ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Cédric Fiducia Bavoux Case No. D2022-4702 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. The Respondent is Cédric Fiducia Bavoux, France. 2. The Domain Name and Registrar The disputed domain name is registered with Gandi SAS (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 8, 2022. On December 8, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 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 December 9, 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 December 12, 2022. The Registrar also indicated that the language of the Registration Agreement was French. The Complaint was filed in English. The Center sent an email communication to the Complainant on December 9, 2022, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into French, or a request for English to be the language of proceedings. The Complainant included a request for English to be the language of proceedings on December 12, 2022 in the amended Complaint. The Respondent did not submit any arguments. 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"). page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 5, 2023. The Center appointed Philippe Gilliéron as the sole panelist in this matter on January 11, 2023. 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 a manufacturer of construction toys and other LEGO branded products. It has subsidiaries and branches throughout the world, and its products are sold in more than 130 countries, including in France where the Respondent is located. The Complainant owns numerous trademarks on a worldwide basis consisting in all or in part of the term LEGO such as, notably, the French trademarks where the Respondent is located: - No. 1262807, registered in classes 6, 7, 11, 17, 37, 39, and 40 with a priority date as of February 28, 1984; - No. 1451218, registered in classes 7, 11 and 17 with a priority date as of February 23, 1988; - No. 287932, registered in class 28 with a priority date as of August 27, 1964. The Complainant also owns close to 5,000 domain names which contain the term "lego" and notably maintains an extensive website under the domain name . The LEGO trademark has been ranked number 1 in the official Top 10 Consumer Superbrands for 2019 and number 8 in the Consumer Relevancy Index. Moreover, the Reputation Institute recognized the LEGO Group as number 1 on its list of the world's Top 10 Most Reputable Global Companies of 2020. On January 22, 2022, the Respondent registered the disputed domain name . The disputed domain name redirects users to a website that resolves to a parked page by its registrar. The Respondent has set up MX records on the disputed domain name. On April 20, 2022, the Complainant sent a cease and desist letter to the Respondent, drawing the Respondent's attention upon its exclusive rights, inviting him to transfer the disputed domain name in its favor. The Respondent did not respond. 5. Parties' Contentions A. Complainant The Complainant first argues that the disputed domain name is confusingly similar to its trademark as it entirely incorporates the "lego" term. Taking into account the well-known character of the LEGO trademark, the Complainant argues that anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant. The Complainant then is of the view that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not authorize the Respondent to use the LEGO trademark in any way, the Respondent is not known under that name and he did not demonstrate any attempt to make a legitimate use of the disputed domain name. page 3 The Complainant finally affirms that the disputed domain name was registered and is being used in bad faith. Taking into account the well-known character of the LEGO trademark, the Respondent was obviously aware of it when he registered the disputed domain name . As a result of such reputation, the Complainant argues that there can be no plausible good-faith reason or logic for the Respondent to have registered the disputed domain name. This is further highlighted by the fact that the Respondent has used a privacy service, set up MX records on the disputed domain name, which entails the possibility that the Respondent could use it in the future to send fraudulent emails for phishing attempts or fraudulent activities. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to "[.] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred: (i) 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) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) The disputed domain name has been registered and is being used in bad faith. Prior to turning to the merits of the case, the Panel however has to address a formal issue regarding the language of the proceedings. A. Language of the proceedings The Complaint was filed in French on December 8, 2022. On December 9, 2022, the Center notified the Parties in both English and French that the language of the Registration Agreement for the disputed domain name was French. The Center invited the Complainant to provide satisfactory evidence of an agreement between the parties to the effect that the proceedings should be in English, to submit the Complaint translated in English or a request for English to be the language of the proceedings. On December 12, 2022, the Complainant requested the proceedings to be carried out in English. The Respondent did not oppose. While the language of the Registration Agreement is in English, the Respondent was provided the opportunity, both in French and in English, to oppose the Complainant's request to have the proceedings carried out in English. The Respondent did not seize such opportunity and, as a result, did not oppose such request. Taking into account the fact that the Center invited the Respondent to proceed at his convenience either in English or in French, no due process appears to have been breached. Consequently, the Panel sees no reason to oppose the Complainant's request and the proceedings shall be carried out in English. page 4 B. Identical or Confusingly Similar According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainants has rights. The Complainant is the holder of numerous trademarks throughout the world consisting of the word "LEGO". UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). The Panel notes that the applicable gereric Top Level-Domain, in the present case ".network", is usually disregarded under the confusing similarity test, and the addition of a mere "s" does not prevent the confusing similarity resulting from the entire capture of the Complainant's LEGO trademark in the disputed domain name. As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. C. Rights or Legitimate Interests According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name "would require complainant to prove a negative, a difficult, if not impossible, task". Thus, in that decision, the panel opined that "[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion". Following that decision, subsequent UDRP panels developed a consensus view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). In the present case the Complainant owns numerous LEGO trademarks, whose well-known character and worldwide reputation cannot be questioned. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. On its side, the Respondent has not answered the Complaint, or the cease and desist letter that was sent to it on April 22, 2022. Considering the absence of a Response and the fact that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name. Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled. page 5 D. Registered and Used in Bad Faith For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)). Bad faith typically requires the Respondent to be aware of the Complainant's trademarks. In the present case, the Complainant is the owner of numerous LEGO trademarks, which enjoy a worldwide reputation. Considering the reputation of the Complainant's trademarks, the Respondent was obviously aware of the Complainant's trademarks at the time he registered the disputed domain name. As a result, the Panel holds that the disputed domain name was registered in bad faith. Furthermore, the Respondent's registration of a well-known trademark such as LEGO may, in itself, be sufficient to consider that the disputed domain name is being used in bad faith (see section 3.1.4 of the WIPO Overview 3.0.). There is no doubt in the Panel's opinion that these marks enjoy a wide reputation and can be considered well-known trademarks under Art. 16.3 of the TRIPS Agreement, respectively Art. 6bis of the Paris Convention, as acknowledged by several prior Panels (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). Based upon the overall circumstances of the case, the Panel has no doubt that the disputed domain name was registered by the Respondent in bad faith. Taking into account the worldwide reputation enjoyed by the LEGO trademark, the absence of any response by the Respondent and the setting up of MX records, one cannot conceive any potential use of the disputed domain name that would not amount to a usage in bad faith. Consequently, the Panel is of the opinion that the disputed domain name has been registered and is being used in bad faith under the paragraph 4(a)(iii) 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. /Philippe Gilliéron/ Philippe Gilliéron Sole Panelist Date: January 25, 2023
Full & Egal Universal Law Academy