The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2019. On June 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 24, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 July 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2019.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on August 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 following facts are undisputed.
The Complainant is a worldwide well-known company, famous for its 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, including in Panama.
The Complainant is the owner of a number of registrations for the trademark LEGO in various jurisdictions, including but not limited to various United States of America trademarks (word marks) LEGO, the earliest of which dates back to 1975 (trademark registration no. 1018875, registered on August 26, 1975), for goods in class 28, a Panama trademark LEGO, filed in 1979 for goods in class 28 and numerous national and regional trademark registrations for goods in inter alia class 28 (hereinafter in singular referred to as the “Trademark”).
Furthermore, the Complainant owns close to 5,000 domain names incorporating the Trademark, for instance .
The Domain Name was registered by the Respondent on October 31, 2018. The Domain Name directs the public to a parked aggregator website. Each time, the Domain Name resolves to a different website on which products are being offered for sale, unrelated to the products of the Complainant. Furthermore, the Domain Name is for sale on SEDO. 5. Parties’ Contentions A. Complainant
Insofar as relevant, the Complainant contends the following.
The Domain Name is confusingly similar to the Trademark. The dominant part of the Domain Name reproduces the Trademark. In addition, the Domain Name comprises the suffix “outlets”, which not have any impact on the overall impression of the dominant part of the Domain Name, LEGO.
The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has not registered any trademarks or trade names corresponding with the Domain Name. Furthermore, the Respondent is not sponsored by or affiliated with the Complainant in any way. No license or authorization of any kind has been given by the Complainant to the Respondent to use the Trademark. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Respondent is using the Domain Name in an attempt to profit off the fame of the Trademark.
The Domain Name was registered and is being used in bad faith. The Trademark is a well-known trademark with a substantial and widespread reputation throughout the world. Domain name registrations compromising the Trademark in combination with other words have been attractive for domain name “infringers”, given the many domain name decisions regarding the Trademark. The Respondent has registered the Domain Name, which is confusingly similar to the Trademark with the intent of disrupting the business of the Complainant by diverting the internet public to an aggregator website and is each time resolving to a different website. The Complainant has sent a cease and desist letter and several reminders to the Respondent. However, the Respondent failed to reply. The Respondent is using a privacy service to hide its identity, which serves as evidence for registration in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the aforementioned trademark.
The Complainant has shown that it has rights in the Trademark.
The Domain Name incorporates the Trademark and adds the word “outlet”. The Panel finds that the dominant part of the Domain Name is “lego” and that the element “outlet” does not prevent a finding of confusing similarity.
The addition of the generic Top-Level Domain (“gTLD”) “.com” is in this matter irrelevant in the determination of the confusing similarity between the Trademark and the Domain Name, see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. See also, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903: “[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”
Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “Lego Outlets” is the Respondent’s name or that the Respondent is commonly known as “Lego Outlets”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s marks, or to apply for or use any domain name incorporating any of the Complainant’s trademarks.
Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods and services. From the screenshots that were provided by the Complainant, it follows that the Domain Name is resolving to a different website each time. On these websites, all kinds of products are being offered, including the products of the Complainant.
Therefore, the Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith
In light of the evidence filed by the Complainant, the Panel finds that the Complainant’s Trademark and activities are well known throughout the world.
In the Panel’s view there is no other plausible explanation why the Respondent registered the Domain Name, other than the Respondent being aware of the Complainant and the Trademark and intending to trade off the goodwill and reputation associated with the Complainant. The Complainant has shown that lots of third parties are trying to profit from the well-known reputation of the Trademark, by registering domain names confusingly similar to the Trademark. The Complainant has acted against many third parties’ domain name registrations containing the Trademark by initiating proceedings against many of such third parties, e.g. 28 cases in 2018 alone.
Furthermore, the Panel finds that the Respondent has intentionally attempted to attract users to its Website by creating a likelihood of confusion with the Trademark.
Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use of the Domain Name by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith. 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.
Willem J. H. Leppink
Sole Panelist
Date: August 13, 2019
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