The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Wen Zheng, United States of America (“United States”).
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 4, 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 August 6, 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 10, 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 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2021.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on September 27, 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, LEGO Juris A/S, a limited company incorporated in Denmark, is the owner of the LEGO trademark and of all other trademarks used in connection with the LEGO branded construction toys and other LEGO branded products. The LEGO products are sold in more than 130 countries.
The LEGOLAND theme parks attract over 1,4 million visitors per year. The LEGOLAND parks are today owned by Merlin Entertainments, of which 20% are owned by the LEGO Group. Merlin Entertainments has an exclusive license to use the trademark in connection with the parks.
The Complainant is the owner of a very large number of LEGO and LEGOLAND trademarks, amongst which:
- The United States trademark LEGO with registration No. 1018875 filed September 17, 1974 and registered August 26, 1975, covering “toy building blocks and connecting links for the same, sold separately and as kits for construction of toy houses, buildings, household furnishings, robots, doll figures and vehicular toys” in International Class 28;
- The European Union trademark LEGO with registration No. 000039800 filed April 1, 1996 and registered October 5, 1998, covering a large variety of goods and services in different classes, and notably “games and playthings” in International Class 28;
- The United States trademark LEGOLAND with registration No.2334535, filed June 17, 1998 and registered March 28, 2000, covering several services in different classes and notably “theme park and amusement park services, entertainment services in the nature of providing recreational facilities for playing computer games and for building models made of toy building elements, organizing and conducting entertainment exhibitions of models made of toy building elements, and educational services, namely, training classes about building models made of toy building elements” in International Class 41;
- The European Union trademark LEGOLAND with registration No. 000054205 filed April 1, 1996 and registered October 5, 1998, covering a large variety of goods and services in different classes, and notably “entertainment, sporting and cultural activities, video tape and film production, amusement parks; publication of books and of texts (other than publicity texts)” in International Class 41.
The LEGO and LEGOLAND trademarks are very well-known. In fact, the Complainant has extensively used the trademarks for several decades; it has also invested very important resources in advertising. LEGO has been recognized Number 1 Consumer Superbrand by Superbrands UK and Number 1 of the world’s Top 10 Most Reputable Global Companies of 2020 (annex 6.2. of the Complaint).
The Complainant is the owner of close to 5000 domain names (annex 5 of the Complaint) containing the terms LEGO and/or LEGOLAND and maintains extensive websites under the domain names
The disputed domain names
On the merits, the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the dominant part of the disputed domain names comprises the distinctive signs LEGO and LEGOLAND, identical to the registered trademarks and domain names LEGO and LEGOLAND, which are owned by the Complainant and internationally known.
The Complainant maintains that the similarity is altered neither by the suffixes “express”, “ny” (abbreviation of “New York”), “bus”, “go” or “go to”, as those do not detract from the overall impression, nor by the addition of the generic Top-Level Domain (“gTLD”) “.com”, which is viewed as a standard registration requirement and is irrelevant to determine the confusing similarity.
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that nothing indicates that the Respondent has been using LEGO or LEGOLAND in any way that would provide rights or legitimate interestsin any of the names. The Complainant has never given any license or authorization of any other kind to the Respondent.
The Complainant further asserts that it is highly unlikely that the Respondent did not know of the Complainant’s prior legal rights in the names LEGO and LEGOLAND at the time of the registration of the disputed domain names.
The Respondent was not and is not using the disputed domain names in connection with a bona fide offering of goods or services. According to the Complainant, the domain names have been intentionally chosen to generate traffic and income through those websites with sponsored links. The Respondent uses the above trademarks to mislead Internet users.
(c) the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that due to the well-known and reputable character of the LEGO and LEGOLAND trademarks, domain name registrations comprising that trademark in combination with other words have always been attractive to infringers. The Complainant believes that this has also been motivating the Respondent. The incorporation of a well-known trademark into a domain name can be an indication of bad faith.
Furthermore, the Complainant argues that pursuing a commercial aim through the inclusion of sponsored links, trying to attract part of the Complainant’s customers, is an indication of bad faith, as is the absence of response to the cease and desist letters sent by the Complainant prior to these proceedings.
Finally, the Complainant states that the simultaneous registration of five domain names, which all infringe prior trademark rights, demonstrates a pattern of “cybersquatting”.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to LEGO and LEGOLAND, which precede by several decades the disputed domain names. This Panel agrees with the past UDRP panel decisions cited by the Complainant and confirming the well-recognized and world famous character of the LEGO trademark (see LEGO Juris A/S v. Level 5 Corp.,WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715; LEGO Juris A/S v. Reginald Hastings Jr.,WIPO Case No. D2009-0680).
Secondly, the disputed domain names
Finally, this Panel finds that the relevant comparison is made between the second level portion of the domain names and that the TLDs are viewed as a standard registration requirement and as such are generally disregarded under the first element confusing similarity test (see Section 1.11 of the WIPO Overview 3.0).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain names are confusingly similar to the Complainant’s LEGO and LEGOLAND trademarks.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) 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 mark at issue.”
It is a well-established view of past UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (see Aguas de Cabreiroa, S.A.U. v. Hello Domain,WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson,WIPO Case No. D2016-1338).
In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
This Panel retains notably the following considerations:
- There is no evidence that the Respondent has been commonly known by the disputed domain names;
- The Respondent has not been granted a license or authorization of any kind by the Complainant (see Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055) and has never had a business relationship with the Complainant (see Dr. Ing. h.c. F. Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312);
- The Respondent is not using the domain names in connection with a bone fide offering of goods or services. The Respondent uses the LEGO and LEGOLAND trademarks to generate traffic and potentially income through websites with sponsored links. In doing so, the Respondent is misleading Internet users;
- Everything indicates that the Respondent has intentionally chosen the disputed domain names trying to benefit from the Complainant’s famous trademarks. The domain names would not have been chosen if it were not to seek to create an impression of association with the Complainant (see Drexel University v. David Brouda,WIPO Case No. D2001-0067).
For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Each one of the four circumstances in paragraph 4(b) of the Policy, if found, would individually be an instance of “registration and use of a domain name in bad faith”.
A registration in bad faith occurs, inter alia, where the respondent knew or should have known of the registration and use of the trademark(s) prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain names several decades after the Complainant started using and registered the LEGO and LEGOLAND trademark. As the Complainant rightly states, the awareness of the trademark LEGO is considered, in the community in general, to be significant and substantial. In those circumstances, it would be unlikely that the Respondent was unaware that the registration of the disputed domain names would violate the Complainant’s rights. The considerable value and goodwill associated with the LEGO and LEGOLAND trademark make it very attractive to third party infringers as demonstrate the numerous cases cited by the Complainant.
It is very likely that the Respondent also attempted to capitalize on the goodwill attached to the LEGO and LEGOLAND trademarks and to disrupt the Complainant’s business, according to Policy, paragraphs 4(b)(iii) and (iv). The disputed domain names pursue a commercial aim through the inclusion of sponsored links, trying to attract part of the Complainant customers.
This finding is confirmed by the fact that:
- The Respondent has not responded to the cease and desist letters sent by the Complainant prior to the proceedings (News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623), and that
- The Respondent has simultaneous registered five domain names, which all infringe prior trademark rights. By doing so, the Respondent engaged in a pattern of “cybersquatting”.
In light of the undisputed evidence provided by the Complainant, the Panel is satisfied that the disputed domain names are registered and 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 disputed domain names
Benoit Van Asbroeck
Sole Panelist
Date: October 11, 2021