WIPO Domain Name Decision D2016-1313 for legofrozencastle.com, legojurassicworldsets.com, legosantasworkshop.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Tara Meier Case No. D2016-1313 1. The Parties

The Complainant is LEGO Juris A/S with an address in Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Tara Meier of Belfair, Washington, United States of America. 2. The Disputed Domain Names and Registrar

The disputed domain names are , and . The disputed domain names are registered with L Inc. (the “Registrar”). 3. Procedural History

According to the information and documents provided by the WIPO Arbitration and Mediation Center (the “Center”), the history of this proceeding is as follows:

- The Complaint was filed with the Center on June 28, 2016.

- On June 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 4, 2016, the Registrar transmitted by email to the Center a verification response confirming that the Respondent is listed as the registrant of each of the disputed domain names and providing the Respondent’s contact details.

- The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution effective July 31, 2015 (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy effective July 31, 2015 (the “Supplemental Rules”).

- In accordance with Rules paragraphs 2(a) and 4, on July 14, 2016 the Center formally notified the Respondent of the Complaint, and this proceeding commenced on that date. The Center advised the Respondent that, in accordance with Rules paragraph 5, the due date for a Response to the Complaint was August 3, 2016.

- On July 31, 2016, the Center received an email from a person with the first name “Tara”, sent from an email address that included the Respondent’s name, that expressly referred to this proceeding and the disputed domain names, had the subject “Domains Canceled: Dispute # D2016-1313” and stated as follows: “These domains have already been canceled and are not in use anymore. They have been canceled for awhile [sic]. So please quit contacting me and writing me about them. – Tara”.

- The Respondent did not file a Response by the specified due date or at any time thereafter. The Center sent a Notification of Respondent Default to the Respondent on August 8, 2016.

- The Center appointed Bradley J. Freedman as the sole Panelist in this proceeding on August 12, 2016. The Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rules paragraph 7.

Based on the information and documents provided by the Center, the Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules, and that all technical requirements for this proceeding have been met. 4. Language of Proceeding

The language of the registration agreement for the disputed domain names is English. Consequently, the language of this proceeding is English. (See Rules paragraph 11(a).) 5. Factual Background

The following information is derived from the Complaint and supporting evidence submitted by the Complainant, information provided by the Center, and the Panel’s review of the websites to which the disputed domain names currently resolve, as described below:

- The Complainant is a Danish limited company with its principal place of business in Billund, Denmark. The Complainant is the owner of the LEGO trademark used in connection with the famous LEGO brand of construction toys and other LEGO-branded products.

- The Complainant is the registered owner of numerous registrations for the LEGO trademark in various countries throughout the world. In particular, the Complainant is the registered owner of the LEGO trademark registered on June 3, 2008 in the United States of America (the jurisdiction in which the Respondent resides), under registration no. 3440699, for use in association with various goods and services, including online retail and other services relating to toys, games, comic books and cartoons.

- The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the United States of America and elsewhere.

- The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including the United States of America. The LEGO Group has expanded its use of the LEGO trademark to, among other things, computer hardware and software, books, videos and computer controlled robotic construction sets.

- The LEGO Group maintains an extensive website under the domain name . The Complainant is the owner of over 4,000 domain names containing its LEGO trademark.

- The LEGO trademark is a well-known trademark with a substantial and widespread reputation throughout the world. LEGO is among the best-known trademarks in the world, due in part to decades of extensive use of the LEGO trademark on all of the Complainant’s products, packaging, displays, advertising and promotional materials. The LEGO trademark and brand have been recognized as being a leading brand by various organizations, including Superbrands UK and the Reputation Institute, and Time magazine.

- The Complainant markets and sells products named “LEGO Jurassic World”, “LEGO Santa’s Workshop” and “LEGO Frozen Castle”. The Complainant has a business partnership with Universal Licensing LLC and a license granted by Universal Licensing LLC regarding the “LEGO Jurassic World” products.

- The disputed domain name was registered on June 17, 2015. The disputed domain name was registered on September 13, 2015. The disputed domain name was registered on July 29, 2015.

- As of the date of this decision, the disputed domain names do not resolve to active websites. The Complainant has adduced evidence to show that at an earlier time each disputed domain name resolved to a website that purported to be created by a “young mother” to provide an “honest and unbiased review” of a specific LEGO toy product. In particular: the disputed domain name resolved to a website about the Complainant’s product named LEGO Jurassic World; the disputed domain name resolved to a website about the Complainant’s product named LEGO Santa’s Workshop; and the disputed domain name resolved to a website about the Complainant’s product named LEGO Frozen Castle. Each website displayed photographs of the LEGO product described in the relevant domain name, provided information regarding the LEGO product, and displayed advertisements for the LEGO product and links to the A website to facilitate online purchases of LEGO products from A.

- The Complainant has not given a license or any other kind of authorization to the Respondent to use the LEGO trademark. The Respondent is not an authorized reseller of the Complainant’s products and has never had a business relationship with the Complainant.

- On October 5, 2015, the Complainant sent by email a cease and desist demand letter to the Respondent requesting that the Respondent voluntarily transfer the disputed domain name to the Complainant and offering to compensate the Respondent for registration expenses and transfer fees. On October 13, 2015, the Complainant received an email from a person with the first name “Tara”, sent from an email address that included the Respondent’s name, which stated:

“Hello,

I received an email stating that you wanted me to transfer ownership of my domain to you. We bought the domain legally and we created it as a honest review site. In the email you stated you would pay the cost of the domain purchase and the transfer fee but we put a lot of time, energy and research into this domain. We are more than willing to sell the domain to you at a fair price.

Thank you.

Tara.”

- The Complainant sent further emails to the Respondent demanding a transfer of the domain name, and on November 15, 2015 the Complainant received an email from the same person named “Tara”, sent from an email address that included the Respondent’s name, which stated:

“I will remove the site.”

- The Complainant sent further emails to the Respondent demanding a transfer of the domain name, but the Respondent did not respond.

- On December 4, 2015, the Complainant sent by email a cease and desist demand letter to the Respondent requesting that the Respondent voluntarily transfer the disputed domain name to the Complainant and offering to compensate the Respondent for registration expenses and transfer fees. A few hours later on that day, the Complainant received an email from “Plenty Reviews”, which stated:

“Hello,

If you want the domain name you can purchase it from me for a fair price. Cost for the domain name is not fair. The site is a review site. We are affiliate marketers selling the lego product”.

The Complainant sent further emails to the Respondent demanding a transfer of the domain name, but the Respondent did not respond.

The Complainant did not send a demand letter to the Respondent regarding the disputed domain name .

On July 31, 2016, after the Center sent a notification of the Complaint to the Respondent, the Center received an email from the same person with the first name “Tara”, sent from an email address that included the Respondent’s name, that expressly referred to this proceeding and the disputed domain names, had the subject “Domains Canceled: Dispute # D2016-1313” and stated as follows:

“These domains have already been canceled and are not in use anymore. They have been canceled for awhile [sic]. So please quit contacting me and writing me about them. – Tara”.

The Respondent has not filed a formal Response to the Complaint or disputed the Complainant’s factual assertions or evidence in any other manner.

On its own initiative, the Panel reviewed the websites to which the disputed domain names currently resolve in order to view the content and functionality of the websites. Each of the websites is inactive and displays the words: “Index of / .ftpquota” and a reference to “Apache Server” at the domain name. The Panel’s review of the websites is consistent with the consensus view that a UDRP panel may undertake limited factual research into matters of public record, including accessing a website linked to a disputed domain name, if the panel considers it necessary to reach the right decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), section 4.5. 6. Parties’ Contentions A. Complainant

The Complainant contends as follows:

- The Complainant is the owner of the famous trademark LEGO registered and used throughout the world in association with toys and other products, and each disputed domain name is confusingly similar to the LEGO trademark because the disputed domain name combines the LEGO trademark with a descriptive reference to a product marketed and sold by the Complainant under the LEGO trademark.

- The Respondent has no rights or legitimate interests in respect of any of the disputed domain names, and does not have any right to use the Complainant’s LEGO trademark.

- The Respondent registered and is using each of the disputed domain names in bad faith because the Respondent used each disputed domain name to confuse and divert Internet users to a website that displayed advertisements for the LEGO product described in the domain name and links to the A website to facilitate online purchases of the LEGO product from A. B. Respondent

The Respondent has not filed a formal Response to the Complaint.

As indicated above, in response to notification of the Complaint, the Center received an email from a person with the first name “Tara”, sent from an email address that included the Respondent’s name, advising that the domain names had been cancelled and were not in use, and stating: “So please quit contacting me and writing me about them.” 7. Discussion and Findings

The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of domain names – conduct commonly known as “cybersquatting” or “cyberpiracy”. The Policy does not apply to other kinds of disputes between a trademark owner and a domain name registrant.

The application of the Policy is limited to situations in which a complainant asserts and proves the following requirements set out in Policy paragraph 4(a): (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The burden is on a complainant to prove all three required elements in order to be entitled to relief under the Policy.

Rules paragraph 10(b) requires that the Panel ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to give actual notice of the Complaint to the Respondent. The July 31, 2016 email from a person with the first name “Tara”, sent from an email address that included the Respondent’s name, that expressly referred to this proceeding and the disputed domain names is evidence that the Respondent received notice of the Complaint. In the circumstances, the Panel finds that the Respondent has been given notice of this proceeding in accordance with Rules paragraph 2 and has been given a fair opportunity to answer the Complaint and present the Respondent’s case. In accordance with Rules paragraph 14(a), the Panel will proceed to a decision on the Complaint.

The Respondent’s failure to file a Response to the Complaint and the July 31, 2016 email from a person with the first name “Tara”, sent from an email address that included the Respondent’s name, to the Center advising that the disputed domain names “have been cancelled and are not in use anymore” do not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a). Rules paragraph 15(a) requires the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that the Panel deems applicable. In accordance with Rules paragraph 14(b), the Panel may draw inferences as the Panel considers appropriate from the Respondent’s failure to file a Response to the Complaint (see WIPO Overview 2.0, section 4.6). In the circumstances, the Panel’s decision is based on the Complainant’s assertions and evidence, information obtained by the Panel as a result of the Panel’s review of the websites to which the disputed domain names currently resolve, and inferences drawn from the Respondent’s failure to file a Response, all as set out in this decision. A. Identical or Confusingly Similar

The Complainant is the owner of the LEGO trademark, which is a well-known trademark with a substantial and widespread reputation throughout the world. The Complainant asserts that the LEGO trademark is “famous” worldwide. The Complainant’s LEGO trademark was registered in numerous countries throughout the world, including the United States of America (where the Respondent apparently resides) many years before the disputed domain names were registered. The Respondent has not contested the Complainant’s assertions. In the circumstances, the Panel finds that the Complainant has rights in the LEGO trademark.

The Policy requires that each of the disputed domain names be “identical or confusingly similar” to the Complainant’s trademark. Neither the Policy nor the Rules provide any explicit guidance with respect to the test to be applied regarding the confusing similarity requirement of the Policy. The consensus reflected in previous Policy decisions is that the appropriate test for confusing similarity is a literal comparison of the domain name in dispute and the complainant’s trademark. See WIPO Overview 2.0, section 1.2. The literal comparison approach is supported by a number of considerations, which have been discussed in various UDRP decisions. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Ms. Patricia Chung,WIPO Case No. D2004-0490; Pancil, LLC v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0492; Highlights for Children, Inc. v. Services LLC,WIPO Case No. D2007-0337; and Scania CV AB (Publ) v. ScaniaF,WIPO Case No. D2008-0113. For those reasons, the Panel considers the appropriate test for confusing similarity to be a literal comparison of the disputed domain names and the Complainant’s LEGO trademark.

Each of the disputed domain names is comprised of the Complainant’s LEGO trademark, an additional term – “jurassicworldsets”, “santasworkshop” and “frozencastle” – and the “.com” suffix.

The addition of the terms “jurassicworldsets”, “santasworkshop” and “frozencastle” does not avoid a finding of confusing similarity, and may actually enhance the confusing similarity, because: (1) the LEGO trademark is the dominant and distinctive part of each disputed domain name; and (2) the additional terms refer to products that the Complainant markets and sells under the LEGO trademark. For a similar finding regarding the domain name, see LEGO Juris A/S v. Nasirudin, EazyS,WIPO Case No. D2011-0617.

The “.com” suffix is typically irrelevant for the purpose of determining whether a challenged domain name is identical or confusingly similar to a trademark, because the “.com” suffix is merely descriptive of the relevant registry service and does not distinguish the domain name from the relevant trademark. See WIPO Overview 2.0, section 1.2; Accor v. Noldc Inc.,WIPO Case No. D2005-0016; L’Oréal v Tina Smith,WIPO Case No. D2013-0820; Titoni AG v. Runxin Wang,WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877.

In light of the Respondent’s previous use of the disputed domain names for websites that displayed photographs of the LEGO product described in the relevant domain name, provided information regarding the LEGO product, and displayed advertisements for the LEGO product and links to the A website to facilitate online purchases of the LEGO product from A, the Panel finds that each disputed domain name was intended by the Respondent to be confusingly similar to the Complainant’s LEGO trademark and was calculated to attract Internet users searching for an official website for the Complainant’s relevant LEGO product.

For those reasons, the Panel finds that each of the disputed domain names is confusingly similar to the Complainant’s LEGO trademark. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy for each of the disputed domain names. B. Rights and Legitimate Interests

The second element required by Policy paragraph 4(a) – the registrant has no rights or legitimate interests in respect of the domain name – requires a complainant to prove a negative proposition, which can be particularly difficult. The consensus reflected in previous UDRP decisions is that a complainant’s burden of proof regarding this element must be applied in light of the fact that the nature of the registrant’s rights or legitimate interests, if any, in a domain name lies most directly within the registrant’s knowledge. As a practical matter, once a complainant makes a prima facie showing that a registrant does not have rights or legitimate interests in a domain name, the evidentiary burden shifts to the registrant to provide evidence of its rights or legitimate interests in the domain name. See WIPO Overview 2.0, paragraph 2.1.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names because: (1) the Complainant has not found any evidence that the Respondent owns any registered trademark, trade name or company name that corresponds to the disputed domain names; (2) the Whois details for the disputed domain names do not suggest that the Respondent has used the LEGO trademark in any way that would give the Respondent any legitimate rights in the disputed domain name; (3) the Complainant has not given any license or authorization of any kind to the Respondent to use the LEGO trademark; (4) the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant; and (5) the Respondent is not using the disputed domain names for a bona fide offering of goods or services, but rather used each disputed domain name for a website that displayed advertisements for the relevant LEGO product and links to the A website to facilitate online purchases of the relevant LEGO product from A.

Except for the assertions in the signed and certified Complaint, the Complainant has not provided any evidence of trademark, trade name or company name searches or other investigations to indicate that the Respondent does not have any interest in any mark that includes the term “lego” and is not commonly known as “lego”. In some circumstances, the omission of that evidence might be fatal to a complaint under the Policy. Nevertheless, in the circumstances of this case (including the name of the Respondent, the distinctive nature of the Complainant’s LEGO trademark and evidence of the Respondent’s use of the disputed domain names) and an adverse inference from the Respondent’s failure to file a Response to the Complaint are sufficient to satisfy the Complainant’s evidentiary burden.

Even though the Respondent has not filed a Response to the Complaint, has not formally contested the Complainant’s assertions and appears to have advised the Center that the disputed domain names have been cancelled, the Panel is obligated to consider whether the Respondent’s use of the disputed domain names demonstrates rights or legitimate interests in the disputed domain names. See WIPO Overview 2.0, section 4.6.

According to Policy paragraph 4(c), each of the following circumstances, if proved, demonstrate a registrant’s rights to or legitimate interests in a domain name: (i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; (ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or (iii) the registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s mark.

Policy paragraph 4(c)(i) is not applicable. To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent’s use of a disputed domain name must be in connection with a bona fide offering of goods or services. According to the WIPO Overview 2.0, section 2.3, there is some disagreement among panels in previous Policy decisions as to whether or not a reseller or distributor of trademarked goods or services has rights or legitimate interests in a domain name that contains the trademark. The panel in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, expressed the view that a reseller or distributor can be making a bona fide offering of goods and services that supports a legitimate interest in a domain name if use of the domain name satisfies certain requirements, which have come to be known as the “Oki Data principles”. Some panels have held that the Oki Data principles apply to authorized resellers only, while other panels have held that the Oki Data principles apply to any reseller or distributor, whether authorized or unauthorized.

It is not necessary for the Panel to express a view regarding the application of the Oki Data principles to unauthorized resellers, because the Oki Data principles do not apply if a domain name registrant’s website does not actually sell goods or services but merely redirects users to a third party website (e.g. A) that sells the goods or services. In those circumstances, the domain name registrant cannot be considered a reseller or distributor of the trademarked goods or services within the meaning of Policy paragraph 4(c)(i). See MasterCard International Incorporated v. Global Access,WIPO Case No. D2008-1940; LEGO Juris A/S v. Andrew Vierling,WIPO Case No. D2010-1913; and LEGO Juris A/S v. Sony Laksono, N/A / PrivacyP,WIPO Case No. D2011-2268.

In this case, the Respondent’s use of the disputed domain name is not bona fide within the meaning of Policy paragraph 4(c)(i) because:

- Each disputed domain name is confusingly similar to the Complainant’s registered LEGO trademark, which is distinctive and specific to the Complainant in connection with toys and other products and has been used for many years.

- The Registrant does not have a license or other authorization from the Complainant to use the Complainant’s LEGO trademark.

- The Registrant is not a reseller (authorized or unauthorized) of the Complainant’s LEGO products. The Registrant’s websites did not sell the Complainant’s LEGO products.

- At the time of this decision, the disputed domain names do not resolve to active websites.

- Each disputed domain name previously resolved to a website that displayed advertisements for the LEGO product and links to the A website to facilitate online purchases of the LEGO product from A.

Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend, and there is no evidence, that the Respondent has been commonly known by any of the disputed domain names or that any of the disputed domain names is derived from the Respondent’s trademarks or trade names.

Policy paragraph 4(c)(iii) is not applicable. The Respondent does not contend, and there is no evidence, that the Respondent is making a non-commercial or fair use of any of the disputed domain names. To the contrary, the evidence establishes that the Respondent previously used each of the disputed domain names for a website that displayed advertisements for the LEGO product described in the domain name and links to the A website to facilitate online purchases of the LEGO product from A.

For those reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in any of the disputed domain names. C. Registered and Used in Bad Faith

Policy paragraph 4(a)(iii) requires the Complainant to prove, for each of the disputed domain names, that the Respondent registered and is using the disputed domain name in bad faith. The language of Policy paragraph 4(a)(iii) is conjunctive and requires the Complainant to prove both bad faith registration of the disputed domain name and bad faith use of the disputed domain name.

“Bad faith” within the meaning of the Policy is a term of art, and is not intended to apply to distasteful conduct that might constitute bad faith in the ordinary sense of the term. Policy paragraph 4(b) provides that each of the following circumstances is evidence that a registrant has registered and is using a domain name in bad faith:

(i) circumstances indicating that the registrant has registered or has 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 the complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location.

The Policy expressly states that those circumstances are non-exhaustive. To establish that a registrant registered and is using a domain name in bad faith, a complainant need only establish one of the four non-exhaustive criteria set out in Policy paragraph 4(b).

The Complainant relies on Policy paragraph 4(b)(iv), which applies if the Complainant establishes that the Respondent registered and is using the disputed domain names to confuse and divert Internet users to the Respondent’s website for commercial gain. The Respondent’s knowledge and intention may be determined by common sense inferences from circumstantial evidence.

The Panel finds that the Respondent knew of the Complainant and the Complainant’s LEGO trademark when the Respondent registered each of the disputed domain names, and the Respondent registered and is using each of the disputed domain names to confuse and divert Internet users to the Respondent’s website, based on the following circumstances:

- The Complainant’s LEGO trademark is distinctive and specific to the Complainant in connection with toys and other products, and has been used throughout the world for many years.

- Each disputed domain name combines the LEGO trademark with a descriptive reference to a product marketed and sold by the Complainant under the LEGO trademark.

- The Respondent used each disputed domain name for a website that displayed photographs of the LEGO product described in the disputed domain name, provided information regarding the LEGO product, and displayed advertisements for the LEGO product and links to the A website to facilitate online purchases of the LEGO product from A. The disputed domain names currently resolve to inactive websites.

- The Respondent is not a reseller (whether authorized or unauthorized) of the Complainant’s products.

- There is no apparent connection or relationship between any of the disputed domain names and the Respondent or the Respondent’s business, goods or services.

- The Respondent has not denied knowledge of the Complainant or the Complainant’s LEGO trademark. The Respondent’s use of the disputed domain names demonstrates that the Respondent was aware of the Complainant’s LEGO trademark and products marketed and sold under that trademark.

In addition, the October 13 and December 4, 2016 emails to the Complainant from a person with the first name “Tara”, sent from an email address that included the Respondent’s name, assert that each of the disputed domain names and were used for a “review site” for the LEGO product described in the domain name, which indicates that those two domain names were registered and used for the purpose of attracting Internet users to the websites.

Policy paragraph 4(b)(iv) requires that the domain name be used “for commercial gain”. It is well-known that many websites generate advertising revenue by directing Internet users to other websites. Based on the advertisements and links to the A website that were displayed on each of the Respondent’s websites, and in the absence of any explanation by the Respondent, the Panel finds that each of the Respondent’s websites generated revenue by directing Internet users to the A website to purchase LEGO products from A. See WIPO Overview 2.0, section 3.8. See also L’Oréal, Laboratoire Garnier & Compagnie v. Australian Internet Investments Pty Ltd.,WIPO Case No. D2008-1640.

The fact that the disputed domain names do not currently resolve to active websites does not preclude a finding that the Registrant registered and is using the disputed domain names in bad faith. See WIPO Overview 2.0, section 3.2.

For those reasons, pursuant to Policy paragraph 4(b)(iv), the Panel finds that the Respondent registered and is using each of the disputed domain names in bad faith to confuse and divert Internet users to the Respondent’s websites for commercial gain.

In the circumstances, the Panel need not consider whether any of Policy paragraphs 4(b)(i), (ii) or (iii) are applicable, or whether there are other grounds for finding that the Respondent registered and is using the disputed domain names in bad faith. 8. Decision

The Complainant has established each of the three requirements set out in Policy paragraph 4(a) for each of the disputed domain names: (i) the disputed domain name is confusingly similar to the Complainant’s LEGO trademark; (ii) the Respondent does not have any rights to or legitimate interests in the disputed domain name; and; (iii) the Respondent registered and is using the disputed domain name in bad faith.

For those reasons, in accordance with Policy paragraph 4(i) and Rules paragraph 15, the Panel orders that each of the disputed domain names , and be transferred to the Complainant.

Bradley J. Freedman
Sole Panelist
Date: August 26, 2016

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