The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Paul Dean, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2020. On July 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2020, 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 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2020. The Center appointed Steven A. Maier as the sole panelist in this matter on August 11, 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 trademark registration number 1018875 for the word mark LEGO, registered on August 26, 1975 in International Class 28. The disputed domain name was registered on March 30, 2020. It does not appear to have resolved to any active website. 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 all 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 term LEGO. The Complainant exhibits promotional materials evidencing the fact that it trades as The Lego Group. 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 “gruop”, which is an obvious misspelling of the word “group”. The Complainant contends that the addition of this term does not prevent the disputed domain name from being confusingly similar to its LEGO trademark, and indeed underscores that confusion since the Complainant trades as The Lego Group. 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 making neither bona fide commercial use nor legitimate noncommercial or fair 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 further 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 the combination of its LEGO mark with the misspelled word “gruop” demonstrates that the Respondent can have had no plausible reason to register the disputed domain name. The Complainant contends that the Respondent’s passive holding of the disputed domain name does not prevent a finding of bad faith in all the circumstances of the case. The Complainant further submits that the Respondent ignored a “cease and desist” communication sent before this proceeding was commenced and that the Respondent has registered numerous other domain names which incorporate well-known third party trademarks. 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 comprises the whole of that trademark together with the term “gruop”, which the Panel accepts can have no sensible meaning other than as a misspelling of the term “group”. The Panel finds that the addition of this term is not effective to distinguish to disputed domain name from the Complainant’s trademark and finds, therefore, that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests 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 “gruop”, which can only sensibly be taken as a deliberate misspelling of the word “group”. In view particularly of the fact that the Complainant trades as The Lego Group, the only conclusion that the Panel can reasonably reach is that the Respondent registered 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 disputed domain name comprises an impersonation of the Complainant and is inherently misleading and the Panel can see no legitimate purpose to which the Respondent could put the disputed domain name. Taking all such circumstances into account, the Panel considers it irrelevant to the Respondent’s obvious bad faith that it has made no active use of the disputed domain name as yet (see, e.g., Telstra Corp, Inc. v. Nuclear Marshmallows,WIPO Case No. D2000-0003). 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: August 26, 2020
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