WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-2659

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States” or “U.S.”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Names and Registrar

The disputed domain names <legosore.com> and <legosyore.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2021. On August 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 16, 20201, 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 August 17, 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 August 18, 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 August 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2021.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on September 24, 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, LEGO Juris A/S, a limited company incorporated in Denmark, is the owner of the LEGO trademark and of all other trademarks used in connection with the LEGO branded construction toys and other LEGO branded products. The LEGO products are sold in more than 130 countries.

The Complainant is the owner of a very large number of LEGO trademark registrations, amongst which:

- The U.S. trademark LEGO with registration No. 1018875 filed September 17, 1974 and registered August 26, 1975, covering “toy building blocks and connecting links for the same, sold separately and as kits for construction of toy houses, buildings, household furnishings, robots, doll figures and vehicular toys” in International Class 28 and U.S. Class 22;

- The European Union trademark LEGO with registration No. 000039800 filed April 1, 1996 and registered October 5, 1998, covering a large variety of goods and services, amongst which “games and playthings” in International Class 28.

The LEGO trademark is a very well-known trademark, due to several decades of extensive use. The Complainant has invested very important resources in advertising. LEGO has been recognized Number 1 Consumer Superbrand of 2019 by Superbrands UK, and Number 1 of the world’s Top 10 Most Reputable Global Companies of 2020 (see annex 6.1 and 6.2. of the Complaint).

The Complainant has over time expanded its use of the LEGO trademark, amongst others, to 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 term LEGO and maintains an extensive website under the domain name <lego.com>.

The disputed domain names <legosore.com> and <legosyore.com> were registered on September 1, 2020 and August 26, 2020 respectively. According to the evidence provided by the Complainant, the disputed domain names were firstly redirected to Registrar parking pages where they were being offered for sale. At the time of this decision, the disputed domain names are offered for sale on “www.sedo.com”, and redirect Internet users to websites that resolve to blank pages and lack content.

5. Parties’ Contentions

A. Complainant

On the merits, the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the dominant part of the disputed domain names comprises the distinctive sign LEGO, identical to the registered trademarks and domain names owned by the Complainant which are internationally known.

The Complainant maintains that the similarity is altered neither by the suffixes “syore” and “sore”, as those do not detract from the overall impression, nor by the addition of the generic Top-Level Domain (“gTLD”) “.com”, which is viewed as a standard registration requirement and is irrelevant to determine the confusing similarity.

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that nothing indicates that the Respondent has been using LEGO in any way that would provide rights or legitimate interests in any of the names. The Respondent has no rights of common usage of the name LEGO and has never been given any license or authorization of any other kind by the Complainant.

The Complainant further asserts that it is highly unlikely that the Respondent did not know of the Complainant’s longstanding legal rights in the name LEGO at the time of the registration.

The Respondent was not and is not using the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names are offered for sale, and are linked to websites that resolve to blank pages and lack content.

The Complainant asserts that due to the well-known and reputable character of the LEGO trademark, domain name registrations comprising that trademark in combination with other words have always been attractive to infringers.

Furthermore, the fact that the disputed domain names are presently offered for sale would make it apparent that the Respondent has registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names. At present, the disputed domain names resolve to inactive websites and are not being used, which can also constitute a factor in finding bad faith registration.

The fact for the Respondent to have hidden its identity and to not have answered to the cease and desist letters sent by the Complainant prior to this proceeding, would serve as further evidence of bad faith registration and use.

Finally, the Complainant highlights that the Respondent has been previously involved in multiple UDRP disputes due to its trademark-abusive domain name registrations.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to LEGO, which precede by several decades the disputed domain names. This Panel agrees with the previous UDRP decisions cited by the Complainant and confirming the well-recognized and world famous character of the LEGO trademark(s) (see LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; LEGO Juris A/S v. Reginald Hastings Jr., WIPO Case No. D2009-0680).

Secondly, the disputed domain names contain the trademark LEGO, in which the Complainant has earlier rights. The addition of the terms “sore” and “syore” do not constitute elements so as to avoid confusing similarity for purposes of the Policy. As the disputed domain names incorporate the entirety of the LEGO trademark, they shall be considered confusingly similar to them for purposes of UDRP standing (see Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)),

Finally, this Panel finds that the relevant comparison is made between the second level portion of the disputed domain names only, and that the gTLD is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see Section 1.11 of WIPO Overview 3.0).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain names are confusingly similar to the Complainant’s LEGO trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain names for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) 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 mark at issue.”

It is a well-established view of previous UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (see Aguas de Cabreiroa, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.>

This Panel retains notably the following considerations:

- There is no evidence that the Respondent has been commonly known by the disputed domain names;

- The Respondent has not been granted a license or authorization of any kind by the Complainant (see Guerlain S.A. v.Peikang, WIPO Case No. D2000-0055), and has never had a business relationship with the Complainant (see Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312);

- The Respondent offers the disputed domain names for sale on “www.sedo.com”, with minimum offers starting at USD 500 and USD 899 respectively, which clearly exceed the Respondent’s out-of-pocket expenses in registering the disputed domain names. This Panel agrees with the previous UDRP decisions according to which such use does not constitute a legitimate noncommercial or fair use and further evidences the Respondent’s lack of rights and legitimate interests in the disputed domain names (see Spirig Pharma AG v. Whois privacy services, provided by DomainProtect /Alexander Zinovjev, WIPO Case No. D2014-1612; Kabushiki Kaisha ASICS v. SC Gaticonstruct, WIPO Case No. DRO2008-0010).

- The Respondent is using the disputed domain names to redirect Internet users to websites that resolve to blank pages and lack content. The Respondent has failed to make use of the disputed domain names and has not demonstrated any attempt to make legitimate use of them; he passively holds them (see Washington Mutual, Inc. v. Ashley Khong, WIPO Case No. D2005-0740).

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Each one of the four circumstances in paragraph 4(b) of the Policy, if found, would individually be an instance of “registration and use of a domain name in bad faith”.

A registration in bad faith occurs, inter alia, where the respondent knew or should have known of the registration and use of the trademark(s) prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain names several decades after the Complainant started using and registered the LEGO trademark. As the Complainant rightly states, the awareness of the trademark LEGO is considered, in the community in general, to be significant and substantial. In those circumstances, it would be disingenuous for the Respondent to claim that it was unaware that the registration of the disputed domain names would violate the Complainant’s rights. The considerable value and goodwill associated with the LEGO trademark make it very attractive to third party infringers as demonstrate the numerous cases cited by the Complainant. It is very likely that the Respondent also attempted to capitalize on the goodwill attached to the LEGO trademark and to disrupt the Complainant’s business, according to Policy, paragraphs 4(b) (iii) and (iv).

This finding is confirmed by the following facts:

- The Respondent, at the time of initial filing of the Complaint, has employed a privacy service to hide its identity (see Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc., WIPO Case No. D2003-0230);

- The Respondent has not responded to the cease and desist letters sent by the Complainant prior to the proceeding (see News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623);

- The Respondent has been previously involved in multiple UDRP disputes due to its trademark violating domain name registrations. The undisputed evidence of the Complainant shows a list of more than a hundred cases against the Respondent, who is undoubtedly engaged in a pattern of “cybersquatting”;

- The disputed domain names <legosore.com> and <legosyore.com> can be considered as containing a common, obvious, or intentional misspelling of the domain name <legostore.com> which is owned by the Complainant since 2002. The “t” of the word “store” has been left out or replaced by the adjacent keyboard letter “y”. This misspelling confirms the intention on the part of the Respondent to confuse Internet users seeking or expecting the Complainant;

- The disputed domain names are not been used, but have only been passively held (see Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, WIPO Case No. D2000-1228).

Furthermore, the fact that the disputed domain names had been offered for sale on Registrar parking pages, and are currently offered for sale on “www.sedo.com”, with minimum offers starting at USD 500 and USD 899 respectively, exceeding the Respondent’s out-of-pocket expenses in registering the disputed domain names, demonstrate bad faith according to Policy, paragraph 4(b)(i) (see Groupe Auchan v. Bui Tan Dat / Domain ID Shield Service Co., Limited, WIPO Case No. D2014-1935; Caldsoft Way3D Sistemas Eireli EPP v. JInsoo Yoon, WIPO Case No. D2016-2514).

In light of the undisputed evidence provided by the Complainant, the Panel is satisfied that the disputed domain names were registered and are being used in bad faith.

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 names, <legosore.com> and <legosyore.com>, be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: October 8, 2021