The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is facai gao, China. 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 22, 2020. On December 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 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 December 29, 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 29, 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 January 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. The Respondent submitted an informal Response on January 21, 2021, with the possibility to settle the dispute. The Complainant requested the proceeding to be suspended with the purpose to explore settlement discussion on February 8, 2021. The Complainant requested the proceeding to reinstituted on March 9, 2021. The Center reinstituted the proceeding the same day. The Center appointed Alistair Payne as the sole panelist in this matter on March 12, 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 The Complainant is the owner of the long standing worldwide business that produces the very well known LEGO brands of construction toys and other LEGO branded products. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States of America and China. The Complainant owns registered trade marks globally for its renowned LEGO mark including numerous Chinese registrations for word and device marks and in particular LEGO word and device mark 672790 registered on January 7, 1994, and also United States of America registration 1018875 for LEGO registered on August 26, 1975. In addition, the Complainant owns close to 5,000 domain names containing the LEGO mark. The disputed domain name was registered on October 29, 2020, and resolves to a website that offers LEGO toys for sale and features the Complainant’s LEGO word and device mark and represents itself as being an “Official LEGO® Shop US”. 5. Parties’ Contentions A. Complainant The Complainant submits that it owns registered trade mark rights for its LEGO mark as noted above. It says that the dominant element of the disputed domain name is the term LEGO and therefore that the disputed domain name is confusingly similar to the LEGO marks in which it owns registered rights. It notes that past panels have consistently held that a domain name that consists merely of a complainant’s trade mark and an additional term that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trade marks. Accordingly, submits the Complainant, the addition of the generic, descriptive terms “toys” and “buy” to the end of Complainant’s LEGO trade mark does not detract from a finding of confusing similarity. According to the Complainant, the Respondent has no registered trade marks or trade names corresponding to the disputed domain name and there is nothing to suggest that the Respondent has been using the LEGO mark in any other way that would afford legitimate rights in the name. Neither, says the Complainant has a licence or authorisation been given by the Complainant to the Respondent, to use the trade mark LEGO and the Complainant confirms that that the Respondent is not an authorised dealer of the Complainant’s products and has never had a business relationship with the Complainant. As no evidence has been found that the Respondent is using the name LEGO as a company name or has any other legal rights in the name, it is quite clear says the Complainant that the Respondent is simply trying to benefit from the Complainant’s world famous trade mark and to pass-off the website at the disputed domain name, from which the Respondent is offering LEGO branded toys for sale, as belonging to or being authorised by the Complainant. In this regard the Complainant notes the inclusion of the Complainant’s logo on the website to which the disputed domain name resolves and that the “Privacy Notice” on the page asserts that the Respondent is the Complainant and provides the Complainant’s own contact information while linking back to the Complainant’s actual website. In fact, says the Complainant, the Respondent’s “Privacy Notice” page mirrors exactly the Complainant’s “Privacy Policy” page. This, says the Complainant, amounts to a direct effort by the Respondent to take advantage of the fame and goodwill attaching to the Complainant’s brand and to masquerade as if it is the Complainant and this is not a bona fide offering of goods or services or consistent with legitimate business conduct. Instead, says the Complainant, the Respondent has intentionally chosen the disputed domain name based on the Complainant’s registered trade mark in order to generate traffic and income through an unauthorised website offering LEGO products. In relation to registration in bad faith, the Complainant submits that its LEGO trade mark has the status of a well-known and reputable trade mark and enjoys a substantial and widespread goodwill throughout the world. It notes that the Respondent registered the disputed domain name on October 29, 2020, which is many decades after the date of registration of the Complainant’s trade mark registration for its LEGO mark in China where the Respondent resides. It is obvious, says the Complainant, that it is the fame of the trade mark that has motivated the Respondent to register the disputed domain name and that the Respondent cannot claim to have been using the LEGO trade mark without being aware of the Complainant’s rights to it. The Complainant submits that the Respondent’s conduct in this case fulfills the requirements of paragraph 4(b)(iv) of the Policy. It says that the Respondent has created a likelihood of confusion with the Complainant and its trade marks by registering a confusingly similar disputed domain name that resolves to a website featuring the Complainant’s LEGO logo and logotype, the website title, “Official LEGO® Shop US” and a “Privacy Notice” page that mirrors the same page found on the Complainant’s website, all as a means of passing itself off as the Complainant and in an attempt to profit from such confusion by selling LEGO branded products. The Complainant submits that the disputed domain name and the website to which it resolves cause consumers to believe that the Respondent is somehow associated with the Complainant, or is the Complainant itself, when this is not the case and as a result creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name so as to increase traffic to the Respondent’s website for the Respondent’s own commercial gain. Finally, the Complainant says that it first tried to contact the Respondent on November 10, 2020, by sending a cease and desist letter by email but in spite of the reminders sent, no reply was ever received. Since the efforts of trying to solve the matter amicably were unsuccessful the Complainant chose to file this Complaint. B. Respondent The Respondent did not reply formally to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns registered rights for its LEGO trade mark, in particular a Chinese trade mark registration 672790 for LEGO word and device mark registered on January 7, 1994, and also United States registration 1018875 for the LEGO word mark registered on August 26, 1975. The Panel notes that the LEGO word mark is the dominant element of Chinese trade mark registration 672790. The disputed domain name wholly incorporates the Complainant’s LEGO trade mark and is therefore confusingly similar to it. The fact that the disputed domain name also incorporates elements such as the terms “toys” and “buy” does not alter this finding. As a result, the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests The Complainant has submitted that the Respondent has no registered trade marks or trade names corresponding to the disputed domain name and there is nothing to suggest that the Respondent has been using the LEGO mark in any other way that would afford legitimate rights in the name. It has also confirmed that that it has neither licensed nor authorised the Respondent, to use the trade mark LEGO and the Complainant has confirmed that the Respondent is not an authorised dealer of the Complainant’s products and has never had a business relationship with it. It appears to the Panel that the Respondent is simply trying to benefit illegitimately from the LEGO mark and by passing-off the website at the disputed domain name as belonging to the Complainant in order to sell LEGO branded toys. There are various indicia on the Respondent’s website to support this assessment including the use of the Complainant’s distinctive LEGO and device marks without authority, the legend “Official LEGO® Shop US”, the fact that the “Privacy Notice” on the page (which appears to have been copied from the Complainant’s page) asserts that the Respondent is the Complainant and also that it provides the Complainant’s contact information while linking back to the Complainant’s website. It appears that the Respondent has intentionally chosen the disputed domain name based on the Complainant’s registered trade mark in order to divert Internet users to its unauthorised website so as to generate sales of LEGO branded products from that site. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests and the Respondent has had every opportunity to respond and explain its conduct. It has failed to do so and the Panel therefore finds that the Respondent’s conduct neither amounts to a bona fide offering of goods or services nor to legitimate business conduct and that the Complaint succeeds under this element of the Policy. C. Registered and Used in Bad Faith The Complainant’s LEGO trade mark has been found by many prior panels to be a truly globally established well-known mark. It is a highly distinctive mark and a household brand name. The Respondent registered the disputed domain name on October 29, 2020, which is many decades after the date of registration of the Complainant’s trade mark registration for its LEGO mark in China where the Respondent resides. Considering these factors and the various indicia that appear to have been copied from the Complainant’s website onto the Respondent’s website and the fact that the Respondent is selling the Complainant’s LEGO products from its website at the disputed domain name, the Panel finds that the Respondent must have known of the Complainant’s LEGO trade mark and business when it registered the disputed domain name. Under paragraph 4(b)(iv) of the Policy the use of a disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 a website or location or of a product or service on the website amounts to evidence of registration and use in bad faith. In this case the Respondent has created a likelihood of confusion with the Complainant and its trade marks by registering the disputed domain name in order to confuse and re-direct Internet users to its website featuring the Complainant’s LEGO logo, the legend “Official LEGO® Shop US” and a “Privacy Notice” page that mirrors the same page found on the Complainant’s website. This is an obvious attempt to pass the website off as belonging to, or as being authorised by, the Complainant in order that the Respondent can profit from such confusion by marketing and selling LEGO branded products from the website. The Panel finds that this conduct fulfills the requirements of paragraph 4(b)(iv) of the Policy and therefore amounts to evidence of registration and use of the disputed domain name in bad faith. Finally, the Complainant says that it first tried to contact the Respondent on November 10, 2020 by sending a cease and desist letter by email but in spite of the reminders sent, no explanatory response was ever received. The fact that the Respondent failed to respond to the Complainant’s cease and desist letter or reply substantively to the Complaint affirms the Panel’s view of the Respondent’s use of the disputed domain name in bad faith. For these reasons the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and that the Complaint also succeeds under this element 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 name Alistair Payne
Sole Panelist
Date: March 25, 2021
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