The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Privacydotlink Customer 4425657, Grand Cayman, United Kingdom / Xue Hu, 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 June 15, 2021. On June 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 22, 2021, 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 June 26, 2021, 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 June 29, 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 July 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2021. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 11, 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 based in Denmark. The Complainant is the owner of the LEGO trademark, and of all the other trademarks used in connection with LEGO branded products. Moreover, the Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including the United States of America. The Complainant has expanded its use of the LEGO trademark to computer hardware and software, books, videos and computer-controlled robotic construction sets. Additionally, the Complainant owns numerous registrations worldwide for the trademark LEGO, the earliest registration dating to 1954 (Danish Reg. No. VR 1954 00604, registered on May 1, 1954). Furthermore, the Complainant is the owner of over 5,000 domain names containing the term LEGO. The Respondent registered the Disputed Domain Name The Complainant’s contentions can be summarized as follows: Identical or confusingly similar The Complainant contends that the Disputed Domain Name comprises the term LEGO, identical to the Complainant’s registered trademark. The Complainant also contends that the addition of the suffix “wear” and the addition of the top-level domain (TLD) “.shop” does not have any impact on the overall impression of the dominant portion of the Disputed Domain Name and is therefore, irrelevant to determine the confusing similarity between the LEGO trademark and the Disputed Domain Name. Consequently, the Complainant determines that the Disputed Domain Name is clearly confusingly similar to the Complainant’s registered trademark. Rights or legitimate interest The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Disputed Domain Name. In addition, the Respondent has no license or authorization of any other kind, given by the Complainant to use the LEGO trademark. The Complainant further states that it is highly unlikely that the Respondent did not know of the Complainant’s legal rights over the term LEGO at the time of the registration. Moreover, the Complainant contends that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen a domain name based on a registered trademark in order to direct Internet users to a website that resolves to a domain for sale page. Finally, the Complainant states that the Disputed Domain Name is being offered for sale in an amount that exceeds the Respondent’s out-of-pocket expenses in registering the domain, which serves as further evidence of Respondent’s lack of rights and legitimate interests. Registration and use in bad faith The Complainant alleges that the trademark LEGO has the status of a well-known and reputable trademark with a substantial and widespread goodwill throughout the world. The Complainant further contends that the Respondent is currently offering to sell the Disputed Domain Name which constitutes bad faith, since the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the Disputed Domain Name for valuable consideration in excess of his out-of-pocket expenses. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements, which the Complainant must satisfy with respect to the Disputed Domain Name in this case: (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 Based on the evidence submitted, the Panel finds that the Disputed Domain Name The addition of the descriptive term “wear” does not suffice to avoid the confusing similarity between the Disputed Domain Name and the LEGO trademark. Moreover, the addition of the TLD “.shop” does not change this finding, since the TLD is generally disregarded in such an assessment of confusingly similarity. Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name: (i) Before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) You are 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 at issue. There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the LEGO trademark in the Disputed Domain Name. The Complainant has prior rights over the LEGO trademark, which precede the Respondent’s registration of the Disputed Domain Name. The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contention. As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 6(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. The Complainant has used its well-known trademarks long before the Disputed Domain Name was registered on December 18, 2020. In light of this, the Respondent had evidently knowledge of the Complainant’s LEGO trademark when it registered the Disputed Domain Name. The circumstances in the case before the Panel indicates that the Respondent was aware of the Complainant’s LEGO trademark when registering the Disputed Domain Name and it has intentionally created likelihood confusion with the Complainant’s trademark in order to attract Internet users for its own commercial gain. The fact that the Disputed Domain Name is offered for sale, demonstrates that the Respondent has registered the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant, who is the owner of the LEGO trademark, or to a competitor of the Complainant. All of this for valuable consideration in excess of his documented out-of-pocket costs directly related to the Disputed Domain Name, according to paragraph 4(b)(i) of the Policy. Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith. 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 Pablo A. Palazzi
Sole Panelist
Date: August 25, 2021
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