The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Domain Technicians, WorldInternetAuthority.com, Australia.
The disputed domain names <applelego.com>, <legoapple.com>, <legocunt.com>, <legofuck.com>, <legopen.com>, <legopened.com>, <legopening.com>, <legopenz.com>, <legosex.com>, <legoxxx.com>, <pornlego.com>, <sexlego.com> and <xxxlego.com> are registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2021. On May 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 10, 2021, 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 May 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2021. The Center received a communication from the Respondent by email on June 21, 2021.
The Center appointed Adam Taylor as the sole panelist in this matter on June 25, 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 has distributed construction toys and other products under the LEGO mark for many years. The Complainant’s products are sold in more than 130 countries.
The Complainant operates its main website at “www.lego.com”.
The Complainant owns numerous registered trade marks for the term LEGO including Australian Trade Mark No. 129258 registered on September 17, 1956, in class 28.
In a previous UDRP decision dated December 3, 2009, involving the same parties, the Respondent was found to have registered and used the following domain names in bad faith: <germanlego.com>, <legogiraffe.com>, <legogiraffepenis.com>, and <legopenis.com>. See LEGO Juris A/S v. World Internet Authority, WIPO Case No. D2009-1467 (“the First Case”).
The Respondent registered the disputed domain name <legopen.com> on October 22, 2018.
On January 30, 2021, the Respondent posted on a domain name forum: “Will I win the UDRP this time!”. The post was entitled “LegOpen.com” and it included a link to the decision in the First Case.
On the same date, January 30, 2021, the Respondent registered the disputed domain names <legopened.com>, <legopening.com>, and <legopenz.com>.
On February 11, 2021, the Respondent registered the disputed domain names <legocunt.com>, <legofuck.com>, <legosex.com>, <legoxxx.com>, <pornlego.com>, <sexlego.com> and <xxxlego.com>.
The Complainant sent a legal notice to the Respondent on March 16, 2021. On the same date, the Respondent posted the Complainant’s notice on the domain name forum and replied to the Complainant stating: “Please Advise On Trademarks With The Indexing Details And Word Constituents With The Dot Com (.COM) Suffix In The Title.”
On March 18, 2021, the Respondent registered the disputed domain names <applelego.com> and <legoapple.com>. On the same date, the Respondent stated in an email to the Complainant: “Please Advise On Trademarks LeGoAPPLe.com APPLeLego.com With The Indexing Details And Word Constituents With The Dot Com (.COM) Suffix In The Title.”
Following further correspondence with the Complainant, on March 22, 2021, the Respondent emailed the Complainant as follows:
“As previously stated.
Please Advise On All Trademarks With The Indexing Details And Word Constituents With The Dot Com (.COM) Suffix In The Title.
For example: ‘LegOpen.com’ would be the Trademark we would accept.
This applies et al.
Please peruse our first firm reply, and respond in Legal context outlining the said request.
Failure to do so will result in RDNH findings and recovery of Litigation costs involved.”
All of the disputed domain names have been used to resolve to a brief webpage inviting email contact for “[d]omain [n]ame enquiries, Internet [l]icences and [l]egal issues”.
The following is a summary of the Complainant’s contentions.
The Complainant’s trade mark is among the best-known trade marks in the world. Under trade mark law, protection for the Complainant’s famous trade mark applies to any products or services common not just those for which it is registered.
The disputed domain names are confusingly similar to the Complainant’s trade mark, which is the dominant part of each of the disputed domain names.
The disputed domain names include a range of prefixes and suffixes, which do not diminish the confusing similarity between the trade mark and the disputed domain names. The only common component is the Complainant’s trade mark.
Insofar as the disputed domain names <applelego.com> and <legoapple.com> include a third party trade mark, this is insufficient to avoid a finding of confusing similarity because the Complainant’s trade mark remains recognisable within the disputed domain name.
The inclusion of the Complainant’s trade mark within the disputed domain names gives rise to a considerable risk of confusion with the Complainant’s mark as well as of dilution or tarnishment, especially given the adult terms included in some of the disputed domain names.
The Respondent has no rights or legitimate interests in respect of the disputed domain names.
So far as the Complainant is aware, the Respondent does not own any registered trade marks corresponding to the disputed domain names. Nor has the Complainant found anything to suggest that the Respondent has been using the term “lego” in a manner that would give it legitimate rights in the disputed domain names.
The Complainant has not authorised the Respondent to use its trade mark.
Any use of a domain name that includes a famous trade mark is likely to infringe that mark.
The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, but simply to redirect Internet users to parked websites lacking content.
The disputed domain names were registered and are being used in bad faith.
It is obvious that the fame of the Complainant’s trade marks motivated the Respondent to register the disputed domain names, given that the Respondent had previously lost the First Case, that the Respondent registered <applelego.com> and <legoapple.com> after the Complainant’s legal notice, and the content of the Respondent’s forum post of January 30, 2021.
While the disputed domain names that include adult words are not presently being used for websites which target the Complainant, they may be used for adult websites in future. This would be a particularly unwelcome association for the Complainant’s mark given that the Complainant’s entire business is aimed at children.
The fact that the Respondent incorporated a well-known trade mark into the disputed domain names and its failure to respond properly to the Complainant legal letter are further evidence of bad faith.
Each disputed domain name constitutes a passive holding in bad faith.
The disputed domain names were registered and used to create a likelihood of confusion among Internet users in accordance with paragraph 4(b)(iv) of the Policy.
There is no plausible good faith use of the disputed domain names, particularly given the incorporation of adult terms into the disputed domain names.
The sheer number of infringing domain names registered by the Respondent, as well as the First Case, demonstrate that the Respondent has engaged in a pattern of cybersquatting.
The Respondent owns other domain names that misappropriate the trade marks of well-known brands and businesses including <androidid.com>, <aople.com>, <delotite.com>, <dirtydisney.com>, and <facebookxxx.com>.
The Respondent did not substantively reply to the Complainant’s contentions. In its email dated June 21, 2021 to the Center, the Respondent only stated “Please Advise On Trademarks With The Indexing Details And Word Constituents With The Dot Com (.COM) Suffix In The Title”.
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- the disputed domain names have been registered and are being used in bad faith.
The Complainant has established rights in the mark LEGO by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and longstanding use of that name.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s distinctive trade mark is readily recognisable within the following disputed domain names: <applelego.com>, <legoapple.com>, <legocunt.com>, <legofuck.com>, <legosex.com>, <legoxxx.com>, <pornlego.com>, <sexlego.com> and <xxxlego.com>. Accordingly, the addition of the various descriptive prefixes and suffixes, as well as the term “xxx”, signifying adult material, does not prevent a finding of confusing similarity.
As regards the disputed domain names: <applelego.com> and <legoapple.com>, it makes no difference if the additional term “apple” is treated as a third party trade mark rather than a descriptive term. That would also be insufficient to avoid a finding of confusing similarity. See section 1.12 of WIPO Overview 3.0.
As regards the disputed domain names <legopen.com>, <legopened.com>, <legopening.com> and <legopenz.com>, these could be read as comprising the Complainant’s mark plus the descriptive term “pen” and the meaningless terms “pened”, “pening” and “penz”. But, arguably, they more naturally denote the word “leg” plus the terms “open”, “opened”, “opening” and “openz”, respectively.
As explained in section 1.7 of WIPO Overview 3.0, the overall facts and circumstances of a case may support a finding of confusing similarity in certain situations, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant. The Panel has little doubt that is the case in relation to the disputed domain names <legopen.com>, <legopened.com>, <legopening.com> and <legopenz.com>, given the history of the Respondent’s activities vis-à-vis the Complainant set out in section 4 above including: the Respondent’s registration of at least 13 other domain names that undoubtedly targeted the Complainant’s mark; the nature of the Respondent’s forum post of January 30, 2021, alongside a reference to <legopen.com> and a link to the First case; and the fact that the Complainant registered the disputed domain names <legopened.com>, <legopening.com> and <legopenz.com> on the same day as the forum post.
Accordingly, it appears that the Respondent registered the disputed domain names <legopen.com>, <legopened.com>, <legopening.com>, and <legopenz.com> as a play on words in respect of the Complainant’s trade mark. In the Panel’s view, that suffices to constitute confusing similarity with the Complainant’s mark, particularly bearing in mind that the first element functions primarily as a standing requirement – see section 1.7 of WIPO Overview 3.0.
For the above reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain names for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
As there is no evidence of active use of the disputed domain names (i.e., other than use for a brief contact form), in the Panel’s view, it is appropriate to consider this case in the context of the principles of “passive holding”. Section 3.3 of the WIPO Overview 3.0 explains that, from the inception of the UDRP, panels have found 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.
In this case, the Panel considers that the following cumulative circumstances are indicative of passive holding in bad faith: (i) the distinctiveness and fame 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, and (iii) the implausibility of any good faith use to which the disputed domain names may be put.
In the Panel’s view, the circumstances outlined in section 4 above demonstrate clearly that the Respondent registered all of the disputed domain names by reference to the Complainant’s mark and with a view to illicitly profiting from, or tarnishing, the Complainant’s well-known mark. The relevant factors include the fact that the Respondent registered the disputed domain names after the adverse finding against it in the First Case, the Respondent’s forum post on January 30, 2021, and the registration of two of the disputed domain names, <applelego.com> and <legoapple.com>, shortly after the Complainant’s legal notice.
The Panel notes that the Respondent did not respond substantively to the Complainant’s initial legal notice or other communications. Instead, it replied with a number of similar, somewhat cryptic, statements. It appears from the final version on March 22, 2021, that the Respondent’s point was that certain of the disputed domain names were not referable to the Complainant’s mark because, despite wholly incorporating the Complainant’s mark, they were constituted by words with a meaning independent of the Complainant. However, as explained in section 6A above, the Panel considers that all of the disputed domain names were registered with reference to the Complainant’s trade mark, including the four disputed domain names that constitute a play on the Complainant’s mark.
For the above reasons, the Panel considers that the Respondent has registered and is using the disputed domain names in bad faith and that the Complainant has established the third element of paragraph 4(a) 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, <applelego.com>, <legoapple.com>, <legocunt.com>, <legofuck.com>, <legopen.com>, <legopened.com>, <legopening.com>, <legopenz.com>, <legosex.com>, <legoxxx.com>, <pornlego.com>, <sexlego.com>, and <xxxlego.com>, be transferred to the Complainant.
Adam Taylor
Sole Panelist
Date: July 9, 2021