The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Kamran Khan of Karachi, Pakistan. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , are registered with NameSilo, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2019. On January 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 9, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 9, 2019 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 January 14, 2019.
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 January 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2019.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on February 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
The Complainant, based in Denmark, is the owner of the famous LEGO trademarks (including LEGOLAND trademark) used in particular for construction toys.
The Complainant is the registered owner of numerous registered trademarks worldwide consisting of the term “Legoland”, amongst others United States Trademark Registration No. 3446087 registered on June 10, 2008 for goods in class 25.
According to the Registrar’s verification response, the Respondent registered the disputed domain names on June 13, 2018, on June 14, 2018, on June 21, 2018, on July 4, 2018, on July 5, 2018, and respectively on July 8, 2018 and finally on July 12, 2018. The language of all registration agreements is English.
It is noted that some of the disputed domain names are and were connected to a phishing website, where the Respondent advertised the chance to win LEGOLAND tickets by completing a survey. At the end of said survey, visitors were then to be asked to provide their personal details in order to “receive” said LEGOLAND tickets.
The Complainant sent a cease and desist letter by email to the Respondent on July 26, 2018 requesting a voluntary transfer of five of the disputed domain names at issue in the present dispute. The Complainant even offered the Respondent a compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). Despite the fact that the Complainant sent a reminder on August 2, 2018, no reply was received to this letter. 5. Parties’ Contentions A. Complainant
The Complainant submits that it has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States of America. Moreover, the first LEGOLAND park opened in 1968 in Billund (Denmark), the second LEGOLAND park opened in 1996 in Windsor (United Kingdom); two other LEGOLAND parks are based in the United States of America. The LEGOLAND parks have about 1,4 million visitors per year.
The Complainant further contends that its trademark LEGO is among the best-known trademark in the world, due to decades of advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. It results from the Complainant’s documented allegations that the list of the official top Superbrands for 2018, provided by Superbrands UK, ranks LEGO as first Consumer Superbrand, as well as winner in the category “Child Products - Toys and Education” and LEGOLAND as winner in the category “Leisure & Entertainment – Destinations”. Moreover, the Reputation Institute nominated the LEGO Group as number 2 on their list of “the World’s Most Reputable Companies” 2018. Last but not least, in 2014, TIME also announced LEGO to be the Most Influential Toy of All Time.
The Complainant contends that the disputed domain names are confusingly similar to its LEGOLAND trademark. In particular, the trademark LEGOLAND is wholly and identically incorporated in all the disputed domain names as their dominant part. In creating the disputed domain names, the Respondent has merely added the descriptive elements “windsor”, “us”, “dk”, “Denmark”, “com”, “uk” and “bullind” (which corresponds to a typo of Billund).
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. In particular, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the Complainant’s mark. According to the Complainant, the Respondent originally connected some of the disputed domain names to a phishing website, where the Respondent advertised the chance to win LEGOLAND tickets by completing a survey. Thus, the Respondent makes illegitimate commercial and unfair use of the disputed domain names for commercial gain to misleadingly divert Internet users and to tarnish the Complainant’s trademarks.
Finally, the Complainant contends that the Respondent registered the disputed domain names in bad faith. In its view, the Respondent intentionally attempted to attract for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement. In addition, the Respondent holds several further domain names that misappropriate well-known third-party trademarks so that the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
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”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain names is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademark registrations consisting of the verbal element “Legoland”. Reference is made, in particular, to United States Trademark Registration No. 3446087 registered on June 10, 2008 for goods in class 25. This trademark predates the creation dates of the disputed domain names, which are between June 13, 2018 and July 12, 2018.
Many UDRP Panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainS,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark LEGOLAND is fully included in all the disputed domain names.
Finally, it is the view of this Panel that the combination of the trademark LEGOLAND with descriptive elements “windsor”, “us”, “dk”, “Denmark”, “com”, “uk” and “bullind” (which corresponds to a typo of Billund) does not avoid the confusing similarity between the disputed domain names and the Complainant’s trademark. These terms are totally applicable as descriptive terms to the Complainant since they refer to the geographic location of two Legoland parks (in “windsor”, “uk”, “us” and in “Denmark”, “dk” and “Billund”, written with the typos of inverted vowels). Finally, the addition of the term “com” does not exclude the confusing similarity, since it will be understood as a mere descriptive indication as well (“com” as abbreviation of “commercial”).
Hence, this Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i). Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain names. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain names:
According to the Complaint, which has remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademark LEGOLAND, e.g., by registering the disputed domain names comprising said mark entirely.
Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain names in the sense of paragraph 4(c)(ii) of the Policy.
Finally, it results from the Complainant’s undisputed allegations that some of the disputed domain names are and were connected to a phishing website, where the Respondent advertised the chance to win LEGOLAND tickets by completing a survey. At the end of said survey, visitors were asked to provide their personal details in order to “receive” said LEGOLAND tickets. The Panel assesses this use as being commercial, so that it cannot be considered a legitimate, noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. Furthermore, such use cannot be qualified a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy since it rather has a high propensity to mislead and divert consumers.
Previous UDRP panels have found that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain names have been registered and are being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
One of these circumstances is that the respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).
It is the view of this Panel that these circumstances are met in the case at hand:
It results from the Complainant’s documented allegations that some of the disputed domain names are and were connected to a phishing website, where the Respondent advertised the chance to win LEGOLAND tickets by completing a survey. At the end of said survey, visitors were asked to provide their personal details in order to “receive” said LEGOLAND tickets. In addition, these websites showed the LEGOLAND-logo. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s mark. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain names included the Complainant’s trademark when it registered the disputed domain names. Registration of the disputed domain name which contains a third party’s mark, in awareness of said mark and in the absence of rights or legitimate interests amounts to registration in bad faith (see e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320).
The finding of bad faith registration and use is supported by the further circumstances resulting from the case at hand which are (i) the high degree of distinctiveness and the worldwide reputation of the Complainant’s mark, (ii) the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the Respondent’s failure to reply to the cease and desist letter, (iv) the implausibility of any good faith use to which the domain name may be put, (v) some of the disputed domain names combining the Complainant’s trademark “LEGOLAND” with geographic indications of the places where the actual LEGOLAND parks are located (“windsor”, “ bullind” understood as a typo for “Billund”), (vi) the Respondent engaging in a pattern of conduct and (vii) the Respondent concealing its identity behind a privacy shield (see section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition).
In the light of the above the Panel finds that the disputed domain names have been registered and are being used in bad faith pursuant to 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 disputed domain names, , , , , , , , , be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: March 1, 2019
Full & Egal Universal Law Academy