The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Devon Derby, American Samoa. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2020. On June 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 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 July 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 July 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 July 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2020. The Center appointed Steven A. Maier as the sole panelist in this matter on August 24, 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 company incorporated in Denmark. It is a supplier of construction toys under the brand name and trademark LEGO. The Complainant is the owner of registrations for the trademark LEGO in numerous countries throughout the world. Those registrations include, for example, United States of America (“United States”) trademark number 1018875 for the word mark LEGO, registered on August 26, 1975 in International Class 28. The disputed domain name was registered on April 6, 2020. It appears to have resolved to a website in the Turkish language at “www.casinolego.com” offering links to casino and gambling services. 5. Parties’ Contentions A. Complainant The Complainant submits that its LEGO mark is among the world’s best known and most reputable trademarks, as the result of decades of advertising and its prominent use of the LEGO mark on products, packaging and promotional materials. It states that its products are sold in over 130 countries including the United States and that the LEGO mark has received numerous accolades, including recognition as the number one brand in both the Superbrands list of consumer brands and the Reputation Institute’s list of the world’s most reputable companies. It relies, in addition to its extensive trademark portfolio, on its registration of over 5,000 domain names including the mark LEGO. The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. The Complainant states that the disputed domain name comprises its well-known and distinctive LEGO trademark together with the term “casino”, which does not diminish the confusing similarity between the disputed domain name and Complainant’s trademark. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has never authorized the Respondent to use its LEGO mark, that the Respondent has not commonly been known by a name corresponding to the disputed domain name and that the Respondent is not making any legitimate use of the disputed domain name. The Complainant contends in particular that the use of its LEGO trademark misleadingly to divert Internet users to a gambling website cannot constitute bona fide commercial use of the disputed domain name. The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant contends that such is the fame of its LEGO trademark that the Respondent must inevitably have registered the disputed domain name with that trademark in mind. The Complainant submits that the incorporation of a well-known trademark into a domain name without any plausible explanation is of itself evidence of bad faith. The Complainant submits that it is obvious from the Respondent’s choice of the disputed domain name and his use of the disputed domain name that the Respondent has chosen a trademark, which is world famous for its construction toys, to attract visitors to a website displaying links to gambling websites. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to its 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. The Complainant further submits that the Respondent ignored a “cease and desist” communication sent before this proceeding was commenced and that the Respondent has provided false contact details to the registrar in connection with the disputed domain name. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has established that it is the owner of registered trademark rights in the mark LEGO. The disputed domain name, In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name comprises the Complainant’s widely known and distinctive LEGO trademark together with the term “casino” and has been used for the purpose of a website displaying gambling links which is unrelated to the Complainant or its business of construction toys. The disputed domain name is inherently misleading and comprises an impersonation of the Complainant and the Panel can see no purpose to which the Respondent could legitimately put the disputed domain name without the Complainant’s authorization. The only conclusion that the Panel can reasonably reach in these circumstances is that the Respondent registered and has used the disputed domain name with the deliberate intention of causing confusion to Internet users as to an association between the disputed domain name and the Complainant in the circumstances contemplated by paragraph 4(b)(iv) of the Policy. The Panel therefore finds that the disputed domain name has been 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, Steven A. Maier
Sole Panelist
Date: September 7, 2020
Full & Egal Universal Law Academy