The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Nicholas Quirke, United States of America (“United States” or “US”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2021. On August 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 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 August 13, 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 16, 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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2021.
The Center appointed Mihaela Maravela as the sole panelist in this matter on September 15, 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 the owner of the LEGO trademark and other trademarks used in connection with construction toys and other LEGO branded products. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States. The Complainant’s group has expanded its use of the LEGO trademark also to computer hardware and software, books, videos and computer controlled robotic construction sets.
The Complainant is the exclusive owner of a number of registered trademarks consisting of LEGO, including the US trademark registration No. 73032295 for LEGO registered on August 26, 1975. The Complainant is the owner of numerous other registrations for the trademark LEGO in the United States and elsewhere throughout the world. The Complainant is the owner of many domain names containing the trademark LEGO including the domain name
The disputed domain name was registered on December 25, 2020 and does not resolve to an active website. According to the evidence provided by the Complainant, the disputed domain name was linked to a website featuring various links to third party websites or pay-per-click (“PPC”) links related to various sectors including customized house related products or services. The Complainant sent a cease and desist letter to the Respondent on January 20, 2021 (via the Registrar of the disputed domain name), as well as several subsequent reminders. The Respondent did not reply to these communications.
5. Parties’ Contentions A. ComplainantThe Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademark LEGO. The Complainant contends that in addition to its famous trademark LEGO, the disputed domain name includes the prefix “your” and the suffix “house” which do not diminish the confusing similarity between the disputed domain name and the Complainant’s trademark. The Complainant argues that panels have consistently held that a domain name that consists merely of a complainant’s trademark and an additional term that closely relates to and describes that complainant’s business is confusingly similar to the complainant’s trademarks.
With respect to the second element, the Complainant argues that there is no evidence suggesting that the Respondent is commonly known by the disputed domain name. Moreover, no license or authorization of any kind has been given by the Complainant to the Respondent to use the trademark LEGO. Further, the Complainant shows that the Respondent was using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, which would not give rise to rights or legitimate interests in the disputed domain name. The Complainant also shows that the disputed domain name is currently being redirected to a page on afternic.com, where a mention that the disputed domain name may be for sale is displayed. The Complainant concludes that the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services nor a legitimate non-commercial or fair use in the meaning of the Policy.
On the third element, the Complainant argues that its LEGO trademark is famous, and it is therefore clear that the Respondent was aware of the rights of the Complainant in the said trademark at the registration of the disputed domain name. The Respondent is misleadingly diverting consumers for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website.
B. RespondentThe Respondent did not formally reply to the Complainant’s contentions. In an informal email communication submitted after the due date for Response, and Panel appointment, the Respondent indicated he will not use the disputed domain name and asked if he should cancel or transfer it.
6. Discussion and FindingsNotwithstanding the fact that no formal Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has proved its rights over the LEGO trademark. The trademark is reproduced in its entirety in the disputed domain name. The addition of the words “your” and “house” do not prevent a finding of confusing similarity with the Complainant’s trademark, which is recognizable in the disputed domain name. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0“).
It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.
This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsUnder paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case, the Complainant has established a prima facie case that it holds rights over the trademark LEGO and claims that it has not granted the Respondent any authorisation to use the disputed domain name.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name. Also, there is no evidence that the Respondent is commonly known by the disputed domain name.
By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. Accordingly, the Panel gives prevalence to the Complainant’s affirmation that it has not granted the Respondent any license to use the disputed domain name.
Furthermore, the nature of the disputed domain name carries a high risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithAs a result of the worldwide fame of the Complainant’s trademark the Panel finds it inconceivable that the Respondent was not aware of the Complainant’s rights to LEGO when registering the disputed domain name.
The Panel is also prepared to find that the Respondent registered the disputed domain name and has used the disputed domain name for the operation of click-through websites which provide links to other websites for the purpose of monetary gain. The evidence shows that the Respondent was not authorized or licensed to use the Complainant’s trademark. The Respondent has deliberately traded on the goodwill of the Complainant, through the addition of the common words “your” and “house”, thereby diverting Internet traffic intended for the Complainant’s website to the Respondent’s websites presumably for the purpose of monetary gain.
The fact that the website at which the disputed domain name currently resolves is inactive does not prevent a finding of bad faith. Passive holding of the disputed domain name does not preclude a finding of bad faith, nor does it detract from the Respondent’s bad faith.
Section 3.3 of the WIPO Overview 3.0 describes the circumstances under which the passive holding of a domain name will be considered to be a bad faith registration: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine 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.”
The following factors were considered by the Panel as indicative of bad faith registration and use of the disputed domain name: (i) the Respondent’s failure to formally respond to the Complaint, even though awarded a possibility to do so; (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy; (iii) the well-known character of the LEGO trademark. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. Also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. The Respondent provided no explanation for which he registered the disputed domain name.
In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.
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 name,
Mihaela Maravela
Sole Panelist
Date: September 29, 2021