The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Milen Radumilo of Barbados. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2019. On March 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 2019, 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 March 18, 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 March 22, 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 April 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2019.
The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on May 7, 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 LEGO Juris A/S is the owner of the mark LEGO and of all trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products. The Complainant has subsidiaries and branches throughout the world and LEGO products are sold in more than 130 countries.
The trademark LEGO has often been recognized as being among the best-known trademarks in the world.
Among other registrations, the Complainant owns the following registrations for the mark LEGO:
- European Union (“EU”) Trademark registration LEGO no. 000039800 registered on October 5, 1998 in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, 42;
- United States trademark registration LEGO no. 1018875 registered on August 26, 1975 in class 28;
- International trademark LEGO no. 287932 registered on August 27, 1964 in class 28.
The Complainant is also the owner of close to 5,000 domain names containing the term “lego”.
The disputed domain name was registered on November 30, 2018.
The disputed domain name resolved to a website featuring sponsored links for racing games. Some of the links included the term “lego”.
The Complainant sent a cease-and-desist letter to the Respondent on December 18, 2018, followed by two reminders. The Respondent did not answer this letter.
The Respondent is or has been involved in over 80 UDRP proceedings concerning domain names registered by the Respondent and reproducing trademarks of others. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its well-known LEGO trademark, as the suffix “racers” does not detract from the overall impression created by the disputed domain name.
The Complainant furthermore contends that it has not found any indication that would suggest that the Respondent has any legitimate rights in the disputed domain name. The Complainant did not grant any license or authorization of any kind to the Respondent to use the mark LEGO. The Complainant alleges that the Respondent did not make any bona fide offering of goods or services under the disputed domain name: on the contrary, the Respondent used it to mislead Internet users to its own commercial website. This leads the Complainant to conclude that the Respondent has no rights or legitimate interests in the disputed domain name.
According to the Complainant, it is clear, in view of the substantial and widespread renown of the mark LEGO, that the Respondent was aware of the Complainant’s legal rights in the name LEGO. The Complainant alleges that the Respondent used the disputed domain name to intentionally attract Internet users to its own website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
Finally, the Complainant contends that the Respondent’s involvement in a number of UDRP cases, and his ownership of many trademarks that misappropriate the trademarks of well-known brands show that the Respondent is engaged in a pattern of cybersquatting, which is evidence of bad faith registration and use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent 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 domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant owns various trademark registrations for the word mark LEGO.
The disputed domain name reproduces the Complainant’s trademark in its entirety and combines this trademark with a hyphen and the descriptive term “racers”.
The trademark LEGO is the most distinctive element in the disputed domain name. The mere addition of a hyphen and of the descriptive term “racers” does not change the overall impression produced by the disputed domain name.
The disputed domain name is therefore confusingly similar to a trademark in which the Complainant has rights according to paragraph 4(a)(i) of the Policy (see Banque Pictet & Cie SA v. Brian Dyson and David Kalan,WIPO Case No. D2016-1114; Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007-1168).
The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Based on the information submitted by the Complainant, the Respondent is not a licensee of the Complainant, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no indication that the disputed domain name corresponds to the Respondent’s name.
The Respondent has used the disputed domain name in connection with a website featuring sponsored links promoting racing games. A number of UDRP panels have found that use of a domain name corresponding to the trademark of another for the purpose of offering sponsored links is generally not evidence of any rights or legitimate interests (see Woolworths Limited v. DomainAdminkPrivacyP / Smvs Consultancy Private Limited,WIPO Case No. D2010-1046; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation,WIPO Case No. D2009-0776; Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe,WIPO Case No. D2007-1695).
The Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel finds that the Respondent’s silence corroborates the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Panel rules that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy C. Registered and Used in Bad Faith
Given the well-known character of the LEGO trademark, the Panel accepts that the Respondent most probably knew of the Complainant’s trademark when it registered the disputed domain name. It is indeed implausible that the Respondent selected the disputed domain name without having the Complainant’s trademark in mind.
Furthermore, the Respondent has used the disputed domain name in connection with a website featuring sponsored links. This shows, in the Panel’s opinion, an intention on the part of the Respondent to exploit and profit from the Complainant’s trademark, by attempting to generate financial gains by means of “click through” revenues. Such conduct constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy (see F. Hoffmann-La Roche AG v. James Lee,WIPO Case No. D2009-1199; Scania CV AB v. Michael Montrief,WIPO Case No. D2009-1149; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, supra; and AllianceBernstein LP v. Texas International Property Associates,WIPO Case No. D2008-1230).
Finally, the Respondent is or was involved as respondent in many UDRP cases where the domain names in dispute included trademarks of others. This circumstance shows in the Panel’s view that the Respondent is engaged in a pattern of registering domain names in order to prevent the owners of trademarks from reflecting their mark in a corresponding domain name. Such a pattern amounts to registration and use of a domain name in bad faith according to paragraph 4(b)(ii) of the Policy.
For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in 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 name be transferred to the Complainant.
Anne-Virginie La Spada
Sole Panelist
Date: May 13, 2019
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