The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Nadir Boukeraa, Algeria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2020. On April 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2020, 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 April 14, 2020 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 April 15, 2020. 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 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on May 7, 2020. The Center appointed Dennis A. Foster as the sole panelist in this matter on May 8, 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 The Complainant is a Danish company that is best known for its production and worldwide sale of constructions toys. The Complainant operates under its LEGO trademark, which has been registered with many trademark authorities throughout the world, including in Algeria (Registration No. 060691; registered on May 5, 2001). The disputed domain name, - The Complainant, based in Denmark, is the maker of construction toys and other products. Its goods are sold in more than 130 countries throughout the world, including Algeria, the domicile of the Respondent. Those products are sold under the Complainant’s LEGO trademark, which is world famous, having been listed among the top ten worldwide brands by trademark research publications. - The Complainant has registered its LEGO trademark with many trademark authorities throughout the world, including in Algeria. The Complainant also operates under the domain name - The disputed domain name, - The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or authorized the Respondent to use the LEGO trademark in any way. Moreover, the Respondent is not an authorized dealer of the Complainant’s products. Also, the Respondent has not made any bona fide or legitimate use of the disputed domain name, since it merely resolves to a webpage that offers no content except a posting of “website coming soon!”. - The disputed domain name was registered and is being used in bad faith. The Complainant’s LEGO mark is world famous and, being aware of that fame, the Respondent was motivated to capitalize on it illegitimately. Furthermore, the Respondent failed to respond to the Complainant’s cease-and-desist letter, which offered a reasonable reimbursement of costs relating to a transfer of ownership of the disputed domain name. The Respondent’s passive holding of the disputed domain name does not bar a finding that he registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under Policy paragraphs 4(a)(i) - (iii), the Panel may rule in favor of the Complainant and grant a transfer of the disputed domain name, - The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and - The Respondent has no rights or legitimate interests in respect of the disputed domain name; and - The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has given the Panel ample evidence that the Complainant owns valid trademark registrations for its LEGO trademark throughout the world, including with the trademark authority in the home country of the Respondent, Algeria. This evidence leads the Panel to conclude that the Complainant has the rights in the LEGO mark required under Policy paragraph 4(a)(i). See, VKR Holding A/S v. Li Pinglong,WIPO Case No. D2016-2269 (“A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.”); and Horten Advokatpartnerselskab v. Domain ID Shield Service CO., Limited / Krutikov Valeriy Nikolaevich,WIPO Case No. D2016-0205. The disputed domain name, As a result, the Panel finds that the Complainant has succeeded in proving that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Policy requires that a complainant prove that a respondent has no rights or legitimate interests in a disputed domain name, but the consensus of prior UDRP decisions is that such a complainant need present only a prima facie case that the respondent lacks those rights or interests before the burden of production shifts to that respondent to come forward with concrete evidence that it does have said rights or interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1; and Hermès International v. Registrant [3585485]: Boris Moser,WIPO Case No. D2011-0406 (“It is the consensus view of WIPO UDRP panelists that once a complainant has established a prima facie case, it is respondent’s responsibility to prove otherwise.”). In this case, the Panel has found that the disputed domain name is confusingly similar to the Complainant's trademark, and the Complainant has asserted clearly that it has granted the Respondent no license or authorization to use that trademark for any purpose. Therefore, the Panel determines that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. No response has been filed, but the Panel will nevertheless examine the Complaint and the record in its entirety to ascertain whether there is sufficient support for the proposition that the Respondent can rebut the Complainant’s prima facie case. The Panel believes that the Complainant makes clear that the disputed domain name resolves to an inactive website that, at best, hints at activation to come. The Panel concludes that this use of the disputed domain name falls far short of meeting the criteria cited in Policy paragraph 4(c)(i) of use, or demonstrable preparations to use, the disputed domain name in connection with “a bona fide offering of goods or services”. See, Sanofi v. Kelly, cti,WIPO Case No. D2016-1615 (“...the Respondent is not making a bona fide offering of goods and services once the disputed domain name resolves to an inactive page.”); and HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. Private Registration / George Kara,WIPO Case No. D2015-0666 (“...the Panel accepts that the disputed domain name was registered with the intention of referencing Complainant’s mark in order to run a parked webpage, as the disputed domain name does not appear to be in use for any bona fide offering of goods or services.”) With respect to Policy paragraph 4(c)(ii), the Panel can conclude swiftly that there is scant reason to suspect that the Respondent, Nadir Boukeraa, is or has been commonly known as the disputed domain name Since the Panel has previously noted that it accepts the Complainant’s contention that the disputed domain name is connected to an inoperative webpage, the Panel determines that the disputed domain name is not being put to a “legitimate noncommercial or fair use” as would be required to sustain a finding of the Respondent’s rights or legitimate interests in the disputed domain name per Policy paragraph 4(c)(iii). The Panel has thus concluded that none of the criteria listed in Policy paragraph 4(c), which might have given rise to a Respondent claim of rights or legitimate interests in the disputed domain name, apply in this case. Accordingly, the Panel must uphold the Complainant’s prima facie case as controlling. As a result, the Panel finds that the Complainant has succeeded in proving that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy cites four circumstances that, if any one were found to occur by the Panel, could give rise to a finding of bad faith registration and use of the disputed domain name. However, many prior Policy panels have noted that findings of bad faith are not restricted to inclusion within those enumerated circumstances. See, WIPO Overview 3.0, section 3.1 (“...the scenarios described in UDRP paragraph 4(b) are non-exclusive and are merely illustrative...”); and Rolls-Royce PLC v. Ragnar Kallaste,WIPO Case No. D2014-2218 (“The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found.”). Based upon its own independent knowledge, and based on the trade journal information the Complainant provided, the Panel believes that the Complainant’s LEGO mark is among the most famous in the world. That circumstance by itself compels the Panel to conclude that the Respondent’s inclusion of that mark in a confusingly similar disputed domain name is sufficient evidence to sustain the determination that the Respondent registered and is using the disputed domain name in bad faith. See, Gray Television Group, Inc. v. Manila Industries, Inc.,WIPO Case No. D2007-0504 (“There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use.”); and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Finally, as noted above, the Panel accepts the Complainant’s contention that the disputed domain name is held passively. Previous UDRP panels have found that such use does not prevent a finding of bad faith. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. As a result, the Panel finds that the Complainant has succeeded in proving that the disputed 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 disputed domain name, Dennis A. Foster
Sole Panelist
Date: May 22, 2020
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