b)(ii) of the Policy.
The Respondents did not reply to the Complainant’s contentions.
Consolidation - Multiple Respondents
Under section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the test applied by panels for consolidating a complaint with multiple respondents is stated as follows: “Where a complaint is filed against multiple respondents, 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.” The Complainant seeks to consolidate complaints against two respondents at three addresses located in Turkey.
The first three of the disputed domain names to be registered, namely <legobahis.com>, <legobahis6.com> and <legobahis7.com> are all registered to the same respondent. The other 12 disputed domain names were all registered by a different respondent only after the Complainant had sent a cease and desist letter to the owner of two of the original three disputed domain names. This coincidence together with the fact that there is a similarity in pattern and sequence between the disputed domain names in that all of them use the formula “legobahis”, and a substantial overlap between contact physical and electronic addresses given, servers used, registrars and in some cases privacy services supports the Complainant’s case for consolidation. For example, it appears to the Panel that all the physical addresses list exactly the same street address in the same town and province of Turkey even if some elements of the addresses include obviously incorrect numerals, figures or letters. The same email address appears for all 15 disputed domain names.
Overall, the Panel finds that these factors are indicative of likely common control of all of the disputed domain names. The Respondents have not sought to rebut this case and it is obviously procedurally efficient to consider all of the disputed domain names featuring the “legobahis” formula together. Accordingly, the Panel finds that Complaint’s case for consolidation is well founded and that the disputed domain names may all be considered together in these proceedings.
The Complainant has demonstrated that it owns registered rights for its LEGO trademark, in particular a Jordanian designation of International trade mark registration 16194 for LEGO registered on August 23, 1978, a Turkish trade mark registration 119057 for LEGO filed on April 28 1964 and granted on August 2, 1990 and a United States registration 1018875 for LEGO registered on August 26, 1975.
The disputed domain names each wholly incorporate the Complainant’s LEGO trade mark and are therefore each confusingly similar to the Complainant’s LEGO mark. The fact that they also incorporate elements such as the word “bahis” (which the Panel understands to mean “bet”) together with other numerals or common words such as “bonus” does not detract from this finding.
As a result, the Complaint succeeds under the first element of the Policy.
The Complainant has submitted that the Respondents do not appear to have any registered trademarks or trade names corresponding to the disputed domain names and that there is nothing to suggest that the Respondents have been using LEGO in any other way that would give them any legitimate rights in the name by common usage. The Complainant submits that it has not licensed or authorised the Respondents to use the trade mark LEGO and it has confirmed that the Respondents are not authorised dealers of the Complainant’s products and have never had a business relationship with the Complainant and are not using any of the disputed domain names in connection with a bona fide offering of goods or services. The Panel also notes that there is no evidence that the disputed domain names are being used for legitimate non-commercial or fair use reasons.
The Complainant has submitted that various of the websites at the disputed domain names, namely <legobahis101.com>, <legobahis102.com>, <legobahis103.com>, <legobahis104.com>, <legobahis105.com>, <legobahis106.com>, <legobahis107.com>, <legobahis108.com>, <legobahis109.com>, <legobahis110.com>, and <legobahisbonus.com> feature links to third-party websites that contain sponsored links. It notes that other disputed domain names, namely, <legobahis102.com>, <legobahis105.com>, <legobahis106.com>, <legobahis107.com>, <legobahis108.com>, <legobahis109.com>, and <legobahis110.com> feature links to sites that the complainant maintains directly compete with its business. The remainder of the disputed domain names being <legobahis.com>, <legobahis6.com> and <legobahis7.com> all appear to resolve to inactive websites.
The Complainant has submitted that prior UDRP decisions have consistently held that respondents that monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name. Further says the Complainant, as no evidence has been found that the Respondents are using LEGO as a company name or that they have any other legal rights in the name, it is quite clear that the Respondents are simply trying to benefit from the Complainant’s well known trademark and therefore have no rights or legitimate interest in respect of any of the disputed domain names.
The Panel finds that the Respondent has made out a prima facie case that the Respondents have no rights or legitimate interests in any of the disputed domain names. The Respondents have failed to respond or to rebut the case made out by the Complainant under this head. Accordingly, the Panel finds for these reasons and also as noted under Part C below, that the Complainant’s case succeeds under this element of the Policy.
The Respondents registered each of the disputed domain names during the timeframe March 25, 2020 to October 24, 2020. This was done many decades after the dates at which the Complainant registered the trademark LEGO in the United States, Jordan, Turkey and elsewhere. In view of the very high level of distinctiveness of the LEGO word mark and of the very significant degree of renown and fame attaching to the LEGO mark worldwide, as also confirmed by the many panels that have previously considered the LEGO mark in the context of UDRP complaints, the Panel finds that the Respondents must have known of the Complainant’s LEGO mark when they registered each of the disputed domain names.
Under paragraph 4(b)(iv) of the Policy the use of a disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of a web site or location or of a product or service on the web site amounts to evidence of registration and use in bad faith.
The Complainant has provided evidence that the disputed domain name <legobahis7.com> formerly re‑directed to a commercial gambling website under the brand name “Lego Bahis” which site appears to be in the Turkish language. It also asserted that the disputed domain name <legobahis6.com< re‑directed to a similar website but did not provide any evidence to support this claim. It has however provided evidence that these disputed domain names and Legobahis.com now all resolve to inactive websites.
The Complainant has also provided evidence that the disputed domain name <legobahis369.com> is currently connected to a website offering email marketing services and that the disputed domain names <legobahis101.com>, <legobahis102.com>, <legobahis103.com>, <legobahis104.com>, <legobahis105.com>, <legobahis106.com>, <legobahis107.com>, <legobahis108.com>, <legobahis109.com>, <legobahis110.com>, and <legobahisbonus.com> all resolve to parking websites that feature sponsored links. While some of the sponsored links relate to the Complainant, most are in relation to unrelated third-party businesses or competitors.
The Panel finds that the Respondents have or are using the disputed domain names <legobahis7.com>, <legobahis101.com>, <legobahis102.com>, <legobahis103.com>, <legobahis104.com>, <legobahis105.com>, <legobahis106.com>, <legobahis107.com>, <legobahis108.com>, <legobahis109.com>, <legobahis110.com>, and <legobahisbonus.com> to confuse Internet users in relation to the Complainant’s LEGO mark and to divert them to various websites for the Respondents’ own commercial purposes. This amounts to evidence of registration and use of each of these disputed domain names in bad faith under paragraph 4(b)(iv) of the Policy.
Under section 3.3 of the WIPO Overview 3.0 it is noted that past panels have found that the passive holding of a domain name can amount to bad faith in certain circumstances. Relevant factors to be considered 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.
In this case the disputed domain names <legobahis.com>, <legobahis6.com> and <legobahis7.com> all resolve currently to inactive sites and the Complainant asserts that this amounts to passive holding of these disputed domain names. Having considered the relevant factors, including the significant renown attaching to the LEGO mark worldwide, the Respondents’ failure to respond to the Complainant’s cease and desist letter or to these proceedings, the Respondents’ use of a privacy service to mask their identity and the implausibility of the Respondents’ right to use the highly distinctive and well known LEGO mark in relation to domain names that refer to betting or gambling with the addition of the term “bahis”, the Panel finds that the Respondents’ use of these disputed domain names amounts to passive holding in bad faith.
The Respondents registered 15 domain names over a period of almost seven months that each wholly incorporate the Complainant’s well known LEGO trademark. It is notable that the Respondents continued to register the disputed domain names even after the Complainant had sent its cease and desist letter in July 2020. In the Panel’s view this is also sufficient to amount to a pattern of conduct in which the Respondents sought to prevent the Complainant from reflecting its LEGO mark in in the disputed domain names in terms of paragraph 4(b)(ii) of the Policy. The Panel’s view of the Respondents’ bad faith is only reinforced by their attempt to mask their identity by using a privacy service.
For these reasons the Panel finds that the Respondents have both registered and used each of the disputed domain names in bad faith and the Complaint succeeds under this element of the Policy.
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, <legobahisbonus.com>, <legobahis.com>, <legobahis101.com>, <legobahis102.com>, <legobahis103.com>, <legobahis104.com>, <legobahis105.com>, <legobahis106.com>, <legobahis107.com>, <legobahis108.com>, <legobahis109.com>, <legobahis110.com>, <legobahis369.com>, <legobahis6.com>, and <legobahis7.com> be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: March 20, 2021