The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Admin Contact, PrivateName Services Inc. of Vancouver, Canada / Rey Leande of Kolding, Denmark. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2018. On August 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 27, 2018, 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 August 31, 2018, 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 September 4, 2018.
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 September 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2018.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on October 18, 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
The Complainant is the owner of LEGO, LEGOLAND and all other trademarks used in connection with the LEGO brands of 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, including in Denmark, where the Respondent is located. The Complainant currently has 8 LEGOLAND theme parks globally that receive over 1.4 million visitors per year.
The Complainant owns trademarks throughout the world (for example, Danish trademark registration no. VR 1992 00778 for LEGOLAND, registered February 7, 1992). The LEGO trademark and brand, as well as the LEGOLAND trademark, have been recognized as famous; see for instance list of the official top 500 Superbrands for 2017, provided by Superbrands UK, and Time Magazine November 2014. The Complainant also owns over 5,000 domain names containing the term LEGO and over 400 domain names containing the term LEGOLAND.
According to the Registrar, the Domain Name was registered on July, 12, 2018. At the time of filing of the Complaint, the Domain Name resolved to a webpage that purported to sell the Complainant’s products. At the time of drafting this decision, the Domain Name resolved to a webpage stating “This Account has been suspended”. 5. Parties’ Contentions A. Complainant
The Complainant provides trademark registrations, and submits that its trademark is famous globally. The Domain Name comprises the terms LEGO and LEGOLAND, and it is confusingly similar to the Complainant’s trademarks. The addition of a hyphen and the geographical term “danmark” (Danish for Denmark) have no impact on the overall impression of the dominant part of the Domain Name. Additionally, the Respondent is using the Domain Name to resolve to a website that is attempting to pass off as the Complainant’s website by copying the Complainant’s Legoland Billund website and its design, color scheme and content, which suggests that the Respondent intends the Domain Name to be confusingly similar to Complainant’s trademark.
The Complainant argues further that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the Complainant’s trademarks. There is no relationship between the Parties that justifies the registration of the Domain Name and nothing in the record, including the WhoIs information, which suggests that the Respondent is commonly known by the Domain Name. The Respondent uses the Domain Name to resolve to a website that copies and attempts to duplicate the Complainant’s official website. It gives the impression that it originates from the Complainant. The website does not contain any notice informing that it is not related to the official website of the Complainant. On the contrary, the Complainant argues that the purpose is to fool unsuspecting visitors into divulging their personal information by informing users who have completed the on-site survey that they have been selected to “win” a premium seasonal pass to the Legoland theme park at 1 KR (Danish kroner).
As to bad faith, the Complainant argues that the Respondent must have known of the Complainant’s trademarks and products. Furthermore, the Respondent’s use of the Domain Name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under the Policy because the website at the Domain Name is attempting to pass off as the Complainant’s website as part of the Respondent’s phishing scheme. The Complainant points at further evidence for bad faith, such as the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, and the Respondent failed to respond to a cease-and-desist letter. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademarks LEGO and LEGOLAND.
The test for confusing similarity involves the comparison between the trademark and the domain name. In this case, the Domain Name is confusingly similar to the Complainant’s trademark LEGOLAND. The addition of a hyphen and the geographical term “danmark” does not avoid a finding of confusing similarity. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing its trademark or otherwise make use of its mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. The Respondent has used the Domain Name to resolve to a website that copies the Complainant’s official website and gives the impression that it originates from the Complainant. The Respondent’s webpage may be an attempt to solicit personal information from the Complainant’s customers. Be that as it may, the use is under no circumstance bona fide nor legitimate noncommercial / fair use within the meaning of the Policy.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
It is obvious that the Respondent must have been aware of the Complainant’s trademark and its business when the Respondent registered the Domain Name.
The Panel finds the Respondent registered and is using the Domain Name with the intention of confusing Internet users into believing that the Domain Name is associated with the Complainant. The use of the Domain Name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under the Policy because the website at the Domain Name is attempting to pass off as the Complainant’s website. The bad faith is supported by the fact that the Respondent has employed a privacy service to hide its identity and not responded to the Complainant’s contentions.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the 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 Domain Name be transferred to the Complainant.
Mathias Lilleengen
Sole Panelist
Date: October 19, 2018
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