The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Not Disclosed Not Disclosed, LeMi CZ s.r.o., Czech Republic / Miloš Křeček, LeMi CZ s.r.o., Czech Republic. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2020. On October 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 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 October 9, 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 October 13, 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 October 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2020. On October 9, 2020, the Center received an informal communication from a third party. The Center received a communication from an alleged reseller/hosting party on October 20, 2020 claiming to be the sub-registrar of the disputed domain name. On October 27, 2020, the Respondent sent a communication to the Center informing that the disputed domain name will be canceled. The Complainant requested the suspension of the proceedings on October 29, 2020, the Center suspended the proceedings on October 30, 2020, first until November 29, 2020 and then, as requested by the Complainant, until December 26, 2020, upon the Complainant’s request for purposes of settlement discussions. The proceedings were reinstituted on December 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2021. The Respondent did not submit any formal response. The Center appointed Edoardo Fano as the sole panelist in this matter on January 13, 2021. 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. The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties. Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a formal response from the Respondent. 4. Factual Background The Complainant is LEGO Juris A/S, a Danish company mainly operating in the field of construction toys and owning several trademark registrations for LEGO, among which: - European Union Trade Mark (“EUTM”) Registration No. 000039800 for LEGO, registered on October 5, 1998. The Complainant operates on the Internet at the main website “www.lego.com”, as well as with many other generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) including the trademark LEGO. The Complainant provided evidence in support of the above. According to the WhoIs records, the disputed domain name was registered on September 5, 2019 and when the Complaint was filed the disputed domain name redirected to a website promoting LEGO Museums in the Czech Republic and offering LEGO products for sale. On June 26, 2020, the Complainant’s legal representatives sent a cease and desist letter and email to the Respondent followed by several reminders. The Respondent did not reply. 5. Parties’ Contentions A. Complainant The Complainant states that the disputed domain name Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark LEGO is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the use of the disputed domain name with the purpose of intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement, qualifies as bad faith registration and use. B. Respondent Except for the email communication on October 27, 2020, the Respondent has made no formal reply to the Complainant’s contentions. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the absence of a reply to the Complainant’s contentions have been put forward or are apparent from the record. A respondent is not obliged to actively participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.,WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288). However, the Respondent submitted an informal email communication on October 27, 2020, simply stating: “Hello, I would like to let you know, the domain name will be canceled until 5.11.2020. Please let me know, if its ok and this case will be closed.” On October 29, 2020, the Complainant requested to suspend the proceedings in order to explore a settlement option with the Respondent and on November 25, 2020, it requested to extend the suspension for another 30 days. Since on December 24, 2020, the Complainant requested to lift the suspension and continue with the proceedings, expressing a preference for a recorded decision, the Panel finds it appropriate to proceed to a substantive decision on the merits, according to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.10. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed: (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. A. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of the trademark LEGO both by registration and acquired reputation and that the disputed domain name Regarding the addition of the terms “museum” and “of”, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713). The addition of the terms “museum” and “of” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark. It is also well accepted that a gTLD, in this case “.com”, may be ignored when assessing the confusing similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com,WIPO Case No. D2000-0607). The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Respondent has failed to file a formal response in accordance with the Rules, paragraph 5. The Complainant asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services because the Respondent, in the website at the disputed domain name, is not adequately disclosing the lack of relationship with the Complainant. In the circumstances, the Panel assesses this case as if the products sold on the website at the disputed domain name were genuine products. Should the products sold on the website to which the disputed domain name is redirecting Internet users be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using the disputed domain name that is confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to confusion. According to previous UDRP panel decisions in relation to the issue of resellers as summarized in the WIPO Overview 3.0, section 2.8.1: “(...) resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.” This section is based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Panel notes that the website at the disputed domain name is making no reference whatsoever to a relationship, or the lack of a relationship, between the Respondent and the Complainant and the Panel is of the opinion that this is sufficient to support the Complainant’s allegation in order to establish a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence provided. Moreover, the Panel finds that the composition of the disputed domain name carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. Based on the facts of this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that “[…] for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that [the Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) that [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or (iii) that [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location”. Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark LEGO is clearly established and the Panel finds that the Respondent likely knew the Complainant and deliberately registered the disputed domain name, especially because the disputed domain name resolved to a website where the Complainant’s museums in Czech Republic were promoted and goods bearing the Complainant’s trademark and logo were on sale. The Panel further notes that the disputed domain name is also used in bad faith since on the relevant website the Complainant’s trademark and logo are displayed, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement. The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to create confusion with the Complainant’s trademark and attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Edoardo Fano
Sole Panelist
Date: January 20, 2021
Full & Egal Universal Law Academy