The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Aamir Abdul Wahid, Spiro Line Media of Rochdale, United Kingdom. 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 26, 2018. On November 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 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 November 29, 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 30, 2018.
The Center verified that the Complaint together with the amended Complaint (“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 the Respondent of the Complaint, and the proceedings commenced on December 3, 2018. In accordance with the Rules, paragraph 5, the due date for the Response was December 23, 2018. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 24, 2018. On January 12, 2019, the Center received an informal email communication from the Respondent, in response to which the Center sent an email communication on January 14, 2019, inviting the Parties to explore settlement negotiations. The Complainant declined to pursue settlement negotiations on January 14, 2019.
The Center appointed D. Brian King as the sole panelist in this matter on January 15, 2019. 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 A. The Parties
The Complainant is a limited liability company incorporated in Denmark. The Complainant is the owner of LEGO, LEGOLAND and other trademarks used in connection with the LEGO brand. The Complainant first registered the LEGO mark in Denmark on May 1, 1954, under registration number VR 1954 00604, and the first LEGOLAND resort opened in 1968. The LEGO brand has grown enormously over the years, and LEGO products are now sold in over 130 countries. Meanwhile, the LEGOLAND theme parks have about 1.4 million visitors annually.
The Panel has no information about the activities of the Respondent, except as discussed below in relation to the disputed domain name. B. The Marks
The Complainant is the registered owner of numerous trademarks including the term “LEGO” in jurisdictions around the world (Annex 6 to the Complaint). Representative examples follow:
Trademark
Jurisdiction/Trademark Office
LEGOLAND
United States Patent and Trademark Office (USPTO)
LEGO
USPTO
LEGOLAND
United Kingdom Intellectual Property Office
LEGOLAND
Canadian Intellectual Property Office
LEGOLAND
Swiss Federal Institute of Intellectual Property
LEGOLAND
German Patent and Trademark Office
In total, the Complainant has registered the LEGOLAND mark in over 80 jurisdictions (Annex 6 to the Complaint). C. Domain Names
The Complainant is the owner of about 5,000 domain names containing the LEGO mark, and a further 400 domain names containing the mark LEGOLAND (Annex 8.2 to the Complaint).
The disputed domain name, (“Domain Name”), was registered on July 9, 2018 in the United States of America (“United States”). This date is more than a decade after the Complainant registered its LEGO and LEGOLAND trademarks in the United States. As recently as November 26, 2018, the Domain Name resolved to an active webpage offering LEGO products, but it has since been deactivated (Annex 11 to the Complaint). When accessed by the Panel on January 17, 2019, the Domain Name was inactive.
On July 25, 2018, the Complainant sent a cease-and-desist letter to the Respondent by email. The Complainant requested transfer of ownership of the Domain Name and offered compensation for the expense of registration and any transfer fees (Annex 12 to the Complaint). The Respondent responded, asking how much compensation would be offered. The Complainant replied that compensation would be provided for costs related to the registration of the Domain Name. Although the Complainant proceeded to send numerous reminders, the Respondent did not reply (Annex 12 to the Amended Complaint). 5. Parties’ Contentions A. Complainant
The Complainant claims that the Domain Name is identical or confusingly similar to its registered trademarks. It submits that the LEGO and LEGOLAND marks have widespread recognition, and indeed that the LEGO mark is among the best-known trademarks in the world. The Complainant notes that LEGO was named the Most Influential Toy of All Time by Time Magazine in 2014 (Annex 9 to the Complaint). In addition, the LEGO brand won the “Children’s Products – Toys and Education” category in UK Superbrand’s 2017 list (Annex 9 to the Complaint). The Complainant argues that the Respondent is simply inverting the two components of its LEGOLAND mark. According to the Complainant, the Respondent’s inverted version of LEGOLAND is a purposeful attempt to confuse Internet users.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant represents that it has not given the Respondent any licensing rights or other permission to use its trademarks or sell its products. The Respondent’s lack of rights or legitimate interests in respect of the Domain Name, the Complainant argues, is evident from the manner in which the Domain Name has been used: the website to which the Domain Name previously resolved was engaged in the unauthorized sale of LEGO products. The Complainant thus alleges that the Respondent wrongfully sought to trade off the Complainant’s goodwill. The Complainant further submits that the Respondent is not commonly known by or associated with the Domain Name.
Finally, the Complainant submits that the Domain Name was registered and used in bad faith. LEGO and LEGOLAND are internationally known trademarks. The Respondent must have been aware of the existence of the Complainant’s rights in those marks. Therefore, the Complainant contends, the registration of a domain name so similar to LEGOLAND by itself shows bad faith. Furthermore, the website to which the Domain Name resolved contained an unauthorized offering of LEGO products, showing that the Respondent is using the Domain Name intentionally to attempt to attract Internet users to the website for commercial gain. The Complainant characterizes this as further evidence of bad faith use. B. Respondent
The Respondent did not reply to the Complainant’s contentions, but on January 12, 2019, stated “i got some emails about while i am developer myself and make websites for my clients. but want to sale domain, please advice.” 6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent 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.
Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of paragraph 4(a)(ii) above.
Paragraph 4(b) of the Policy sets out illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) above. A. Identical or Confusingly Similar
The Complainant has provided evidence demonstrating that it possesses rights in numerous trademarks incorporating the mark LEGOLAND. Those marks have been registered by the Complainant in jurisdictions around the world (Annex 6 to the Complaint).
The Domain Name is an inversion of the two words within the Complainant’s LEGOLAND mark. UDRP panels have consistently held that the inversion of terms comprising a trademark does not distinguish a domain name from the registered mark (see NCRAS Management, LP v. Cupcake City and John Zuccarini,WIPO Case No. D2000-1803; Toronto Convention & Visitors Association v. This Domain is For Sale / Email Your Offers,WIPO Case No. D2001-1463; Playboy Enterprises v. Movie Name Company,WIPO Case No. D2001-1201). The addition of the generic Top-Level Domain “.com” suffix does nothing to reduce the close similarity of the Domain Name to the Complainant’s trademark.
Accordingly, the Panel has no difficulty in concluding that the Domain Name is confusingly similar to the Complainant’s LEGOLAND mark. The first element of the test under paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
Many prior UDRP panels have found that complainants only need to establish a prima facie case in relation to the second element of the test under paragraph 4(a) of the Policy (see Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MatchNet plc v. MAC Trading,WIPO Case No. D2000-0205; Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith,WIPO Case No. D2010-1576; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). Once a prima facie showing is made, the burden shifts to the respondent to prove that it does have rights or legitimate interests in the disputed domain name. To overcome a complainant’s prima facie showing, a respondent can, for example, provide evidence of a bona fide offering of goods or services, the common use of the disputed domain name, or a legitimate noncommercial or fair use.
The present Panel agrees that the Complainant need only make out a prima facie case and finds that the Complainant has done so here. The Domain Name was registered in the United States in July 2018, more than a decade after the Complainant obtained registered trademarks for LEGO and LEGOLAND in the United States (Annex 6 to the Complaint). The Complainant has further shown that until recently, the Domain Name resolved to a website prominently displaying LEGO products and offering them for sale (Annex 11 to the Complaint). Previous UDRP decisions have confirmed the fame of the trademarks implicated in this case (see LEGO Juris A/S v. Level 5 Corp.,WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715; LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680). The clear inference is that the Respondent, with at least constructive knowledge of the Complainant’s rights in the LEGOLAND mark, sought to profit by trading off the Complainant’s goodwill. Considering the Respondent’s bad faith use as further explained below, that is the antithesis of rights or legitimate interests in a domain name.
The Respondent has not filed a substantive Response. Thus, the Complainant’s contentions as to the Respondent’s lack of rights or legitimate interests in the Domain Name remain unchallenged. In the absence of any contrary evidence, the Panel accepts the Complainant’s representations that it has not given the Respondent permission to use the Complainant’s trademarks in any manner and that there is no commercial relationship between the Complainant and the Respondent. The Panel likewise finds no evidence that the Respondent is commonly known by a name corresponding to the Domain Name.
For these reasons, the Panel concludes that the Complainant has satisfied the requirements of the second element of the test under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third element of the test under paragraph 4(a) requires proof that the Domain Name has been registered and is being used in bad faith.
Previous UDRP panels have found that the mere registration of a domain name that is confusingly similar to a famous mark can establish bad faith (see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Georgia-Pacific Corporation v. Charlie Kalopungi,WIPO Case No. D2011-0634). The Panel has already concluded above that the Domain Name is confusingly similar to the Complainant’s LEGOLAND mark. Moreover, given the content of the webpage to which the Domain Name resolved, it is inconceivable that the Respondent registered the Domain Name without prior knowledge of the LEGO and LEGOLAND marks. The Panel thus concludes that the Respondent registered the Domain Name in bad faith.
The Complainant has provided sufficient evidence to show that the Respondent not only registered but also used the Domain Name in bad faith. The website associated with the Domain Name offered LEGO products for sale, despite the Respondent’s lack of any authorization from the Complainant to do so (Annex 11 to the Complaint). The Panel accordingly finds that the Domain Name was purposefully being used in a manner that created the false impression that the corresponding website was associated with the Complainant. The intentional creation of that false impression constitutes bad faith usage. Furthermore, the Respondent’s email communication indicates a willingness to sell the disputed domain name at above out-of-pocket costs, which demonstrates to the Panel a bad faith intention to unfairly profit form the Domain Name incorporating the Complainant’s trademark.
The Panel thus determines that the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy as well. 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.
D. Brian King
Sole Panelist
Date: January 21, 2019
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