WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Super Privacy Service LTD c/o Dynadot / Song lan
Case No. D2021-1814
1. The Parties
The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB., Sweden.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Song lan, China.
2. The Domain Name and Registrar
The disputed domain name <legokand.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2021. On June 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 10, 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 June 15, 2021.
The Center verified that the Complaint 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 June 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2021
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on August 2, 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 a Danish company, which is in the business of making and selling construction toys and other products and services branded under the trademarks LEGO and LEGOLAND. The Complainant has expanded its use of the LEGO mark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets, and its LEGOLAND mark is used regarding, inter alia, theme parks, hotels, entertainment, sporting and cultural activities. Per Complaint, the Complainant has subsidiaries and branches throughout the world, its products are sold in more than 130 countries (including China), and its LEGOLAND theme parks have about 1.4 million visitors per year.
The Complainant has provided details of multiple trademark registrations for LEGO and for LEGOLAND, which provide protection in many jurisdictions including China (where the Respondent is apparently located according to the Registrar verification). In China, the Complainant owns China Trademark Registration No. 10176415, LEGO, registered on January 14, 2013, in Class 43; and China Trademark Registration No. 257147, LEGOLAND, registered on July 30, 2016, in Class 28.
Prior decisions under the Policy have recognized the reputation of the Complainant’s trademarks LEGO and LEGOLAND.1
The Complainant further owns numerous domain names comprising its trademarks LEGO and LEGOLAND, including <lego.com> (registered on August 22, 1995) and <legoland.com> (registered on August 4, 1998), which are linked to its respective corporate websites for the goods and services related to these marks.
The disputed domain name was registered on December 31, 2020, and it is currently apparently inactive resolving to a browser error message. According to the evidence provided by the Complainant, the disputed domain name was linked to a website featuring various links to third party websites or pay-per-click (“PPC”) links related to various sectors including customized bubbleheads, as well as education and vacation packages.
The Complainant sent a cease and desist letter to the Respondent on February 2, 2021 (though the company providing privacy registration services for the registration of the disputed domain name), as well as several subsequent reminders. The Respondent did not reply to these communications.
5. Parties’ Contentions
A. Complainant
Key contentions of the Complaint may be summarized as follows:
The trademarks LEGO and LEGOLAND are well-known worldwide.
The disputed domain name is confusingly similar to the Complainant’s trademarks, as it comprises LEGO and LEGOLAND, being a purposeful misspelling of the LEGOLAND trademark. The disputed domain name replaces the letter “l”, included in the middle of the trademark LEGOLAND with the letter “k”, which is adjacent and next to the letter “l” key on a standard computer keyboard. The disputed domain name therefore consist of an obvious misspelling of the Complainant’s trademark being a typical case of typosquatting. The generic Top-Level Domain (“gTLD”) “.com” is irrelevant to determine the confusing similarity between the Complainant’s trademarks and the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. No evidence has been found that the Respondent has any trademark or trade name corresponding to the disputed domain name, or has any other legal right in the name “legokand”. The Respondent has not been authorized to use the trademarks LEGO and LEGOLAND, due to the fame of these trademarks it cannot claim being unaware of the Complainant’s rights, and the disputed domain name is not used in connection with a bona fide offering of goods or services. The disputed domain name was intentionally chosen targeting the Complainant’s trademarks to mislead Internet users, generate traffic and income through a website containing sponsored links, trying to benefit from the Complainant’s world famous trademarks.
The disputed domain name was registered and is being used in bad faith. The Respondent did not reply to the cease and desist communications, and typosquatting itself is an evidence of bad faith, as the Respondent is attempting to capitalize on typing errors committed by the Complainant’s customers in trying to locate the Complainant on the Internet, generating traffic to a commercial website with sponsored ads. The disputed domain name is used to intentionally attempt to attract Internet users to the Respondent’s website for commercial gain, being irrelevant whether or not the Respondent has influenced what links should be included on this website, and whether or not the Respondent is actually getting revenue from this website. The Respondent is at all times in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page. The Respondent is engaged in a bad faith pattern of cybersquatting, being involved in prior cases under the Policy.2 An additional circumstance that corroborates the Respondent’s bad faith is the use of a privacy service to hide its identity.
The Complainant has cited previous decisions under the Policy, as well as various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position, and requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Identical or Confusingly Similar
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. Additionally, a domain name consisting of a common, obvious, or intentional misspelling of a trademark, containing sufficiently recognizable aspects of that mark, is considered confusingly similar to the relevant mark for the purposes of the first element, and employing a misspelling in this way normally signals an intention to confuse users seeking or expecting the complainant. Furthermore, the applicable gTLD in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, 1.9, and 1.11, WIPO Overview 3.0.
The Complainant indisputably has rights in the registered trademarks LEGO and LEGOLAND, both by virtue of its numerous trademark registrations around the world and as a result of the goodwill and reputation. The disputed domain name incorporates these trademarks in their entirety altering one of the letters included in the trademark LEGOLAND, substituting the letter “l” with a letter “k”, which may be considered a common misspelling that may easily go unnoticed not avoiding the direct perception of the trademark being reproduced in the disputed domain name. The Complainant’s trademarks LEGO and LEGOLAND are recognizable in the disputed domain name, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity.
Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that demonstrating a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.
The Complainant’s above-noted assertions and evidence in this case effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the disputed domain name.
The disputed domain name incorporates the Complainant’s trademarks LEGO (with no alteration) and LEGOLAND (with a sole common misspelling, substituting the letter “l” with the letter “k”). The altered letter used in the disputed domain name “k” is next and adjacent to the letter “l” in any standard Roman alphabet keyboard. Therefore, the Panel considers that such alteration may be a common misspelling, which points to an intention to confuse Internet users seeking for or expecting the Complainant.
The Panel further considers that the Complainant has made out a strong prima facie case that the Respondent could not have rights or legitimate interests in the disputed domain name, not being authorized to use the trademarks LEGO and LEGOLAND, and that the disputed domain name has been used in connection to a website displaying PPC links to third parties’ websites (some related to the toy industry, like “customized bubbleheads”), which cannot be considered a legitimate interest.
The Panel further notes that the Respondent’s name provided in the registration of the disputed domain name was concealed under a privacy registration service, and have no resemblance with “lego”, “legoland”, or the term corresponding to the disputed domain name “legokand”.
Furthermore, the Panel considers remarkable that the disputed domain name is apparently inactive resolving to a page with an Internet browser error message, and that the Respondent has chosen not to reply to the cease and desist letter and subsequent reminders nor to the Complaint. These circumstances leads the Panel to consider that the Respondent’s reaction to this Complaint has been taken down the website that was linked to the disputed domain name.
All the above-mentioned circumstances lead the Panel to conclude that nothing in the case file gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel notes the well-known character worldwide of the Complainant’s trademarks, which has been recognized by previous decisions under the Policy.3
The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:
(i) the disputed domain name incorporates the Complainant’s trademarks in their entirety, with a sole common misspelling (substituting the letter “l” in the term “legoland” with a letter “k”, which is adjacent and next to the letter “l” in any standard Roman alphabet keyboard), which enhances the intrinsic likelihood of confusion;
(ii) the Complainant’s trademarks are well-known worldwide and the Complainant operates internationally, including in China (where the Respondent is apparently located according to the Registrar verification);
(iii) according to the evidence provided by the Complainant, the disputed domain name has been linked to a website displaying PPC links to third parties’ websites (some of them in sectors related to the Complainant business);
(iv) the Respondent used a privacy registration service; and
(v) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name, and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint, and apparently taking down the website that was linked to the disputed domain name.
It is further remarkable that apparently, the same Respondent has been involved in at least five prior cases under the Policy, all of them resolved against the Respondent (with the transfer of the disputed domain names to the respective Complainants), and being all but one related to clear typosquatting cases.4 The Panel considers that these circumstances point to a pattern of bad faith registration and use of domain names, and, particularly, a pattern of typosquatting (incorporating reputed trademarks with common misspellings).
It is further to be noted that the current non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3, WIPO Overview 3.0.
In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel considers that the disputed domain name was registered and is being used targeting the trademarks LEGO and LEGOLAND in bad faith, with the intention of free riding on the established reputation of the Complainant’s trademarks by intentionally misleading third parties, in order to generate traffic to a promotional PPC links website with a commercial purpose.
Furthermore, the Panel considers that the Respondent has been engaged in a bad faith pattern of conduct in registering various domain names targeting reputed trademarks with no legitimate interest. See section 3.2.1, WIPO Overview 3.0.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain names have been 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 disputed domain name <legokand.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: August 13, 2021
1 With reference to the well-known character of the LEGO trademark, see inter alia: LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680; LEGO Juris A/S v. M. Moench, WIPO Case No. DNL2009-0052; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; LEGO Juris A/S v. Kim S J, WIPO Case No. D2014-0884; and LEGO Juris A/S v. Moshe Cohen / Funtasia Trade Ltd, WIPO Case No. D2019-2478.
With reference to the well-known character of the LEGOLAND trademark, see inter alia: LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692; LEGO Juris A/S v. Domainproxyagent.com and Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0381; and LEGO Juris A/S v. PHU C.N.O. Justyna Niedzielska, WIPO Case No. DEU2021-0001.
2 The Complainant cites the following cases under the Policy: Compagnie Générale des Etablissements Michelin v. Super Privacy Service LTD c/o Dynadot / Song Lan, WIPO Case No. D2021-0920; Corning Incorporated v. song lan, WIPO Case No. D2021-0367; Vente-Privee.Com v. Super Privacy Service LTD c/o Dynadot / song lan, WIPO Case No. D2021-0279;
3 See footnote 1 supra.
4 See footnote 2 supra.