The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is ken Teo, Singapore. 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 11, 2020. On September 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 15, 2020, 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. The Center sent an email communication to the Complainant on September 16, 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 September 17, 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 September 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2020. The Center appointed Federica Togo as the sole panelist in this matter on October 19, 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 the registered owner of several trademarks worldwide consisting of or containing the term “LEGO”, e.g., Singaporean registered trademark no. T6435007D, registered since May 23, 1964, for games and playthings in class 28. This mark has been duly renewed and is in force. Singaporean registered trademark no. T7359649H, registered since December 15, 1973, for games and playthings in class 28. This mark has also been duly renewed and is in force. The Complainant is a supplier of construction toys under the trademark LEGO. It results from the information disclosed by the Registrar that the disputed domain names were created on May 20, 2020. Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain names resolve to parking websites comprising pay-per-click links, some of which are clearly related to the toy sector in which the Complainant operates and some directly references the Complainant and its business. 5. Parties’ Contentions A. Complainant It results from the Complainant’s undisputed allegations that the Complainant, based in Denmark, runs the business of making and selling LEGO branded toys. The Complainant has subsidiaries and branches throughout the world and LEGO products are sold in more than 130 countries, including in Singapore. The Complainant has expanded its use of the LEGO trademark from construction toys to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. Moreover, the Complainant is the owner of close to 5,000 domain names containing the term “lego” and uses the website “www.lego.com” in connection with its activity. The Complainant contends that its trademarks LEGO are highly distinctive and well known worldwide. It further contends that its trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO trademark on all products, packaging, displays, advertising, and promotional materials. The Complainant further contends that the disputed domain names are confusingly similar to the Complainant’s registered trademark LEGO since the dominant part of the disputed domain names comprises the term “lego”. The fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions. In addition to the trademark LEGO, the disputed domain names also comprise the suffix “promotion”. However, it 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. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names. According to the Complainant, the Respondent is not known by the name “Legopromotion” and has no right or legitimate interest in this name, which does not correspond to its company name or to any trademarks it may have. Furthermore, the Respondent is not linked to the Complainant’s activity and has no license or authorization to use the trademark LEGO. It further results from the Complainant’s undisputed contentions that the disputed domain names resolves to websites that feature multiple third-party links some of which are clearly related to the toy sector and some other links that directly references the Complainant and its business. According to the Complainant, the Respondent presumably receives pay-per-click fees from the linked websites. The Complainant therefore concludes that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Finally, the Complainant contends that the disputed domain names were registered and are being used in bad faith. According to the Complainant’s undisputed allegations, the Respondent was aware of the rights the Complainant has in the trademark LEGO and the value of said trademark, at the point of the registration, since LEGO is a famous trademark worldwide. The Complainant further contends that the Respondent is trying to ride off the Complainant’s worldwide reputation, since according to the Complainant’s proved allegations the disputed domain names resolve to parking websites comprising pay-per-click links. Whether or not the Respondent has influenced what links should be included on the website is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not the Respondent is actually getting revenue from the website himself. Consequently, the Respondent is using the disputed domain names to intentionally attempt to attract Internet users to his website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of his websites. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled: (i) the disputed domain name is 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the element LEGO. Reference is made in particular to Singaporean registered trademark no. T6435007D, registered since May 23, 1964, for games and playthings in class 28. This mark has been duly renewed and is in force. Singaporean registered trademark no. T7359649H, registered since December 15, 1973, for games and playthings in class 28. This mark has also been duly renewed and is in force. These trademark registrations predate the creation date of the disputed domain names, which is May 20, 2020. UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter,WIPO Case No. D2020-2060; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464; and Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1409). This Panel shares this view and notes that the Complainant’s registered trademark LEGO is fully included in the disputed domain names, followed by the term “promotion”. Furthermore, it is the view of this Panel that the addition of the term “promotion” in the disputed domain names cannot exclude the confusing similarity between the disputed domain names and the Complainant’s trademark, since the Complainant’s trademark is clearly recognizable in the disputed domain names. Furthermore, the applicable Top-Level Domain (“TLD”) in the disputed domain names are to be disregarded under the confusing similarity test, (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.11.1). In the light of the above, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain names. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain names. According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark LEGO or the registration of the disputed domain names. Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain names in the sense of paragraph 4(c)(ii) of the Policy. In addition, it results from the undisputed evidence before the Panel that the disputed domain names resolve to parking websites comprising pay-per-click links that compete with or capitalize on the Complainant’s trademark. UDRP panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0 at section 2.9, with further references). This Panel shares this view and notes that the Complainant’s trademark LEGO has gained a worldwide reputation. Therefore, such use can neither be considered as bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). It is the view of this Panel that these circumstances are met in the case at hand. The Complainant’s trademarks have existed for decades and have gained a worldwide reputation. Therefore, this Panel has no doubt that the Respondent positively knew or should have known that the disputed domain names consisted of the Complainant’s LEGO trademarks when he registered the disputed domain names. Registration of the disputed domain names in awareness of the reputed LEGO mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see, e.g., Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter, supra; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. supra; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, supra; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Petra Wirth,WIPO Case No. D2018-0246; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320). The Complainant also proved that the disputed domain names resolve to parking websites comprising pay-per-click links that compete with or capitalize on the Complainant’s trademark, so that the Panel is satisfied that the disputed domain names, incorporating in its entirety the Complainant’s trademark that has gained a worldwide reputation, are being used to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s websites or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or locations, or of a product or service on the Respondent’s websites or locations. In the light of the above, the Panel finds that the disputed domain names have been registered and are being used in bad faith pursuant to 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 Federica Togo
Sole Panelist
Date: November 2, 2020
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