Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Neckar Rhein of Berlin, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2017. On November 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2017, 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 Complainant on November 24, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 28, 2017.
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 Respondent of the Complaint, and the proceedings commenced on November 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2017. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2017.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on January 10, 2018. 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 trademark LEGO and other trademarks used in connection with the LEGO brand of construction toys and other LEGO branded products, including computer hardware and software, books, videos and computer controlled robotic construction sets. Complainant owns numerous trademark registrations throughout the world for the mark LEGO, including in China, where Complainant’s authorized licensees are authorized to use the LEGO mark. Complainant’s LEGO products are sold in more than 130 countries, including in China.
Complainant is also the owner of almost 5,000 domain names containing the term LEGO and maintains an extensive website under the domain name , which was registered on August 22, 1995.
The disputed domain name was registered on July 5, 2017.
Complainant attempted to contact Respondent through a cease-and-desist letter sent by email on August 5, 2017. Respondent failed to reply. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name incorporates Complainant’s mark in its entirety, is identical to and/or confusingly similar to Complainant’s trademarks, that Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
Complainant has demonstrated that it owns strong rights in the trademark LEGO. The fame of Complainant’s LEGO mark has been confirmed in numerous previous UDRP decisions. The disputed domain name incorporates Complainant’s trademark in its entirety. The addition of the word “shop” adds no distinctiveness and does not avoid a finding of confusing similarity. Moreover, the addition of the Top‑Level Domain “.space” does not add any distinctive subject matter for the purpose of evaluating confusing similarity.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests
Complainant contends that Respondent is not a licensee or authorized user of Complainant’s mark, that Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant. Complainant further contends that it has not authorized Respondent to register the disputed domain name.
Complainant has found no evidence that the Respondent is using the name LEGO as a company name or has any other legal rights in the name. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but is using it to generate traffic and income through an unauthorized website offering LEGO® products.
Respondent is presenting itself on the website as an authorized dealer of Complainant, whereas Complainant has indicated this is not the case. Respondent is conveying the false impression that Respondent is authorized to use Complainant’s trademark. The page title at the top of Respondent’s website states a Chinese translation of the English “LEGO blocks shop” and below it, in English, “Lego Shop Online”. Moreover, Respondent’s website provides detailed descriptions and videos about LEGO products and links to purchase the products or similar or counterfeit versions of the products. Such use does not constitute a bona fide offering of goods or services using the disputed domain name.
The available record suggests that Respondent is not and has not been commonly known by the disputed domain name. Respondent is operating a website at the disputed domain name that generates sponsored links to Complainant’s website and those of its competitors, selling products in direct competition with Complainant, including counterfeit LEGO toys. Respondent is clearly attempting to confuse consumers by use of Complainant’s trademark in the disputed domain name to lure Internet users to the websites, and thereby benefit commercially from “click-through” advertising fees. Such use does not constitute a bona fide, legitimate use of the disputed domain name.
Accordingly, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out of pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’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 respondent’s website or location of a product or service on the respondent’s website or location.
Respondent was clearly aware of Complainant’s trademark rights at the time of registering the disputed domain name. The LEGO mark is a famous mark, and it is highly likely that this fame motivated Respondent to register the disputed domain name. This is supported by the fact that Respondent’s website provides detailed descriptions, videos and pictures of several of Complainant’s popular toy products.
The submitted evidence demonstrates that Respondent is deliberately trading off the goodwill associated with Complainant’s marks and Internet traffic intended for Complainant’s website for Respondent’s commercial gain by creating a likelihood of confusion with Complainant’s mark. Such use evidences Respondent’s bad faith. In addition, the Panel notes that Respondent is using a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 3.6.
The Panel finds that Respondent has registered and used the disputed domain name 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 name be transferred to the Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Date: January 19, 2018
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