The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Amtom Maoeiro, Germany.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2021. On July 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 23, 2021, 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 July 29, 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 August 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 August 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2021.
The Center appointed Olga Zalomiy as the sole panelist in this matter on September 10, 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 BackgroundThe Complainant is well-known for its construction toys, which it sells throughout the world under the trademark LEGO since 1953. The Complainant owns numerous trademark registrations for LEGO, including German Trademark Registration No. 772669, registered on May 15, 1963.
The Respondent registered the Domain Name on December 7, 2020. Currently, the Domain Name does not resolve to any active websites. At the time the Complaint was filed, the Domain Name used to direct to a website in Russian that offered for sale purported LEGO toys.
On January 20, 2021, the Complainant’s representative sent the Respondent a cease-and-desist letter, advising the Respondent about its unauthorized use of the LEGO trademark and seeking transfer of the Domain Name to the Complainant. The Complainant followed up on the cease-and-desist letter with two reminders on February 4, 2021, and February 12, 2021, but received no response from the Respondent.
5. Parties’ Contentions A. ComplainantThe Complainant alleges that it is the owner of the well-known trademark LEGO. In the Complainant’s view, the Domain Name is confusingly similar to its LEGO trademark. Because the dominant part of the Domain Name is LEGO, the addition of the words “kidstoys” does not mitigate the confusion and will have no impact on the overall impression of the Domain Name. The Complainant claims that the addition of the generic top level domain (the “gTLD”) “.com” has no impact on the overall impression of the Domain Name and is, therefore, irrelevant for the purpose of determining confusing similarity.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant further claims that it has not found that the Respondent has registered any trademarks or trade names corresponding to the Domain Name. The Complainant alleges that it has given no license or authorization of any kind to the Respondent to use the LEGO trademark.
Further, the Complainant argues that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services and instead, intentionally chose the Domain Name based on the Complainant’s registered trademark to generate traffic to a website that used to sell purported Complainant’s products. The Complainant contends that the Domain Name used to direct to a website offering for sale the Complainant’s products. The Complainant argues that although the Respondent is not an authorized dealer of the Complainant, the website under the Domain Name did not disclose lack of relationship between the Complainant and the Respondent. According to the Complainant, such use is not considered to be bona fide offering of goods and services. The Complainant alleges that currently the Domain Name does not direct to any active websites.
Finally, the Complainant claims that the Domain Name was registered and is being used in bad faith. The Complainant claims that its LEGO trademark has the status of a well-known mark. In the Complainant’s view, the increasing number of infringing domain name registrations indicates that the LEGO trademark has a widespread reputation throughout the Community1 and around the world. The Complainant contends that the Respondent was motivated by the fame of the Complainant’s trademark in its choice of the Domain Name because registration of the LEGO trademark in Germany precedes registration of the Domain Name by decades. The Complainant argues that the incorporation of a well-known trademark into the Domain Name by the Respondent having no plausible explanation for doing so may be, in and of itself, an indication of bad faith.
Further, the Complainant alleges that in its January 20, 2021, cease and desist letter it advised the Respondent that the Respondent’s unauthorized use of the Complainant’s LEGO trademark in the Domain Name violated the Complainant’s rights in the trademark. According to the Complainant, it requested that the Respondent voluntarily transfer the Domain Name to the Complainant and offered to compensate the Respondent for his expenses associated with the registration and the transfer. The Complainant claims that despite sending follow-up reminders, it received no response from the Respondent.
The Complainant alleges that the Respondent was using the Domain Name to intentionally attempt to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website selling the Complainant’s products. The Complainant contends that the Respondent’s current passive holding of the Domain Name can constitute a factor in finding bad faith registration and use pursuant to Policy.
The Complainant requests that the Domain Name be transferred to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsPursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The submitted evidence shows that the Complainant owns several trademark registrations for the LEGO trademark. Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.
“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.”2 It is well-established that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement.3
The Domain Name consists of the descriptive words “kidstoys”, the Complainant’s LEGO trademark and the gTLD “.com”. Because the Complainant’s LEGO trademark is recognizable within the Domain Name, the addition of the words “kidstoys” does not prevent a finding of confusing similarity. The gTLD “.com” is disregarded as a standard registration requirement. Therefore, the Domain Name is confusingly similar to the Complainant’s LEGO trademark.
The Complainant has satisfied the first element of the UDRP.
B. Rights or Legitimate InterestsTo demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under the UDRP, paragraph 4(c) include the following:
(i) before any notice of the dispute, the respondent’s use of, or 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent 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.
The evidence on file shows that the Complainant has not licensed or permitted the Respondent to use the Complainant’s LEGO trademark in domain names, or for any other purpose. The Respondent is neither an authorized distributor, nor authorized reseller of the Complainant’s products. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name as a reseller or distributor.
Previous UDRP panels have recognized that resellers or distributors using domain names containing complainant’s trademark to undertake sales of the complainant’s goods may be making a bona fide offering of goods and thus have a right or legitimate interest in such domain names in some situations.4
Outlined in the Oki Data5 case, the following cumulative requirements must be satisfied for the respondent to make a bona fide offering of goods and services:
“(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to corner the market in domain names that reflect the trademark.”6
In this case, the Respondent’s prior use of the Domain Name did not satisfy requirements of such bona fide offering of goods and services. The Respondent used the Domain Name to direct to a website in Russian that offered for sale in Russia the Complainant’s LEGO products. The website at the Domain Name suggested affiliation between the Complainant and the Respondent because it did not accurately and prominently disclose lack of relationship between the Respondent’s and the Complainant.
The evidence on file also shows that the Respondent has not been commonly known by the Domain Name. The only information about the Respondent that used to appear on the website connected to the Domain Name was the Respondent’s address in Moscow and information about its wide assortment of the well-known LEGO construction toys.
To succeed under the second UDRP element, the Complainant must make out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.7 The Panel finds that the Complainant has made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name has shifted to the Respondent. Noting the Panel’s further findings below, and because the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied the second element of the UDRP.
C. Registered and Used in Bad FaithPursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith.
The UDRP establishes that, for purposes of paragraph 4(a)(iii), “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation or endorsement of the respondent’s website or location, or of a product or service on the respondent’s website or location. See Policy, paragraph 4(b)(iv).
Given the renown of the Complainant’s LEGO mark and the Respondent’s prior use of the Domain Name for a website selling the Complainant’s products, the Respondent could not plausibly assert that he was not aware of the Complainant’s rights in the LEGO mark. The Respondent’s own website displayed the claim of the LEGO trademark’s renown. Therefore, the Respondent registered the Domain Name to trade on the goodwill of the Complainant’s trademark. It is likely that the Respondent registered the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website or location, or of a product or service on the Respondent’s website or location.
Furthermore, prior UDRP panels have found that “the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.”8 Among factors indicating bad faith use of a domain name, the implausibility of any good faith use is relevant in this case. The Respondent’s prior use of the Domain Name for a website selling the Complainant’s products makes any good faith use of the Domain Name implausible. Therefore, the Respondent is using the Domain Name in bad faith.
The Complainant has satisfied the third element of the UDRP.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Olga Zalomiy
Sole Panelist
Date: September 13, 2021
1 In the Panel’s view, the word “Community” refers to the European Community.
2 Section 1.8., WIPO Overview 3.0.
3 Section 1.11.1, WIPO Overview 3.0.
4 Section 2.8.1, WIPO Overview 3.0.
5 Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
6 Id.
7 Section 2.1, WIPO Overview 3.0.
8 Section 3.3, WIPO Overview 3.0.