WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Mazen Alali

Case No. D2021-4145

1. The Parties

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

Respondent is Mazen Alali, Jordan.

2. The Domain Name and Registrar

The disputed domain name <lego-app.com> is registered with FastDomain, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2021. On December 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 17, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was January 6, 2022. Respondent submitted a response on January 6, 2022. The Center sent an acknowledgement of Receipt of the Response on January 7, 2022.

The Center appointed José M. Checa as the sole panelist in this matter on January 26, 2022. 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

Complainant is the owner of the LEGO brand used in connection with construction toys and other products, such as computer hardware and software, books, videos and computer controlled robotic construction sets.

Complainant also owns trademark registrations around the world, including Jordan, where it has registered Jordanian Trademark No. 16194 for LEGO in class 28 (registration date August 23, 1978).

Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Jordan. Complainant also maintains an extensive website under the domain name <lego.com>.

The disputed domain name was registered on April 11, 2021 and at the time of drafting this decision, it is inactive.

5. Parties’ Contentions

A. Complainant

Complainant has provided evidence of trademark registrations for the LEGO mark around the world.

Complainant is based in Denmark and it is the owner of LEGO and all other and all other trademarks used in connection with the famous LEGO branded construction toys and other LEGO branded products. The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. The LEGO trademark is among the best-known trademarks in the world, due in part to decades of extensive advertising, which depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.

The LEGO trademark has been recognized and has been included in, for instance, the official Top 10 Consumer Superbrands for 2019, provided by Superbrands UK, showing LEGO as number 1 Consumer Superbrand and number 8 in the Consumer Relevancy Index; the Reputation Institute, recognizing the LEGO Group as number 1 on its list of the Top 10 Most Reputable Global Companies of 2020, having been on its top 10 list for 10 consecutive years; and TIME (2014), announcing LEGO to be the Most Influential Toy of All Time.

The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.

Complainant claims that the LEGO trademark is well-known in accordance with Article 6bis of the Paris Convention and, as such, it is entitled to prevent any use in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO goes far beyond toys and goods similar to toys.

According to the Complaint, the disputed domain name is confusingly similar to the LEGO trademark as it is the dominant part of the disputed domain name, the addition of the term “-app” being insufficient to avoid similarity (if anything, it may actually increase the likelihood of confusion with the Complainant, since LEGO offers mobile and gaming apps based on kids’ favourite LEGO themes, from LEGO DUPLO to LEGO City). The addition of the generic Top-Level-Domain (“gTLD”) “.com” to the disputed domain name is irrelevant to the confusingly similar analysis.

Respondent is neither affiliated with, nor has it been licensed or authorized to use Complainant’s LEGO mark. Complainant confirms that it has no legal relationship with Respondent and that Respondent is not commonly known by the disputed domain name. Complainant submits evidence that since the disputed domain name was registered, either, it was inactive (resolving to a parked hosting page lacking content) or it included links to businesses unrelated to the Complainant. Either way, Complainant argues that Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name.

Complainant further adds that Respondent – given the fame of Complainant’s LEGO mark – was or should have been aware of the LEGO trademark prior to registering the disputed domain name. Complainant further argues that use of the disputed domain name to offer app development services unrelated to Complainant – as it was the case for a period of time – amounts to bad faith in accordance with paragraph 4(b)(iv) of the Policy; the current use of the disputed domain name (parked hosting page lacking content) amounts to passive holding.

Complainant also provides evidence of its communications with Respondent and how, while initially agreeing to transfer the domain name, Respondent finally decided not to.

B. Respondent

Given that the Response is relatively short, the Panel reproduces it herein below verbatim:

“I am Mazen Al Ali owner of the domain “lego-app.com” and am doing this response with full responsibility of the result it may takes, the compliant is claiming that am violating a trademark copyrights which is the name “Lego” as I have registered a domain name as “lego-app.com” the question is why did I used the name “Lego” and what does it mean in my country?, I am working on a project with the idea of building applications using drag and drop technology and I have already sent all the documentation of the project to the CSC Global party while I was thinking about the project’s name I have remembered the game most of us was playing as kids which is “Lego” since this game have the concept of drag and drop or building using small cubes (components) I did came up with the idea of using the name “Lego” as it provides the same concept am using in my project, before I register the name I have opened translate.google.com and typed in English (Lego) to check what does it mean in my language so google translated it to (التركيب ألعاب (which literally means (puzzle games or installation games). So from that moment I was certain that Lego word is a word used to describe the activity of building and installation using small components such as the cubes. When I received the compliant letter I tried to explain that my project is built according to what word Lego means not as a trademark, also am not using the word Lego alone I have combined it with “App” so it becomes “LegoApp” a combined words, so I have searched for domain names and found the best and suitable one is “lego-app.com” I am still working on my project and finishes already the first phases of it with the hope of making mobile applications building easier for everyone, I never used this name with the intention of selling with the evidence of fully documented presentation about the project plan and budgeting that already sent to CSC Global and now I have small functional model about it too and waiting for investments that already negotiating me about it, so after receiving the compliant I have asked bluehost.com company’s support if I need to transfer and told me (no one’s right to take your domain as we are the one sold it to you also we cannot take it since you own it now) also got screen shot taken to prove this conversation. And from that moment I decided to fight for my domain name and to not change my project’s combined name “LegoApp” and already I am convinced after searching from several sources on the internet that “Lego” word is used as a concept and not as company’s name or trademark. So hopefully I complete my project with the name, theme, logo and design I already tired and paid a lot for it and its far from “Lego” company’s theme and name since my project’s name is “LegoApp” combined not only “Lego”.”

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has provided evidence of its trademark registrations for LEGO establishing clear trademark rights around the world.

The Panel finds that for the purpose of considering whether the disputed domain name is identical or confusingly similar to Complainant’s marks, the gTLD “.com” should be disregarded WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (WIPO Overview of 3.0), section 1.11.1. Thus, on a side-by-side comparison, Complainant’s entire LEGO mark is included at the beginning of the disputed domain name, it is the dominant part, and it is fully recognizable. Therefore, the Panel disagrees with Respondent that the addition of the term “-app” (which, according to Respondent, is the short form for “mobile applications”) renders the disputed domain name and the LEGO mark non-confusingly similar (WIPO Overview 3.0, section 1.8).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s LEGO trademark as required by paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has put forward unrebutted assertions that it has not granted any license or authorization to Respondent to register the disputed domain name or otherwise make use of its trademark, or that Respondent is not commonly known by the disputed domain name.

The fact that the disputed domain name is inactive cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, particularly where a famous trademark is fully incorporated in the disputed domain name along with an additional term related to or connected with Complainant’s activities (WIPO Overview 3.0, section 2.5.1).

The Panel considers that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests to the disputed domain name (WIPO Overview 3.0, section 2.1).

In its Response, Respondent did not challenge Complainant’s assertions, but instead provided its rationale to choosing the disputed domain name. However, after careful review by the Panel of the arguments put forward by Respondent, the Panel finds that Respondent explicitly sought affiliation with Complainant by choosing to register a domain name that included Complainant’s famous trademark. Pursuing a business based on Complainant’s building blocks concept does not give Respondent any right to take or legitimate interest over Complainant’s trademark.

Further, the search for investors and the way Respondent explained its project suggest Respondent’s intended use of the disputed domain name is (or will be) “commercial” in nature. This fact coupled with the deliberate attempt to seek affiliation with Complainant’s name and brand renders paragraph 4(c)(iii) of the Policy inapplicable.

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that LEGO is a global brand which is protected in many countries around the world, including Jordan, where Respondent is located. The Panel further acknowledges that many UDRP decisions have considered LEGO a famous brand.

It is important to note from the outset that, Respondent knew that LEGO was a widely spread trademark belonging to Complainant. This is supported when he states in his Response that, when selecting the name for this project, he “remembered the game most of us was (sic) playing as kids which is Lego”. Respondent states: “I was certain that Lego word is a word used to describe the activity of building and installation using small components such as the cubes”.

Respondent’s argument fails. First, because he knew that LEGO was a proprietary name and still he decided to register it as a domain name to take advantage of the association that the disputed domain name would create in the perception of Internet users. It may be that LEGO is included in a number of online dictionaries e.g., thefreedictionary.com, Collins, Larousse, Duden. However, including a trademark in a dictionary does not amount to such trademark automatically becoming available for third-party appropriation. See Velcro BVBA v. Monali Mohanty, Velcroelectricals, WIPO Case No. D2018-0635 (“Thus, citing the “dictionary” meaning of “Velcro” does not support the Respondent’s argument.”) and Velcro Industries B.V., Velcro USA Inc. v. Chung, Mitch, WIPO Case No. D2007-1263 <velcro.biz> in a similar sense. Third, the Panel also notes that Google Translate (not an online dictionary, but a translation tool based in artificial intelligence) includes, next to the translation for LEGO, another entry for LEGO as a “Noun” and such reference is capitalized i.e., “Lego”, which signals that it is a proprietary name (as opposed to other ordinary words under the “Noun” category that are not capitalized).

While online dictionaries and translation tools have become increasingly useful in providing the meaning of terms in many languages, their entries should be taken with caution as a basis for registering a domain name incorporating a global brand. The Panel is certainly not suggesting an investigation should be carried out on a regular basis before registering domain names, but the Panel finds that, in this case, there is an inference to be made that the Respondent knew or should have known the name in question may be proprietary as a trademark. If the Respondent had some doubts on whether LEGO was or could have been a trademark, any cursory investigation from Respondent would have confirmed the reputation of the LEGO brand.

According to the Response, Respondent intended to register the concept, not the brand. In the opinion of the Panel, Respondent had many combinations available to reflect the concept, but decided to register the disputed domain name (in Respondent’s own words: “so I have searched for domain names and found the best and suitable one is “lego-app.com”). Respondent did so because he knew that, with a domain name incorporating LEGO, he would be able to attract more Internet users to his website and his project, which in view of the Panel, results in a clear cybersquatting intent.

The Panel is of the view that the addition of the term “-app”, does not change the above conclusions. As Complainant points out, if any, use of such term would further reaffirm those conclusions since Complainant offers mobile and gaming apps based on kids’ favorite LEGO themes, such as LEGO DUPLO and LEGO City.

Accordingly, the Panel finds that Respondent by registering the disputed domain name, which includes Complainant’s trademark is seeking to create an implied affiliation with the Complainant and its trademark, where there is none. The Panel finds that the Respondent registered the disputed domain name in the knowledge of the Complainant’s LEGO trademark and brand, and with the intention of taking unfair advantage of the Complainant’s goodwill attaching to that trademark.

In addition, the Panel finds Respondent’s contentions justifying the selection of the disputed domain name not credible as they seem to be contradictory at times. For example, in an exchange of emails with Complainant prior to the starting of proceedings, Respondent stated: “Or if you have no interest in investing this project as a LEGO trademark project I would surely change the name and not use it for your rights.” (Email of Respondent of May 13, 2021). While Respondent initially acknowledges Complainant’s rights to the disputed domain name, he later changes his mind about not using it once he learns the investment from Complainant would not happen. In the opinion of the Panel, these swings in Respondent’s behavior suggest that Respondent’s real intention when registering the disputed domain name was to capitalize on it at some point, either by drawing the attention of Complainant as a potential investor or in another illegitimate way (e.g., in an email to the Center on December 22, 2021, Respondent said: “I will evaluate and ask about the value of my domain and will sell it to you” despite stating in his response, several days later: “I never used this name with the intention of selling [it]”). See Facebook, Inc. v. Igor Dolgalev, WIPO Case No. D2012-1008 (“The Panel finds that Respondent registered what he knew to be an increasingly valuable Domain Name and likely decided to hold it until a lucrative offer to buy it came his way or until he could figure out a way to exploit it for gain. On the record here, the Panel concludes, in the words of the Telstra panel, that “it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate.”)

In view of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith in accordance with 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, <lego-app.com> be transferred to the Complainant.

José M. Checa
Sole Panelist
Date: February 21, 2022