The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Henry Jufri, Bayao Studio, Indonesia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2021. On July 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant. The Center verified that the 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 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2021. The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on August 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 a limited company incorporated in Denmark, which is internationally well-known for its construction toys and other products labelled under the LEGO trademark. The Complainant has licensees worldwide, which are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights. Over the years, the business of making and selling LEGO branded toys has grown remarkably. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. The Complainant has officially been trading under the trademark LEGO for decades and owns exclusive rights over this sign. The Complainant owns several registrations and applications for the LEGO trademark, covering over 130 countries, as evidenced in Annex 3 of the Complaint. These registrations include, for example, registrations obtained in Indonesia, listed in Annex 3.2. The Complainant holds over 5,000 domain name registrations, all of them related with the trademark LEGO. It is important to note that among these domain names, there are some formed by the trademark LEGO comprising several different Top Level Domains. Proofs of these registrations are given in Annex 5 of the Complaint. The disputed domain name was registered on October 20, 2020 and used to resolve to a website that bears the expression “LEGO CRAFT” and “WELCOME TO LEGO CRAFT STUDIO”, as well as MINECRAFT themed pictures and text, as shown by Annex 8 of the Complaint. The case records show that by the time of this decision, the website at the disputed domain name had been deactivated. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name The Complainant has obtained registrations for the trademark LEGO throughout the world, as well as over 5,000 domain names formed by this trademark, as stated above. The Complainant claims never having licensed or authorized the Respondent to use its trademark or to apply for any kind of domain name. The disputed domain name includes the trademark LEGO and the term “craft”, which has a clear relation to the Complainant’s main activities, as mentioned and shown in Annexes 6 and 7 of the Complaint, the Complainant is well known for construction toys. This descriptive term does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark – on the contrary, it has a natural connection with the Complainant’s trademark. The Complainant also states that the Respondent is not making a legitimate use of the disputed domain name. On the contrary, the disputed domain name resolves to a website featuring the expressions “LEGO CRAFT” and “WELCOME TO LEGO CRAFT STUDIO”, as well as MINECRAFT themed pictures and text. Before starting this proceeding, the Complainant tried to contact the Respondent through a cease-and-desist letter, in an attempt to obtain the voluntary transfer of the disputed domain name to its name. No response was ever received, and reminders were sent, but these were also unanswered (Annexes 9 and 10 of the Complaint). B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are: 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 to 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 Regarding the first of the elements, the Panel finds that the Complainant has presented adequate proof of having rights in the trademark LEGO, which is registered in several countries and clearly used regularly throughout the world in over 130 countries. Proof of ownership of over 5,000 domain names related with the trademark LEGO was also provided. Furthermore, the Panel finds that disputed domain name is confusingly similar to the trademark belonging to the Complainant, since this trademark is entirely reproduced in the disputed domain name registered by the Respondent, with the addition of descriptive term “craft”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Further, it is well established that “.tech”, as a generic Top Level Domain, may be disregarded in the assessment of the confusing similarity between the disputed domain name and the Complainant’s trademark (section 1.11.1 of the WIPO Overview 3.0). Hence, the Panel concludes that the first element of the Policy has been satisfied by the Complainant in this dispute. B. Rights or Legitimate Interests The Panel understands that the trademark LEGO is undoubtedly linked to the Complainant, since it is included in its business name, but it is also used for to identify the Complainant’s business worldwide, being present in over 130 countries under this trademark. The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s contentions. Besides, the Complainant provided enough evidence of the renown of the trademark worldwide, as shown in Annex 6. Hence, the Panel concludes that the Respondent should have been aware of the trademark and its direct relation to the Complainant. It is also shown that the disputed domain name used to lead to a website that comprised the expressions “LEGO CRAFT” and “WELCOME TO LEGO CRAFT STUDIO”, attempting to create a connection between the Complainant and MINECRAFT, as well as contributing to create a confusing similarity with the Complainant. This shows that the Respondent’s interests cannot have been legitimate. Thus, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith It is clear to the Panel that the Respondent has in all probability registered the disputed domain name with the purpose of taking advantage of the Complainant’s trademark. The Panel finds that the disputed domain name was likely registered to mislead consumers – hence the addition of the term “-craft”. This additional term can surely be considered an allusion to the Complainant’s core business, a fact from which the Respondent may well profit by giving Internet users the impression that the disputed domain name belongs to or is related with the Complainant. The Respondent intended to give an overall impression that the disputed domain name was associated with the Complainant, and the Panel concludes that the disputed domain name may have been intended for illegitimate purposes. Based on the evidence, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith in order to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website. 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 Alvaro Loureiro Oliveira
Sole Panelist
Date: August 26, 2021
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