The Complainant is LEGO Juris A/S, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) (“First Respondent”) and Sun Chong, China (“Second Respondent”). 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 19, 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. On the same day, the Center sent an email communication to the Complainant 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 September 23, 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 September 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2019. The Center appointed Matthew Kennedy as the sole panelist in this matter on October 23, 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 is the owner of LEGO trademarks used in connection with construction toys and other products. The Complainant is the owner of multiple trademarks including United States trademark registration number 1,018,875 for LEGO, registered on August 26, 1975, specifying toy building blocks and other goods in international class 28; United States trademark registration number 1,026,871 for a LEGO device mark (the “LEGO logo”), registered on December 9, 1975, specifying toy building blocks and other goods in international class 28; and Chinese trademark registration number 75682 for LEGO in a particular script, registered on December 22, 1976, specifying toys and other goods in international class 28. Those trademark registrations remain current. The Complainant is also the registrant of many domain names that contain the word “lego”, including The First Respondent is a privacy service located in the United States. The Second Respondent is an individual resident in China. The disputed domain names were all registered on July 10, 2019. The disputed domain names formerly resolved to a website or websites in English that prominently displayed the Complainant’s LEGO logo and offered for sale the Complainant’s toys, games, and other products. Prices were quoted in USD and heavily discounted. The Complainant sent emails and letters to the Respondents on August 2, 9, and 16, 2019, requesting the transfer of the disputed domain names. Subsequently, the disputed domain names ceased to resolve to active websites and remain passively held. 5. Parties’ Contentions A. Complainant The disputed domain names are confusingly similar to the Complainant’s LEGO trademark. None of their other elements detracts from their overall impression. The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents have no registered trademarks or trade names corresponding to the disputed domain names. No license or authorization of any other kind, has been given by the Complainant to the Respondents, to use the trademark LEGO. The Respondents are not authorized dealers of the Complainant’s products and have never had a business relationship with the Complainant. No evidence has been found that the Respondents are using the name LEGO as a company name or has any other legal rights in the name. The disputed domain names were registered and are being used in bad faith. The fame of the LEGO trademark motivated the Respondents to register the disputed domain names. The disputed domain names were connected to unauthorized commercial websites offering LEGO products. The Complainant’s LEGO logo was prominently displayed on the websites. Consequently, the Respondents were using the disputed domain names to intentionally attempt to attract Internet users to their websites for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of their websites. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Multiple Domain Name Registrants The Complaint initiates disputes in relation to two nominally different domain name registrants. The First Respondent is a privacy service identified by the Registrar as the registrant of the disputed domain names Paragraph 10(e) of the Rules requires a panel to decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In the present case, the ultimate holder of all three disputed domain names may in fact be the same person but the Registrar has only disclosed the underlying registrant of one of them. In any case, the Panel does not consider that paragraph 3(c) of the Rules was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. As regards common control, the Panel notes that all three disputed domain names were registered on the same day with the same Registrar via the same privacy service, and that they all formerly resolved either to the same website or to websites with the same format and virtually the same content. Moreover, the disputed domain names follow a pattern in that they all contain the same trademark followed by a dictionary word and the same generic Top-Level Domain (“gTLD”) “.top” (discussed in Section 6.2A below). In these circumstances, the Panel is persuaded that all three disputed domain names are under common control. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the two nominally different disputed domain name registrants (referred to collectively and separately below as “the Respondent”, except where otherwise indicated) in a single proceeding. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (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. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the LEGO trademark. Each of the disputed domain names wholly incorporates the LEGO trademark as its initial element. Each of the disputed domain names also includes a dictionary word, variously “club”, “deals”, or “offers”, but these dictionary words do not dispel the confusing similarity between the disputed domain names and the Complainant’s trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No.D2001-0110. The LEGO trademark remains clearly recognizable within each disputed domain name. The disputed domain names also include the gTLD “.top”. As a mere technical requirement of registration, a TLD is disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy unless it has some impact beyond its technical function, which is not the case here. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making 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. As regards the first circumstance set out above, the disputed domain names are now passively held but they each formerly resolved to websites displaying the Complainant’s LEGO logo and offering for sale the Complainant’s products. The Complainant submits it has not given any license or authorization of any other kind to the Respondent to use the LEGO trademark and that the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. Regardless of whether the products sold on the Respondent’s websites were genuine or counterfeit, the websites did not disclose the lack of a relationship between the Respondent and the Complainant. On the contrary, the display of the Complainant’s LEGO logo gave the misleading impression that the website was affiliated with, or approved by, the Complainant. Therefore, the Panel does not find this to be a use of the disputed domain names in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Moreover, the Panel finds that the disputed domain names carry a risk of implied affiliation. As regards the second circumstance, the First Respondent’s name is that of a privacy service while the Second Respondent’s name is “Sun Chong”, not the disputed domain names, nor even “Lego”. There is no evidence indicating that the Respondent has been commonly known by any of the disputed domain names as envisaged by paragraph 4(c)(ii) of the Policy. As regards the third circumstance, the disputed domain names formerly resolved to websites offering products for sale, and they are now passively held. These are not legitimate noncommercial or fair uses of the disputed domain names within the circumstances of paragraph 4(c)(iii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because it did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows: (iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] website or location. With respect to registration, the disputed domain names were only registered in 2019, many years after the registration of the Complainant’s LEGO trademarks, including in the United States and China where the Respondent is located. Each disputed domain name wholly incorporates the LEGO trademark as its initial element. The disputed domain names formerly resolved to a website that prominently displayed the Complainant’s LEGO logo, which gives the Panel reason to infer that the Respondent was aware of the Complainant, its trademarks and its products at the time of registration of the disputed domain names earlier this year. The Panel finds that the Respondent deliberately chose to register the Complainant’s LEGO trademark in the disputed domain names in bad faith. With respect to use, the Respondent formerly used the disputed domain names, which are confusingly similar to the Complainant’s LEGO trademark, to resolve to websites displaying the Complainant’s LEGO logo and offering for sale the Complainant’s products, giving the misleading impression that it was affiliated with, or approved by, the Complainant. The Panel finds that the Respondent was using the disputed domain names intentionally to attract, for commercial gain, Internet users to its website 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 of a service on the Respondent’s website, within the terms of paragraph 4(b)(iv) of the Policy. The Panel notes that the use of the disputed domain names changed after the Complainant sent a cease-and-desist letter and that disputed domain names are now passively held. This change in use does not alter the Panel’s conclusions and may constitute further evidence of bad faith. Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 Matthew Kennedy
Sole Panelist
Date: November 4, 2019
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