The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondents are lucy huston, United States of America (“United States”), and jacy fone, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 27, 2021, 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 May 28, 2021, providing the registrants 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 June 2, 2021. 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 June 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2021. The Center appointed George R. F. Souter as the sole panelist in this matter on July 5, 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 has provided the Panel with details of a considerable number of registrations world-wide of its LEGO trademark in connection with its business of manufacture and sale of construction toys, including United States Registration No 73032292, registered on December 9, 1975, and European Union Registration No 000039800, registered on October 5, 1998. The Complainant has drawn the attention of the Panel to a large number of cases under the UDRP involving its LEGO trademark, including LEGO Juris A/S v. Level 5 Corp,WIPO Case No. D2008-1692, in which panels have consistently held the LEGO trademark to be well-known. The disputed domain name All five disputed domain names currently resolve to inactive sites, and are not in use. The Complainant has provided evidence that the disputed domain names previously resolved to unauthorized web stores offering the Complainant’s products at discounted prices 5. Parties’ Contentions A. Complainant The Complainant alleges that each of the five disputed domain names are confusingly similar to its LEGO trademark, containing its LEGO trademark in its entirety, with the mere addition of a descriptive or non-distinctive element, namely the geographical abbreviations “au”, “ca”, “”eu”, and “uk” respectively, and the word “kids”. The Complainant alleges that the Respondents lack rights or legitimate interests in the disputed domain names, in particular that, so far as the Complainant is aware, the Respondents are not generally known by any of the disputed domain names, and it has never granted the Respondents permission to use its LEGO trademark in connection with the registration of a domain name, or otherwise. The Complainant alleges that the disputed domain names were registered in bad faith, and are being used in bad faith. B. Respondent The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and The Complaint has been filed against five disputed domain names registered by two nominally-distinct Respondents. The disputed domain names Consolidation of multiple Respondents may be appropriate under paragraph 3(c) and 10(e) of the Rules where particular circumstances indicate that common control is being exercised over the disputed domain names and that consolidation would be fair and equitable to all parties. The Complainant has argued that the disputed domain names were all registered within the same five-day period of time, each disputed domain name features a similar construction (i.e., the Complainant trademark, a hyphen, and an added term), some of the disputed domain names registered by both Respondents resolves to websites featuring identical content, and the WhoIs information for both Respondents is evidently fraudulent. Lastly, the Complainants points to the panel’s finding in Lego Juris A/S v. Domain Administrator, et. al.,WIPO Case No. D2020-3305, where “jace fone” was found to be an alias. Taking the above into account, and pursuant to paragraph 10(e) of the Rules, the Panel decides to consolidate the five disputed domain names in this proceeding and to treat the above-referenced Respondents as one Respondent (accordingly, hereinafter, “Respondent” will refer to both First and Second Respondents). B. Identical or Confusingly Similar The Panel recognizes the Complainant’s LEGO trademark to be well known. It is well established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the gTLD “.com” to be irrelevant in the circumstances of the present case, and so finds. It is well established in prior decisions under the Policy that the mere addition of a descriptive or non-distinctive element to a clearly recognizable trademark is insufficient to avoid a finding of confusing similarity. In the circumstances of the present case, the Complainant’s LEGO trademark is instantly recognizable in the disputed domain names, and the mere addition of a hyphen and the geographical abbreviations “au”, “ca”, “”eu” ,and “uk” respectively, and the word “kids”, in the Panel's opinion, do not avoid a finding of confusing similarity between the Complainant’s LEGO trademark and each of the disputed domain names, and the Panel so finds. Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy. The Complainant has provided evidence that the disputed domain names previously resolved to websites offering the Complainant’s products, using the Complainant’s trademark and logo, and incorporating a copyright notice citing the Complainant’s trademark. The Complainant has argued that the Respondent is not an authorized reseller. When applying the principles established under Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, the Panel finds that the Respondent’s services are not bona fide. The Respondent fails to disclose its relationship with the Complainant; rather, the website conveys the false impression that the Respondent is authorized to use the Complainant’s trademark and sell its products. This impression of affiliation is reinforced considering the construction of the disputed domain name (i.e., pairing the Complainant’s trademark with geographical abbreviations for countries where the Complainant operates and also the word “kids”, which can be considered descriptive of the main customer base of the Complainant’s products). The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain names to rebut this prima facie case. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel regards it as self-evident that the Complainant’s LEGO trademark was deliberately appropriated in each of the disputed domain names, are such that the Panel concludes that a finding of registration in bad faith is justified in connection with all five disputed domain names, and so finds. As mentioned above, the disputed domain names previously resolved to unauthorized websites offering Complainant’s products for discounted prices. Additionally, the disputed domain names incorporate the entirety of the Complainant’s trademark, coupled together with the terms illustrative of either geographical locations where the Complainant operates or its main customer base. Accordingly, the Panel finds that the Respondent used the disputed domain names in an intentional attempt to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of a product or service on the Respondent’s websites. Since the decision in Telstra Corporation v. Nuclear Marshmallows,WIPO Case No. D2000-0003, it has become well-established in prior decisions under the Policy that the mere lack of present use of a domain name found to have been registered in bad faith does not avoid a finding of bad faith use of a disputed domain name. In the circumstances of the present case, the Panel considers that any use of any of the five disputed domain names would be likely to imply an unjustifiable connection with the Complainant, and that the Complainant has a legitimate concern in this regard. This is reinforced given the prior use of the disputed domain names. Furthermore, the change in content also indicates that the Respondent does not have a credible good faith explanation for having registered the disputed domain names that did not seek to trade off of the Complainant’s mark. Accordingly, the Panel finds that the disputed domain names are being used in bad faith. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy, in connection with all five disputed domain names. 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, George R. F. Souter
The disputed domain name
The disputed domain name
The disputed domain name
The disputed domain name
(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. Consolidation of Multiple Respondents
Sole Panelist
Date: July 19, 2021
Full & Egal Universal Law Academy