The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Whois Privacy Protection Foundation, the Netherlands / Kestutis Mazeika, Lithuania.
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 30, 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 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2021.
The Center appointed Ian Lowe as the sole panelist in this matter on October 13, 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 a company established in Denmark and is the proprietor of the trademarks used by the LEGO group of companies (“Lego Group”) in connection with the manufacture and sale of the famous LEGO brands of construction toys and other LEGO branded products. Lego Group was founded in 1932 and LEGO products are now sold in more than 130 countries, including in Europe.
Registered trademarks held by the Complainant include European Union trademark number 39800 LEGO registered on October 5, 1998, United States of America trademark number 1018875 LEGO registered on August 26, 1975, and Switzerland trademark number 3P-281090 registered on March 3, 1976.
The Domain Name was registered on February 17, 2021. It does not now resolve to an active website. Shortly after the registration of the Domain Name, it resolved to a web page featuring a number of LEGO products with pay-per-click links to the Amazon website.
The Respondent failed to respond to a cease-and-desist letter sent on behalf of the Complainant on March 17, 2021.
5. Parties’ Contentions A. ComplainantThe Complainant contends, in summary, that the Domain Name is confusingly similar to its LEGO trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith to attract visitors and generate traffic to the website at the Domain Name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsFor this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(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.
A. Identical or Confusingly SimilarThe Complainant has uncontested rights in its famous LEGO trademark (the “Mark”), both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Mark for very many years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the entirety of the LEGO mark, with the addition of the words “best” and “deals”. In the view of the Panel, the addition of these words does not prevent a finding of confusing similarity of the Domain Name to the Mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsThe Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent is not authorized by the Complainant to use its Mark. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but to point to a web page with pay-per-click links to the Amazon website where numerous products are offered for sale including those of the Complainant. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad FaithIn light of the nature of the Domain Name, comprising as it does the famous trademark LEGO, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name. In the Panel’s view, the Respondent registered the Domain Name for commercial gain intending that Internet users would be diverted to its website by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of the website.
To the extent that the Respondent’s use of the Domain Name may now be said to amount to non-use, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) points out at section 3.3 that UDRP panelists have consistently found that this does not prevent a finding of bad faith. Factors that panelists take into account, whilst looking at all the circumstances, include “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
In this case, the Mark is undoubtedly distinctive and well known; there has been no formal response by the Respondent; and the Panel considers that the nature of the Domain Name is such that it is difficult to conceive of any good faith use of the Domain Name by the Respondent.
In the circumstances, the Panel finds that the Domain Name has been registered and is being used in bad faith.
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
Ian Lowe
Sole Panelist
Date: October 27, 2021