The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2021. On December 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 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 December 14, 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 December 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 December 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2022.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on January 18, 2022. 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 following facts and circumstances are to be found in the Complaint and its Annexures and, in the absence of challenge, can be accepted as background.
The Complainant is the owner of LEGO trademark (“LEGO”) and all other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products.
The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the United States, Panama and elsewhere.
Over the years, the business of making and selling LEGO branded toys has grown remarkably.
The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in particular the United States and Panama. Not only does this appear from the schedule of trademarks registered throughout the world but notably the earliest trademark in Denmark was registered with effect from May 1, 1954, that in the United States was registered on October 18, 1979, and that in Panama on January 11, 1979.
The Complainant is also the owner of close to 5,000 domain names containing the term LEGO.
The LEGO trademark and brand are said to have been recognized as being among the best-known trademarks, as appears from the list of the official top super brands for 2019, provided by Super Brands UK, which shows that LEGO is a Consumer Superbrand and No. 8 in the Consumer Relevancy Index and No. 1 on the world list of the 10 most reputable brands. Apart from having built up its business with extensive advertising and promotional materials which prominently depict the LEGO trademark on all products, packaging, displays, advertising, promotions and materials, the Complainant has expanded its use of the trademark to computer hardware and software, books, videos and computer-controlled robotic instruction sets. It also maintains an extensive website under the domain name
The disputed domain name was registered with the Registrar on May 17, 2021.
5. Parties’ Contentions A. ComplainantThe Complainant contends as follows:
As appears from the factual background, the Complainant’s LEGO trademark is known throughout the world. The fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions.
The addition of the generic prefix “the” and suffix “group” are not relevant and would accordingly not have any impact on the overall impression of the dominant part of the disputed domain name, being that of LEGO.
Furthermore, the use of the generic Top-Level Domain (“gTLD”) “.com” mirrors that of the Complainant and further fosters the overall impression of the dominant portion of the disputed domain name. Accordingly, anyone seeing it would be bound to mistake it for a domain name relating to the Complainant.
It follows, so the Complainant contends, that the disputed domain name is clearly confusingly similar to the Complainant’s registered trademark LEGO.
The Complainant contends further that the Respondent has no registered trademarks or trade names corresponding to the disputed domain name, nor anything which suggests that it has been using LEGO in any other way which would give it any right or legitimate interest in the disputed domain name. In addition, the Respondent has not identified itself by name but relied upon a privacy service.
The Complainant wrote a “cease and desist” letter dated September 27, 2021, and followed it up with two reminders on October 5, 2021, and October 13, 2021, but there was no response.
It is clear that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO. LEGO is a famous trademark worldwide and any such user would violate the Complainant’s rights and not be legitimate.
It is highly unlikely that the Respondent would not have been aware of the Complainant’s legal rights in the disputed domain name containing the word “lego” at the time of registration.
The Respondent is also not using the disputed domain name for a bona fide purpose but has intentionally chosen the disputed domain name based on the registered trademark to generate traffic and income from Internet users as it is offering it for sale or for rental or resolves to other sites, even those of the Complainant.
The Complainant further contends that the disputed domain name is connected to the parked pay per click websites clearly demonstrates an intention to attract, for commercial gain, Internet users to websites, and creates a likelihood of confusion for the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its websites. Therefore, it must follow that it is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and its value. Since there is no connection between the Respondent and the Complainant, the use of the disputed domain name by the Respondent cannot be a legitimate noncommercial fair use but must obviously mislead and divert customers for its own commercial gain.
B. RespondentAs stated above, the Respondent has not identified itself by name but rather relied upon “Registration Private, Domains By Proxy, LLC” and furthermore, it did not reply to the Complainant’s contentions. By its failure to respond, the Respondent is in default in terms of paragraphs 5(e) and 14 of the Rules and paragraph 8(c) of the Supplemental Rules, with the result that the Panel must now deal with the matter on the Complaint.
6. Discussion & Findings A. Substantive Elements of the PolicyParagraph 15(a) of the Rules requires that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) That the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name.
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)iii) above, be evidence of the registration of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)ii).
B. Effect of DefaultNotwithstanding the fact that a respondent may be in default, a complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy. Such default does not, per se, entitle a complainant to a finding in its favor by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the complaint being denied (M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,
WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA,
WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (B Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,
WIPO Case No. D2004-0383; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd,
WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with a requirement of the Rules (Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,
WIPO Case No. D2009-0942).
In the present instance, the Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response, particularly in the light of the fact that the Complainant wrote on occasions to the Respondent, as did the Center when dealing with procedural matters and advising the Respondent of time limits, as against the Respondent’s failure to respond to any further correspondence after its initial response to the Complainant’s “cease and desist” letter.
From this, the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Limited v. Global Net 2000, Inc,
WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation,
WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact,
WIPO Case No. D2003-0994; Standard Innovation Corporation v. Shop Intimates USA, Supra; VKR Holding A/s v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd.,
WIPO Case No. D2012-0040; Knorr-Bremse AG. v. WhoisGuard Protected, WhoisGuard, Inc. / Mosco Binzu,
WIPO Case No. D2019-0616).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters Limited v. Global Net 2000, Inc, Supra; RX America, LLC. v. Matthew Smith,
WIPO Case No. D2005-0540; Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, Supra; Standard Innovation Corporation v. Shopintimates USA, Supra; VKR Holding A/s v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd., Supra; Groupe Auchan v. Anirban Mitra
WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc,
WIPO Case No. D2012-1213).
The Complainant put up an extensive list of its registered trademarks and the domain names which it owns in many countries.
The Complainant has cited several previous URDP decisions which it contends confirm that the LEGO trademark is world famous. Even so, as the Respondent was not party to any of these UDRP decisions, the Panel considers that a doctrine such as res judicata or issue estoppel does not apply, and what may have been found proven in those UDRP decisions is not evidence in this matter or necessarily binding on the Panel.
On the basis of its evidence and contentions in this matter, however, this Panel considers that on the factual background relied upon by it, particularly as it is unchallenged by the Respondent, for the purposes of this proceeding the Complainant has rights which fall within the provisions of Article 6bis of the Paris Convention for the Protection of Industrial Property of March 20, 1893, as revised, and as confirmed and extended by Articles 16.2 and 16.3 of the GATT Agreement of Trade-Related Aspects of Intellectual Property Rights (commonly referred to as the “TRIPS Agreement”). These treaties enable the owner of a well-known trademark to seek protection not only in respect of products which might be marketed under an offending trademark in the same class, but outside that class as well (V&S Vin & Spirit v. Young Nah,
WIPO Case No. D2004-0961; Groupe Auchan v. Anirban Mitra,
WIPO Case No. D2012-0412). For the purposes of the Policy, the Panel finds the Complainant has rights in the trademark LEGO.
The fact that the word mark LEGO has been incorporated entirely into the Domain Name is sufficient to establish that it is identical or confusingly similar to the Complainant’s registered mark (Quixtar Investments, Inc. v. Dennis Hoffman,
WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,
WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopking / Neo net Ltd.,
WIPO Case No. D2005-0694; Société Des Produits Nestlé SA v. Mustafa Yakin / Moniker Privacy Services,
WIPO Case No. D2008-0016).
The fact that the terms “the” and “group” are added to the Complainant’s trademark do not detract from the domain name being confusingly similar (Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,
WIPO Case No. D2004-048).
The use of the gTLD “.com” is not an element that generally would be taken into consideration when evaluating the identity and similarity of the Complainant’s trademark and the domain name (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,
WIPO Case No. D2001-0374; Qantas Airways Limited v. Minh Huynh,
WIPO Case No. D2008-1382).
In these circumstances, the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)i) of the Policy.
D. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the domain name for the purposes of Paragraph 4(a)ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the Domain Name in connection with the 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 customers or to target the trademark or service mark at issue.
Although paragraph 4(a)ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the domain name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the domain name, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Co, Supra).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is evidenced by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the sole proprietor of the trademark LEGO and that the Respondent has not been given any permission to register or use any domain name incorporating the trademark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the domain name and that any unauthorized use for commercial purposes would violate the wide-reaching trademark rights enjoyed by the Complainant. (Guerlain S.A. v. Peikang,
WIPO Case No. D2000-0055; Caesars World, Inc. and Park Place Entertainment Corporation v. Japan Nippon,
WIPO Case No. D2003-0615; AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless,
WIPO Case No. D2002-0605; America Online, Inc. v. Xianfeng Fu,
WIPO Case No. D2000-1374; Sybase, Inc. v. Analytical Systems,
WIPO Case No. D2004-0360; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd,
WIPO Case No. D2010-0551).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase, Inc. v. Analytical Systems,
WIPO Case No. D2004-0360).
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy.
E. Registration & Use in Bad FaithParagraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)iii) of the Policy, 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 again, Internet users to your website or other on-line 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.”
The disputed domain name is connected to parked pay per click links, including links to the Complainant’s website and other websites, with the result that the Respondent is using the disputed domain name intentionally to attempt to attract Internet users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website. Whether or not the Respondent is personally the beneficiary or whether the revenue accrues elsewhere does not, in the view of the Panel, detract from the notion that any gain so sought to be derived need not be derived by a respondent himself in that it is sufficient if a third party stands to reap the profits of wrongful conduct (Villeroy & Boch AG v. Mario Pingerna,
WIPO Case No. D2007-1912).
The implication arising from the disputed domain name, in the mind of a would-be customer, is therefore clearly that it is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with either the Complainant itself or someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)iv) of the Policy, constitute bad faith registration and use. (Media24 Limited v. Llewellyn Du Randt,
WIPO Case No. D2009-0699; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, Supra).
The selection of a disputed domain name that is the same as, or confusingly similar to, the Complainant’s trademark and the Complainant’s domain name, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the Domain Name in circumstances where it was very well aware of the Complainant’s reputation and intended to benefit therefrom (Deutsche Post AG v. MailMij LLC,
WIPO Case No. D2003-0128; Barclays Bank PLC v. Miami Investment Brokers Inc,
WIPO Case No. D2012-1213), particularly where it is so widely known globally. Moreover, such conduct by the Respondent implies that it intended to suggest to would be customers that it was in some way linked to or associated with the Complainant and thereby solicit business by creating that belief in the mind of consumers.
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name
Archibald Findlay
Sole Panelist
Date: February 1, 2022