ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Privacy Service Provided by Withheld for Privacy ehf / Adam He Case No. D2022-1331 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Adam He, United States of America ("United States"). 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 13, 2022. On April 13, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 13, 2022, 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 April 14, 2022, 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 April 21, 2022. 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 May 2, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 23, 2022. page 2 The Center appointed Alistair Payne as the sole panelist in this matter on May 30, 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 Background The Complainant is the Danish owner of the global Lego construction toy business with products sold in more than 130 countries including the United States. The Complainant owns numerous trade mark registrations for its LEGO word mark including in particular United States registration 1018875, registered on August 26 1975; and Iceland trade mark registration 247/1973, registered on July 31, 1973. It also owns close to 5,000 domain names containing the LEGO mark and operates an extensive website for its business at . The disputed domain name was registered on July 13, 2021. It resolves to a Namecheap parking page which at the date of filing was inactive and featured no sponsored links. 5. Parties' Contentions A. Complainant The Complainant submits that it owns registered trade mark rights for its LEGO mark which it says is one of the best known marks in the world and which has been recognised as such by a number of organisations that review brands and corporate reputation. It notes that the disputed domain name wholly incorporates the LEGO mark. It says that this is sufficient to support a finding of confusing similarity for the disputed domain name and that the Top Level Domain ("TLD") ".green" does not detract from the overall impression of the mark given by the incorporation of the LEGO mark and does not prevent a finding of confusing similarity. The Complainant submits that it has given no licence or authorisation of any kind to the Respondent to use the LEGO trade mark and that the Respondent is not an authorised dealer of the Complainant's products and has never had a business relationship with the Complainant. It says that the Respondent is not commonly known by the disputed domain name and notes that the verified registrant information identifies the registrant as "Adam He" which has no resemblance to the disputed domain name. The Complainant says further that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and has failed to make any legitimate use of the website to which it resolves. In terms of registration in bad faith, the Complainant says that the Respondent registered the disputed domain name on July 13, 2021, which is subsequent to the date on which the Complainant registered the trade mark LEGO by many years. The Complainant submits that it is obvious that it is the fame of the LEGO trade mark that has motivated the Respondent to register the disputed domain name and that the Respondent must have been aware of the Complainant's rights in the LEGO trade mark when it registered the disputed domain name. The Complainant notes that it first tried to contact the Respondent on August 2, 2021, by sending a cease and desist letter by email requesting a voluntary transfer of the disputed domain name and offering compensation for the Respondent's out of pocket expenses. In spite of the reminders sent, no reply was ever received and as a consequence the Complainant says that it filed this Complaint. The Complainant asserts that the Respondent is using the disputed domain name in terms of paragraph 4(b)(iv) of the Policy with no plausible excuse but with a future intent to use it to attempt to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its websites. It says that there is no connection between the Respondent and the Complainant, and by using the disputed domain name containing the Complainant's very well reputed LEGO mark, the Respondent is not making a legitimate noncommercial or page 3 fair use but intends to misleadingly divert consumers for commercial gain. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns registered trade mark rights in various jurisdictions for its LEGO word mark as mentioned in the section 4 above. The disputed domain name wholly incorporates the LEGO word mark and the Panel therefore finds that it is identical to the Complainant's registered trade mark rights for LEGO. The TLD ".green" does not prevent a finding of confusing similarity. As a result, the Panel finds that the disputed domain name is identical to the Complainant's registered LEGO mark and that the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests The Complainant has submitted that it has given no licence or authorisation of any kind to the Respondent to use the LEGO trade mark and that the Respondent is not an authorised dealer of the Complainant's products and has never had a business relationship with the Complainant. It has asserted that the Respondent is not commonly known by the disputed domain name and has noted that the registrar verification identified the registrant as "Adam He" which has no resemblance to the disputed domain name. The Complainant has submitted further that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and has failed to make any legitimate noncommercial or fair use of the disputed domain name. The Complainant's LEGO mark is highly distinctive and a household name on a global basis and has enjoyed a very significant reputation for many years prior to the registration of the disputed domain name. There is no evidence that the Respondent is using the disputed domain name for noncommercial or legitimate purposes or has any other bona fide interest in using the LEGO mark. In fact, there is no evidence of use at all other than to resolve to an inactive website. In these circumstances, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to respond to or to rebut the Complainant's case and for these reasons and for the reasons set out under section 6.C. below, the Panel finds that the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith The Respondent registered the disputed domain name on July 13, 2021, which is subsequent to the date on which the Complainant registered the trade mark LEGO by many years. The LEGO mark is highly distinctive and extremely well reputed globally and it is implausible that the Respondent could not have been aware of the Complainant's very well known LEGO mark and business when he registered the disputed domain name. The disputed domain name does not resolve to an active website. Previous UDRP panels have found that the passive use of a disputed domain name may amount to evidence of bad faith based on a consideration of factors such as (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. (See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO page 4 Overview 3.0"), section 3.3.) The Complainant's LEGO mark is highly distinctive and enjoys a very considerable global reputation. The Respondent has failed to submit a response or to provide any evidence of actual or contemplated good faith use. The Panel further notes that a privacy service was used in relation to the registration of the disputed domain name, possibly with an intent to conceal the Respondent's identity. In view of the extremely high degree of renown attaching to the LEGO mark which has a truly global reputation and of the Respondent's unauthorised use of the LEGO mark in the disputed domain name and its failure to engage with the Complainant's cease and desist letter or this Complaint, the Panel finds it highly unlikely that the Respondent intends to put the disputed domain name to any good faith use. In these circumstances, the Panel finds that the disputed domain name is being passively held in bad faith. As the Panel finds that the disputed domain name has both been registered and used in bad faith, the Complaint also succeeds under this element of the Policy. 7. Decision For 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 be transferred to the Complainant. /Alistair Payne/ Alistair Payne Sole Panelist Date: June 13, 2022
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