Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is lin zhang, Cambodia. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2020. On March 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 23, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 17, 2020. The Center appointed Scott R. Austin as the sole panelist in this matter on April 27, 2020. 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 Complainant states in its Complaint, and provides evidence in the respective Annexes attached to its Complaint sufficient to support that: 1) Based in Denmark, Complainant is the owner of the trademark LEGO (the “LEGO Mark”), and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products. 2) “The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in Cambodia and elsewhere”; 3) “The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Cambodia”; 4) “The LEGOMark is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO [M]ark on all products, packaging, displays, advertising, and promotional materials”; 5) “[T]he LEGO Mark and brand have been recognized as being famous”; 6) “[T]he Reputation Institute recognized the LEGO Group as number 1 on its list of the world’s Top10 Most Reputable Global Companies of 2020, and applauded the LEGO Group’s strong reputation, having been on its top 10 list for 10 consecutive years”; 7) “In 2014, TIME also announced LEGO to be the Most Influential Toy of All Time.”; 8) Complainant has provided in the Annexes attached to its Complaint lists of the registered trademarks on which its Complaint is based, along with copies of the trademark certificates for the LEGO Mark in a number of jurisdictions, including but not limited to, the following: a) United States of America Trademark Registration No. 1,018,875, LEGO, registered on August 26, 1975, claiming a first use in commerce date of at least as early as June 4, 1953, for “toy building blocks and connecting links for the same, sold separately and as kits for construction of toy houses, buildings, household furnishings, robots, doll figures and vehicular toys” in International Class 28; b) Denmark Trademark Registration No. VR195400604, registered on May 1, 1954, for a range of goods in International Class 28.; and c) Cambodian Trademark Registration No. 898, LEGO, registered on July 23, 1992, for a range of goods in International Class 28. 9) “Complainant is the owner of close to 5,000 domain names containing the term LEGO”; 10) “The LEGO Group also maintains an extensive website under the domain name 11) The Disputed Domain Names were registered by Respondent on October 23, 2019 and resolve to a “website featuring adult content”. 5. Parties’ Contentions A. Complainant The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights because: a) “The dominant part of the Disputed Domain Names comprises the term ‘lego’, identical to the registered trademark LEGO, registered by Complainant as trademarks and domain names in numerous countries all over the world”; b) “The fame of the LEGO Mark has been confirmed in numerous previous UDRP decisions”; c) “[I]t is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes” and “In this case, the numerical suffixes do not detract from the overall impression”; d) “The addition of the Top-Level Domain (TLD) (.SPACE) does not have any impact on the overall impression of the dominant portion of the Disputed Domain Names and is therefore irrelevant to determine the confusing similarity between the trademark and the Disputed Domain Names”; e) “[P]ersons seeing the Disputed Domain Names at issue, even without being aware of the content, are likely to think that the Disputed Domain Names are in some way connected to Complainant, when in fact it is not”; f) “[T]there is a considerable risk that the trade public will perceive Respondent’s Disputed Domain Names either as domain names owned by Complainant, or that there is some kind of commercial relation with Complainant.”; Respondent has no rights or legitimate interests in the Disputed Domain Names because: a) “No license or authorization of any other kind, has been given by Complainant to Respondent, to use the LEGO Mark”; b) “LEGO is a famous trademark worldwide.” and “use of such a trademark in a domain name would violate the rights of the trademark owner”; c) “[U]se of a disputed domain name that is confusingly similar to a complainant’s trademarks to link to a website featuring pornographic or adult content evinces a lack of legitimate rights or interests”; d) “As no evidence has been found that Respondent is using the name ‘lego’ as a company name or has any other legal rights in the name, it is quite clear that Respondent is simply trying to benefit from Complainant’s world famous trademark”; The Disputed Domain Names have been registered and are being used in bad faith because: a) “[T]he LEGO Mark in combination with other words has always been attractive to domain name infringers”; b) The registration date of each Disputed Domain Name “is subsequent to when the Complainant registered the LEGO Mark in Cambodia where the Respondent resides, and elsewhere, by decades.”; c) “Respondent cannot claim to have been using the LEGO Mark, without being aware of Complainant’s rights to it”; d) Despite that reminders were being sent, no reply was ever received to Complainant’s cease and desist letter sent to Respondent; e) “Respondent has chosen a trademark, which is world famous for its construction toys, to attract visitors to the websites of adult content”; and f) “Respondent is not making a legitimate noncommercial or fair use but is misleadingly diverting consumers for commercial gain.” B. Respondent The Respondent did not reply to the Complainant’s contentions. Respondent’s default does not automatically result in a decision in favor of Complainant. Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof is on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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 standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See section 4.2, WIPO Overview 3.0. A. Identical or Confusingly Similar To prove this element, Complainant must have trade or service mark rights and the Disputed Domain Names must be identical or confusingly similar to Complainant’s trade or service mark. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Moreover, “[n]oting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element. […] the filing/priority date, date of registration, and date of claimed first use, are not considered relevant to the first element test. These factors may however bear on a panel’s further substantive determination under the second and third elements”. WIPO Overview 3.0, section 1.1.2. Based upon the numerous trademark registrations cited by Complainant, as well as supporting documents, the Panel finds that Complainant has established trademark rights in and to its LEGO Mark used by Complainant and its licensees in connection with, inter alia, the sale of its construction toys. The Panel also finds as have previous UDRP panels, that the LEGO Mark has achieved the status of worldwide fame. See e.g., LEGO Juris A/S v. Level 5 Corp,WIPO Case No. D2008-1692 (“The Panel finds that the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive”); LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715 (“The Panel finds, as numerous panels have found before, that the Complainant has established that LEGO is a well-known trademark and that the trademark is distinctive and famous”). The Panel also finds, based on the registration evidence submitted by Complainant, that its rights in its LEGO Mark existed and were used for decades prior to the registration of the Disputed Domain Names. Having met its burden for established trademark rights in the LEGO Mark, Complainant next contends that the Disputed Domain Names are identical or confusingly similar to Complainant’s LEGO Mark because the “dominant part of the Disputed Domain Names comprises the term ‘lego’, identical to the registered trademark LEGO, registered by Complainant as trademarks and domain names in numerous countries all over the world.” For the Disputed Domain Names to be found identical or confusingly similar to the LEGO Mark, the relevant comparison is with the second-level portion of each of the Disputed Domain Names, as it is well established that the generic Top-Level Domain (“gTLD”), in this case “.space” may generally be disregarded for this purpose. See WIPO Overview 3.0, section 1.11 (the gTLD as technical requirement for domain name registration is disregarded under the confusing similarity test). Prior UDRP panels have held “the 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”. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Panel agrees and notes that section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” The Panel finds Complainant’s LEGO Mark is incorporated in its entirety into each corresponding Disputed Domain Name to render each Disputed Domain Name confusingly similar to Complainant’s LEGO Mark in which Complainant has established trademark rights. Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under this second element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate evidence, a complainant is generally deemed to have satisfied the second element under the UDRP. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Respondent here has failed to appear to present any evidence of its rights or legitimate interests in the Disputed Domain Names. The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Names. First, Complainant contends that “No license or authorization of any other kind, has been given by Complainant to Respondent, to use the LEGO Mark”. Complainant also asserts and the WhoIs record submitted in the Annex to the Complaint supports, “Respondent appears to be trading under the name ‘lin zhang’, which does not resemble the Disputed Domain Names in any manner.” The Panel finds that Respondent has neither any connection with Complainant, nor has Respondent been authorized or licensed by Complainant to use and register the LEGO Mark or to register any domain name incorporating Complainant’s LEGO Mark. Prior UDRP panels under the Policy have found that “[i]n the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed”. See Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875; Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055 (“in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.”); see also Six Continents Hotels, Inc. v. Patrick Ory,WIPO Case No. D2003-0098 (“There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.”). Complainant contends Respondent is not commonly known by either of the Disputed Domain Names or the LEGO Mark, in accordance with paragraph 4(c)(ii) of the Policy. The Panel finds upon review of the record and evidence submitted by Complainant that Respondent is not commonly known by either of the Disputed Domain Names. Since Respondent elected to submit no evidence in these proceedings, there is no evidence from Respondent to the contrary, i.e., that Respondent has been authorized or licensed to use Complainant’s LEGO Mark or is commonly known by any of the Disputed Domain Names. It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See Roust Trading Limited v. AMG LLC,WIPO Case No. D2007‑1857; see also Marriott International, Inc. v. Thomas, Burstein and Miller,WIPO Case No. D2000-0610 (no rights or legitimate interests when there is no evidence that respondent is commonly known by the domain name). The Panel accepts Complainant’s contentions that Respondent is not commonly known by the Disputed Domain Names and that Respondent has never been authorized by Complainant to use Complainant’s LEGO Mark. The Panel is therefore satisfied that Complainant has provided sufficient prima facie evidence that Respondent has no rights or legitimate interests in the Disputed Domain Names. Complainant next contends that “Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services […] but has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a website featuring adult content, not related to Complainant in any way.” The Panel notes that the record of evidence submitted in the Annex to the Complaint supports Complainant’s argument juxtaposing Complainant’s famous LEGO Mark for children’s toy building blocks against a website featuring adult content. Previous UDRP panels have held that use of a disputed domain name that is confusingly similar to a complainant’s trademarks to link to a website featuring pornographic or adult content evinces a lack of legitimate rights or interests. See MatchNet plc v. MAC Trading,WIPO Case No. D2000-0205 (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish Complainant’s mark). In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Names. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the Disputed Domain Names and that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy, paragraph 4(b): (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. The Panel finds that Respondent has registered and used the Disputed Domain Names in bad faith for at least the following reasons. First, Complainant contends and has provided persuasive support that Respondent registered the Dispute Domain Names fully aware of Complainant’s rights, stating, “[t]he registration date of each Disputed Domain Name is subsequent to when Complainant registered the LEGO Mark in Cambodia where Respondent resides, and elsewhere, by decades” and, therefore, “Respondent cannot claim to have been using the LEGO Mark, without being aware of Complainant’s rights to it”. Complainant’s evidence in support of its allegations is sufficient for the Panel to agree that Respondent could not plausibly argue that it did not have knowledge of Complainant’s world famous LEGO Mark, registered in the United States of America since 1975 and Cambodia since 1992, when Respondent registered the Disputed Domain Names decades later in October 2019. Prior UDRP panels have acknowledged that it is highly unlikely that a respondent would not have had awareness of complainant’s rights given complainant’s fame worldwide. See, e.g. cases cited under Section 6A above, e.g., LEGO Juris A/S v. Level 5 Corp,WIPO Case No. D2008-1692 (“The Panel finds that the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive”). The Panel finds that given the decades of prior use of Complainant’s LEGO Mark prior to Respondent’s registration of the Disputed Domain Names, the worldwide fame or the LEGO Mark and Respondent’s website landing page targeting Complainant’s LEGO Mark, Respondent registered the Disputed Domain Names with actual knowledge of Complainant’s LEGO Mark in bad faith. See Royds Withy King LLP v. Help Tobuy,WIPO Case No. D2019-0624. See WIPO Overview 3.0, section 3.2.2; see, e.g. eBay Inc. v. Sunho Hong,WIPO Case No. D2000-1633 (actual knowledge of Complainant’s rights in its trademarks a factor supporting bad faith). Complainant also contends and has submitted evidence to support that despite reminders being sent, no reply was ever received to Complainant’s cease and desist letter to Respondent. Previous UDRP panels have found that a respondent’s failure to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith. See e.g., News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460. Moreover, the UDRP panel in Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273, stated that, “[t]he incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”. See also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568. Respondent has had multiple opportunities to explain and justify how Respondent came to register the Disputed Domain names but has failed to do so. Indeed, the fact that Respondent has elected not to appear in this proceeding underscores that Respondent likely has no valid explanation for Respondent’s actions, which to this Panel appears on the evidence submitted to have been undertaken in bad faith. See, e.g., Volkswagen Group of America, Inc. v. Super Privacy Service Ltd. c/o Dynadot,WIPO Case No. D2019-2521. Finally, Complainant contends Respondent’s actions constitute use of the Disputed Domain Names in bad faith because “Respondent has chosen a trademark, which is world famous for its construction toys, to attract visitors to the websites of adult content”. As mentioned above, the Disputed Domain Names are connected to websites featuring sexually explicit, pornographic content, not related to Complainant in any way. Previous UDRP panels have consistently held that a respondent’s use of a confusingly similar domain name to direct unsuspecting internet users to adult content, as here, is evidence of bad faith registration and use of that domain name. See Microsoft Corp. v. Horner,WIPO Case No. D2002-0029 (holding respondent’s use of complainant’s mark to post adult-oriented photographs and publish links to additional adult-oriented websites evidenced bad faith use and registration). See also, Bayerische Motoren Werke AG v. Victor Frankl,WIPO Case No. D2013-0701 (“In this case, the Complainant alleges that the Respondent registered and uses the Disputed Domain Name in bad faith for a variety of reasons, particularly because of Respondent’s use of the Disputed Domain Name for an adult-content website. The Panel finds in this respect that such use must be considered as tarnishing the Trademark and the Complainant and therefore constitutes an evidence of a bad faith use of the Disputed Domain Name under the Policy.”) This Panel finds the same conclusion should be applied here because Respondent is using the LEGO Mark within the Disputed Domain Names to attract visitors and then redirect them to websites featuring adult content. The Panel finds Complainant’s arguments and evidence persuasive and no arguments or evidence have been submitted by Respondent to the contrary. Considering all the circumstances, the Panel concludes that Respondent has registered and used the Disputed Domain Names in bad faith and Complainant has satisfied 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 Scott R. Austin
Sole Panelist
Date: May 11, 2020
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