The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 1247957908, Canada / Rehman Deraiya, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2020. On December 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 8, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 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 December 11, 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 December 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2021. The Complainant is based in Denmark and is the owner of the LEGO trademark and all other trademarks used in connection with the famous LEGO branded construction toys and other LEGO branded products. The Respondent appears to be based in India but has used a privacy service based in Canada. The Complainant has several trademark registrations for LEGO in numerous countries of the world, including, in Canada, Registration No: 106457 (Registration date: April 26, 1957) and in India, Registration No: 2273262 (Registration date: January, 27, 2012). The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in India and elsewhere. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in India. The Complainant is the owner of close to 5,000 domain names containing the term LEGO. The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos, and computer controlled robotic construction sets. The LEGO Group also maintains an extensive website under the domain name The Domain Name, The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The dominant part of the Domain Name comprises the LEGO trademark. The addition of the Top‑Level Domain (“TLD”) “.page” does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant in determining confusing similarity. The suffix “.page” does not detract from the overall impression given by the Domain Name, which must therefore be considered to be confusingly similar to the Complainant’s LEGO trademark. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent does not appear to have any registered trademarks or trade names corresponding to the Domain Name and there is nothing to suggest that the Respondent has been using the LEGO trademark in any way that would provide it with legitimate rights. No license or authorization has been given by the Complainant to the Respondent to use the LEGO trademark. It is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. It is highly unlikely that the Respondent did not know of the Complainant’s rights in the LEGO trademark at the time of registration of the Domain Name. In fact, it seems clear that it is the fame of the LEGO trademark that has motivated the Respondent to register the Domain Name. The Respondent cannot claim therefore to have been using the LEGO trademark without being aware of the Complainant’s rights in respect thereof. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services in that the Domain Name resolves to a blank page without content. The Respondent has failed to demonstrate any legitimate use of the Domain Name (or webpage to which it resolves), which evinces a lack of rights or legitimate interest in the Domain Name. The Domain Name was registered and is being used in bad faith. The LEGO trademark is well-known and enjoys a substantial and widespread reputation throughout the world. It is a famous trademark, worldwide. It is clear that the Respondent was aware of the rights of the Complainant in the LEGO trademark and that it was the considerable value and goodwill associated with the mark that motivated the Respondent to register the Domain Name. The Complainant first tried to contact the Respondent on September 15, 2020 by way of a cease and desist letter (sent by email) requesting a voluntary transfer of the Domain Name and offering compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). Despite reminders, no reply was ever received, hence this UDRP proceeding. Whilst the Domain Name currently resolves to an inactive site, “use” in the context of the Policy does not require a positive act on the part of the Respondent. A passive holding of a domain name can constitute a factor in finding bad faith registration and use under the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar The Complainant clearly has rights in its LEGO Mark. The Domain Name comprises the LEGO Mark followed the TLD, “.page”. Unless the TLD and second-level portion of the domain name, in combination, contain the trademark to which the domain name is said to be identical or confusingly similar, the TLD, being a standard registration requirement, can be disregarded for the purposes of comparison under the first limb of the Policy’s three part test (see sections 1.11.1 and 1.11.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Domain Name and LEGO Mark are therefore identical for the purposes of the Policy and accordingly, the Panel finds that paragraph 4(a)(i) of the Policy thereof has been established. B. Rights or Legitimate Interests By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding. A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Here, however, the Respondent is not commonly known by the Domain Name. Nor can it be said that there is legitimate noncommercial or fair use. There appears to be no active use at all. A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. But again, there is no evidence of any active use. It seems clear that the Respondent set out to acquire a domain name that would create an impression of association with the Complainant. It has succeeded in doing so and, as a result, the Domain Name is misleading because no such association exists. Rights or legitimate interests cannot be created in these circumstances and the Panel finds that the Complainant has also fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides a number of non-exclusive scenarios, which may evidence a respondent’s bad faith. They include, for instance, a respondent registering a domain name in order to prevent an owner of the trademark or service mark to which it is said to be confusingly similar or identical, from reflecting the mark in question in a corresponding domain name (provided that the respondent has engaged in a pattern of such conduct). A respondent registering a domain name primarily for the purposes of disrupting the business of a competitor is another scenario, as is a respondent intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. Sometimes, particularly in cases where nothing at all is done with a domain name, it is not possible for a complainant to demonstrate a precise literal application of one of the paragraph 4(b) scenarios. However, given that such scenarios are non-exclusive and simply illustrative, this matters not as long as there is evidence demonstrating that a respondent is seeking to take unfair advantage of, or to abuse a complainant’s trademark. Such behaviour would satisfy the general principle underlying the bad faith requirement of the Policy. Beyond seeking to create an impression of association with the Complainant, the precise motivation of the Respondent in registering the Domain Name is not clear. What is clear however is that the Respondent would have known of the Complainant and its LEGO Mark at the time of registration of the Domain Name and that the impression it creates i.e. one of association with the Complainant, is misleading. In these circumstances, it is difficult to contemplate any legitimate use of the Domain Name without permission of the Complainant. The Respondent’s registration cries out for explanation, but none has been provided. The fact that no use is being made of the Domain Name (and hence can be treated as being passively held), does not prevent a finding of bad faith registration and use. Indeed, a passive holding of a domain name can support a finding of bad faith. UDRP panels must examine all the circumstances of the case. Section 3.3 of the WIPO Overview 3.0, provides: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. The LEGO trademark is among the best-known trademarks in the world, due in part to decades of extensive advertising. It is, for instance, at the top of a list of Top 10 Consumer Superbrands for 2019, (compiled by Superbrands UK). The LEGO trademark possesses substantial inherent and acquired distinctiveness. The Domain Name incorporates the famous LEGO Mark. No Response was filed or evidence of actual or contemplated good faith use provided (and none would seem plausible without permission of the Complainant). Whilst there are recognized legitimate uses of privacy and proxy registration services (section 3.6 of the WIPO Overview 3.0), in the circumstances of this case, the Panel finds that the Respondent’s use of a privacy protection service supports an inference of bad faith, as does, more generally, the passive holding of the Domain Name. In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. 7. Decision For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Jon Lang
The Center appointed Jon Lang as the sole panelist in this matter on January 28, 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. 4. Factual Background
Anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademarks of the Complainant. There is a considerable risk that the trade public will perceive the Domain Name either as one owned by the Complainant or that some kind of commercial relationship exists with the Complainant. By using the LEGO trademark as a dominant part of the Domain Name, the Respondent exploits the Complainant’s goodwill and image, which may result in dilution and other damage.
Sole Panelist
Date: February 11, 2021
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