The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2021. On November 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 November 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2021.
The Center appointed Elise Dufour as the sole panelist in this matter on December 21, 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 Danish company Lego Juris A/S. Lego is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.
The Complainant has subsidiaries and branches throughout the world, and its licensees are authorized to exploit the Complainant’s intellectual property rights.
The Complainant owns several trademark registrations in many countries including inter alia the following trademarks;
- United States of America trademark registration LEGO No 73032292, registered on December 9, 1975; and
- European Union trademark registration LEGO No 000039800, registered on October 5, 1998.
The Complainant is also the owner of more than 1,000 domain names containing the registered mark LEGO.
The disputed domain name
The Complainant contends that (i) the disputed domain name is confusingly similar to the Complainant’s trademarks; (ii) the Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name.
(i) The Complainant claims that the disputed domain name is highly confusingly similar to its well-known trademarks, since the disputed domain name reproduces its LEGO trademarks together with the term “instrucions” which appears to be a typosquatted version of the dictionary term “instructions”. In addition, for the Complainant there is a risk that the trade public will perceive the disputed domain name either as a domain name owned by the Complainant, or with some kind of commercial relation with the Complainant.
(ii) The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name: the Complainant has not licensed or otherwise permitted the Respondent to use its trademark LEGO. The Respondent is not commonly known by the disputed domain name. In addition, the fact that the disputed domain name resolves to a website featuring PPC links to third-party websites, some of which directly competing with the Complainant's business, which does not amount to bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name. Finally, the disputed domain name is being offered for sale, which serves as further evidence of the Respondent’s lack of rights and legitimate interests.
(iii) Due to the strong reputation and well-known character of the trademark LEGO, the Complainant considers that the Respondent could not have ignored the existence of the Complainant’s trademarks at the time the disputed domain name was registered. The Complainant also claims that the Respondent’s use of the disputed domain name is made in bad faith, as the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to its 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. Finally, the Respondent is currently offering to sell the disputed domain name and uses a privacy service to hide its identity, which constitutes, for the Complainant, additional inferences of bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
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 of the disputed domain name; and
iii) the disputed domain name was registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly SimilarThe Complainant submitted evidence, which incontestably and conclusively establishes rights in the trademark LEGO and that the Complainant’s LEGO trademarks are well-known.
The disputed domain name wholly incorporates the Complainant’s trademark LEGO, which may be sufficient to determine that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
Furthermore, the Panel finds that the addition of the misspelled word “instrucions” does not prevent a finding of confusing similarity under the first element.
Indeed, as long established, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, the burden of production then shifts to the Respondent, which has then to demonstrate rights or legitimate interests in the disputed domain name.
On the basis of the submitted evidence, the Panel considers that the Complainant has successfully established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known under the disputed domain name, nor owns any registered rights on the disputed domain name or has been authorized by the Complainant to use the prior trademarks in any way.
The Panel does not find any indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or has rights or legitimate interests in any other way in the disputed domain name. On the contrary, the disputed domain name resolves to a website featuring PPC links to third-party websites, some of which directly competing with the Complainant's business. As long established by previous UDRP panels, this does not amount to bona fide offering of goods or services.
Therefore, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not proved otherwise.
Given these circumstances, the Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad FaithWith regards to the registration of the disputed domain name, the Panel finds that at the time of the registration of the disputed domain name, the Respondent knew or should have been aware of the existence of the Complainant’s trademarks and activities. Indeed, given the fact that the Complainant’s LEGO trademarks are well-known worldwide and distinctive, the Respondent cannot credibly claim to have been unaware of the existence of the previous trademarks.
This finding is emphasized by the fact that the disputed domain name incorporates the Complainant’s trademark LEGO in its entirety to which is added the descriptive and misspelled term “instrucions”. For this Panel, it is a clear indication that the Respondent necessarily had the Complainant’s trademark in mind when it registered the disputed domain name.
Furthermore, the Panel agrees that the Respondent’s efforts to conceal its identity through the use of a WhoIs privacy service can be construed as further evidence that the disputed domain name was registered in bad faith (see WIPO Overview 3.0, section 3.6).
Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent.
As for use of the disputed domain name in bad faith, given the circumstances described above and the evidence provided by the Complainant, and the brief verification carried out by the Panel of the website associated with the disputed domain name, the Panel is satisfied that the disputed domain name is used in bad faith.
Indeed, the disputed domain name resolves to a website featuring PPC links to third-party websites, some of which directly competing with the Complainant's business. The disputed domain name is hence used to attract Internet users to its 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 (see WIPO Overview 3.0, section 3.1). This is also likely to disrupt the business of the Complainant, which is also a criteria of bad faith.
Finally, the fact that the disputed domain name is offered for sale is commonly held by UDRP panels to be registration and use in bad faith under the paragraph 4(b)(i) of the Policy especially when the disputed domain name contains a well-known mark.
Therefore, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).
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
Elise Dufour
Sole Panelist
Date: January 4, 2021