The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name (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 2, 2018. On November 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 November 6, 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 November 12, 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 November 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2018. The Respondent did not submit any substantive response. Accordingly, the Center notified the Parties about the commencement of the panel appointment process on December 5, 2018.
The Center appointed Mariya Koval as the sole panelist in this matter on December 13, 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, LEGO Juris A/S, is a Danish company, which is the owner of numerous registrations for LEGO and LEGOLAND Trademarks worldwide. The LEGOLAND Trademark (the “LEGOLAND Trademark”) is being used for e.g.: theme parks, hotels, entertainment, sporting and cultural activities. Over the years, the business of making and selling LEGO branded toys has grown remarkably. Today the Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries.
The first Complainant’s Legoland theme park was opened in 1968 in Denmark. Today the Complainant has totally eight Legoland theme parks: in Denmark, Germany, the United Kingdom of Great Britain and Northern Ireland, Malaysia, United Arab Emirates, Japan and the United States of America which have over 1.4 million visitors per year.
The Complainant has a great online presence, being the owner of over 5,000 domain names containing the LEGO trademark and over 400 domain names containing the trademark LEGOLAND. The main domain name with the use of the LEGOLAND Trademark has been registered by the Complainant on August 4, 1998.
The Disputed Domain Name was registered on July 14, 2018. At the date of this decision, the Disputed Domain Name does not resolve to any active website. According to the evidence of the Complainant (Annex 11 to the Complaint), the Disputed Domain Name previously resolved to a webpage containing the LEGOLAND trademark and offering the tickets to the LEGOLAND theme park in Billund, Denmark. 5. Parties’ Contentions A. Complainant
The Complainant contends that the LEGO and LEGOLAND trademarks are among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO and LEGOLAND marks on all products, packaging, displays, advertising, and promotional materials. Moreover, the fame of the LEGO and LEGOLAND trademarks has been confirmed in numerous previous UDRP decisions.
The Complainant also contends that the dominant part of the Disputed Domain Name comprises of the terms “lego” and “legoland”, which are identical to LEGO and LEGOLAND trademarks and domain names in numerous countries all over the world. The addition of a hyphen and the geographical abbreviation “dk” (or Denmark) will not have any impact on the overall impression of the dominant part of the Disputed Domain Name, LEGO and LEGOLAND, recognizable as world famous trademarks.
The Complainant further alleges that the Respondent’s use of the Disputed Domain Name contributes to the confusion. The Respondent used the Disputed Domain Name to resolve to a website that includes and copies the Complainant’s LEGOLAND trademark, which suggests that the Respondent intends the Disputed Domain Name to be confusingly similar to the Complainant’s Trademarks as means of causing consumer confusion.
The Complainant next contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the Respondent does not have any registered trademarks or trade names corresponding to the Disputed Domain Name, the Respondent has obtained no license or authorization of any other kind, from the Complainant to use the trademarks LEGO and LEGOLAND, there is no evidence that the Respondent used the name Lego or Legoland as a company name or has any other legal rights in the name and the Respondent is today not using the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Complainant also argues that the Disputed Domain Name was registered and is being used in bad faith in view of the following:
- the considerable value and goodwill associated with the LEGO and LEGOLAND marks are no doubt the factors that compelled the Respondent to register the Disputed Domain Name at issue here;
- the date of registration of the Disputed Domain Name is decades after the Complainant registered the LEGO and LEGOLAND trademarks. It is obvious that it is the fame of the trademarks that has motivated the Respondent to register the Disputed Domain Name. That is, the Respondent cannot claim to have been using the LEGO and LEGOLAND trademarks, without being aware of the Complainant’s rights to them;
- no response to the Complainant’s cease and desist letters was ever received from the Respondent;
- the Respondent creates a likelihood of confusion with the Complainant and its trademarks by copying the Complainant’s LEGOLAND trademark on the Disputed Domain Name’s website. As such, the Respondent is attempting to cause consumer’s confusion in a nefarious attempt to profit from such confusion;
- the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses. This fact demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the Disputed Domain Name;
- at the time of initial filing of the Complaint, the Respondent had employed a privacy service to hide its identity, which past panels have held can support an inference of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
However, a response has been filed by a person named as the Respondent, in which this person stated that he is not owing/using any domain for any kind of business and did not register the Disputed Domain Name at all. He also asked to make the decision in this proceeding, which “is the best for the other party”. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has proved that it has established rights in LEGOLAND Trademark. Moreover, previous UDRP panels have acknowledged the LEGOLAND Trademark as well-known, see e.g., LEGO Juris A/S v. D and Compsys Domain Solutions Private Limited,WIPO Case No. D2009-0381; LEGO Juris A/S v. Colin Heggie,WIPO Case No. D2011-1304.
The Disputed Domain Name incorporates the Complainant’s LEGOLAND Trademark in its entirety combining with the hyphen, geographical abbreviation “dk” and the generic Top-Level Domain (“gTLD”) “.life”. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) while each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. Addition of geographical abbreviation “dk” to the Disputed Domain Name does not prevent a finding of confusing similarity between the Complainant’s LEGOLAND Trademark and the Disputed Domain Name. Also, the use of hyphen in the Disputed Domain Name is obviously insufficient for a finding of difference between the Complainant’s Trademark and the Disputed Domain Name.
According to section 1.11.1 of the WIPO Overview 3.0 the applicable gTLD in a domain name (e.g., “com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Therefore, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s LEGOLAND Trademark and that paragraph 4(a)(i) of the Policy has been satisfied by the Complainant. B. Rights or Legitimate Interests
Based on the evidences in this case, the Panel considers that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights and legitimate interests, contending that it has never given any license or authorization of any other kind to the Respondent to use its LEGOLAND Trademark.
The Panel also finds that there are no evidences in this proceeding that the Respondent is commonly known by the Disputed Domain Name.
Taking into consideration all circumstances of this case, and also the fact that the LEGOLAND Trademark is globally known, the Panel considers it is impossible that the Respondent might be unaware of the Complainant’s theme parks under the LEGOLAND trademark. This finding is also supported by the fact that the Respondent has previously displayed the Complainant’s logo on the website under the Disputed Domain Name.
Furthermore, before the commencement of this proceeding the Respondent used the Disputed Domain Name for the commercial website in Danish language, intentionally attempted to attract the Internet users by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement, that cannot be considered neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Disputed Domain Name.
Moreover, the Respondent not only employed a privacy service to hide its identity at the time of initial filing of the Complaint, but also appears to have used the name and contact details of a third party when registering the Disputed Domain Name. This in no case may be considered as a good faith.
In light of the above the Panel finds that the Respondent has no rights or legitimate interests to use the Disputed Domain Name and that the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, 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 the respondent 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its 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 trade mark 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 its 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 or of a product or service on the respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that the Complainant’s first use and first registration of its LEGOLAND Trademark is more than 50 years before the registration of the Disputed Domain Name. Also, the Complainant registered its domain name and commenced operating its website at “www.” in 1998 long before the Respondent registered the Disputed Domain Name. Section 3.2.2 of the WIPO Overview 3.0 sets that noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Taking into consideration that the Respondent registered the Disputed Domain Name, which completely reproduces the LEGOLAND Trademark, and therefore is confusingly similar to the Complainant’s Trademark, it is more likely that the Respondent could not have been unaware of the Complainant’s globally known LEGOLAND Trademark and Legoland theme parks at the time of registration of the Disputed Domain Name. In addition, the Panel notes that the Complainant is a Danish company and has a theme park under the LEGOLAND Trademark in Denmark. The Internet users, accessing the Disputed Domain Name, would most likely believe that it is one more website of the Complainant.
The Panel considers it is obvious that the Respondent chose and used the Disputed Domain Name in bad faith because of the Disputed Domain Name was registered with the only purpose of creating a likelihood of confusion with the Complainant’s LEGOLAND Trademark and to disrupt the Complainant’s brand and business. The Panel finds that the Respondent’s website could have attracted an attention of the Internet users in view of they could most likely associate this website with the Complainant’s products and services.
Furthermore, according to the evidence in this case the Respondent has used a third party’s identity, providing false contact details when registering the Disputed Domain Name, that also supports finding of bad faith, see e.g., Total S.A. v. Name Redacted,WIPO Case No. D2016-1673; Euromarket Designs, Inc. d/b/a Crate & Barrel v. Namesnet,WIPO Case No. D2000-1196 (“The false contact information is evidence of use and registration in bad faith”).
In addition, the Respondent did not respond to the Complainant’s contentions and to the cease and desist letters sent by the Complainant as an attempt to resolve the matter amicably, without initiating of administrative proceeding.
Accordingly, the Panel concludes that the Disputed Domain Name was registered and is being used in bad faith and that the Complainant has proven the third element 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 be transferred to the Complainant.
Mariya Koval
Sole Panelist
Date: December 24, 2018
1 The Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
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