The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Withheld for Privacy Purposes Privacy service provided by Withheld for Privacy ehf / Carolina Rodrigues, Panama.
The disputed domain name <legolaand.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2021. On June 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 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 July 9, 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 July 9, 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 July 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2021.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 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 LEGO Juris A/S is based in Denmark. The Complainant is the owner of the LEGO, LEGOLAND, and other trademarks used in connection with construction toys and other LEGO branded products. The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. The LEGO group has expanded its use of the LEGO trademark to computer hardware and software, books, videos and computer-controlled robotic construction sets.
The Complainant owns numerous registrations worldwide for the trademark LEGO, the earliest registration dating to 1954 (Danish Reg. No. VR 1954 00604, registered on May 1, 1954).
Furthermore, the Complainant is the owner of over 5,000 domain names containing the term LEGO and LEGOLAND.
The Respondent registered the Disputed Domain Name on February 5, 2021. The Disputed Domain Name resolves to a parking page which earns pay-per-click (PPC) revenue. In addition, the Complainant submitted evidence that the Respondent is offering for sale the Disputed Domain Name.
The Complainant contentions can be summarized as follows:
The Complainant states that the dominant part of the Disputed Domain Name comprises the words LEGO and LEGOLAND which are identical to the registered trademarks LEGO and LEGOLAND of the Complainant.
The Complainant further states that the fame of the trademarks has been confirmed in numerous previous UDRP decisions.
Furthermore, the Complainant states that the Disputed Domain Name varies from the Complainant’s trademark by the addition of the letter “a” in the middle of the Complainant’s LEGOLAND trademark.
Thus, the Disputed Domain Name must be considered a prototypical example of typosquatting.
Finally, the Complainant contends that the Disputed Domain Name must be considered confusingly similar to the Complainant’s LEGOLAND trademark.
Rights or legitimate interest
The Complainant states that the Respondent has no license or authorization of any other kind, to use the trademark LEGO or LEGOLAND.
Moreover, the Complainant contends that it is highly unlikely that the Respondent did not know of the Complainant’s legal rights in the LEGO and/or LEGOLAND trademark at the time of the registration.
The Complainant further alleges that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen a domain name based on registered trademarks in order to generate traffic and income through a website, which has sponsored links on it.
Finally, the Respondent is offering for sale the Disputed Domain Name in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the domain.
Registration and use in bad faith
The Complainant states that the Respondent registered and is using the Disputed Domain Name in bad faith.
The Complainant submits that the Respondent was aware of the rights the Complainant has in the trademarks, and the value of said trademarks, at the point of the registration of the Disputed Domain Name.
The Complainant further contends that typosquatting itself has been taken as evidence of bad faith registration and use by past Panels. The Disputed Domain Name is a slight misspelling of the Complainant’s LEGOLAND trademark, as well as its <legoland.com> domain name.
In addition, the Respondent is currently offering to sell the Disputed Domain Name, which constitutes bad faith.
What is more, the Respondent has previously been involved in over 300 UDRP decisions. This provides evidence of the pattern of cybersquatting in which the Respondent is engaging.
Finally, the Complainant alleges that there is no connection between the Respondent and the Complainant. By using the Disputed Domain Name, the Respondent is not making a legitimate noncommercial or fair use, instead is misleadingly diverting consumers for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements, which the Complainant must satisfy with respect to the Disputed Domain Name in this case:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the LEGO and LEGOLAND trademark as evidenced by its trademark registrations. Based on the evidence submitted, the Panel finds that the Disputed Domain Name <legolaand.com> is confusingly similar to the Complainant’s LEGO and LEGOLAND trademark. The addition of the letter “a” to the term land of the trademark represents a misspelling that does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark.
Moreover, the misspelling is hardly noticeable and results in a very minor modification of the Complainant’s trademark.
In this regard, this is a clear example of typosquatting. As section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
[…]
Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.”
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) Before any notice to you of the dispute, your use of, 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) You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) You are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the LEGO or LEGOLAND trademark in the Disputed Domain Name. The Complainant has prior rights over the LEGO and LEGOLAND trademark, which precede the Respondent’s registration of the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contention.
As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has used its well-known trademarks long before the Disputed Domain Name was registered on February 5, 2021.
In light of this, the Respondent had evidently knowledge of the Complainant’s LEGO and LEGOLAND trademark when it registered the Disputed Domain Name.
The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant’s LEGO trademark when registering the Disputed Domain Name and it has intentionally created likelihood confusion with the Complainant’s trademark in order to attract Internet users for its own commercial gain.
Moreover, the Respondent has been involved in several previous domain name disputes, and has been ordered to transfer domain names to their legitimate owners.
The fact that the Disputed Domain Name is offered for sale, demonstrates that the Respondent has registered the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant, who is the owner of the LEGO trademark, or to a competitor of the Complainant. All of this for valuable consideration in excess of any documented out-of-pocket costs directly related to the Disputed Domain Name, according to paragraph 4(b)(i) of the Policy.
Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and is using the Disputed 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 Disputed Domain Name <legolaand.com> be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: September 8, 2021