ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. chris todero Case No. D2023-0468 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. The Respondent is chris todero, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 1, 2023. On February 1, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 2, 2023, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 3, 2023, 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 the same day. 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 February 7, 2023. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 28, 2023. page 2 The Center appointed Nayiri Boghossian as the sole panelist in this matter on March 6, 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 the manufacturer of the construction toys branded LEGO. The Complainant owns a number of trademark registrations for LEGO such as United States of America registration No. 1018875, registered on August 26, 1975. The disputed domain name was registered on August 4, 2022, and resolves to a parking webpage that contains pay-per-click ("PPC") links, which relate to the Complainant's business. 5. Parties' Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The dominant part of the disputed domain name consists of the Complainant's trademark. The trademark LEGO is well known. The inclusion of a third party's trademark, which is AMAZON, does not eliminate confusing similarity. The generic Top-Level-Domain ("gTLD") ".com" does not have an impact on assessing confusing similarity. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not authorized or licensed by the Complainant to use its trademark nor is he an authorized dealer. The disputed domain name is not used in connection with a bona fide offering of goods or services but in order to generate income from sponsored links. The Respondent has not used the trademark LEGO in connection with a company name. The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant's trademark is well known and there is significant value and goodwill attached to it. The disputed domain name has been registered decades after the registration of the Complainant's trademark. The Respondent must have been aware of the Complainant's trademark when registering the disputed domain name. The Respondent did not reply to the cease-and-desist letter sent by the Complainant. The website of the Respondent contains PPC links. The Respondent registered the disputed domain name in order to profit from the reputation of the Complainant's trademark and confuse Internet users by creating an impression of association with the Complainant. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant owns trademark registrations for the trademark LEGO. The Panel is satisfied that the Complainant has established its ownership of the trademark LEGO. The disputed domain name incorporates the Complainant's trademark LEGO in its entirety. The addition of the term "amazon" does not eliminate confusing similarity. The gTLD ".com" is generally ignored when assessing confusing similarity. page 3 Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests A complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established a prima facie case and the burden of production shifts to the Respondent to show that it has rights or legitimate interests. Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links capitalize on the reputation and goodwill of the complainant's mark. The website to which the disputed domain name resolves contains a variety of PPC links which offer toys and brick toys. Bearing in mind that the Complainant's core business is toys and construction toys, it is the Panel's view that the Respondent is trying to capitalize on the reputation and goodwill of the Complainant's trademarks. In Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708, it was found that the respondent had no rights or legitimate interests as "the sole purpose of the disputed domain name is to resolve to pay-per-click advertising websites and collect click-through revenue from advertising links. Such use demonstrates that the Respondent has used the disputed domain name to derive a commercial benefit. There is no indication on the website that the Respondent has made a bona fide use of the disputed domain name". The absence of a response by the Respondent allows the Panel to draw inferences, and under the circumstances, the absence of a response leaves the Complainant's prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name unrebutted. Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Respondent must have been aware of the Complainant's trademark as it is well known. Furthermore, the disputed domain name resolves to a parking webpage that contains PPC links relating to toys and brick toys. It is therefore clear that the Respondent was very much aware of the Complainant's business and its trademark and intended to trade off its trademark. Additionally, a parked page with sponsored links is an indication of bad faith under the circumstances. In Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 the panel found that "While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use". Such conduct of using a domain name, to attract Internet users for commercial gain, would fall squarely within the meaning of paragraph 4(b)(iv) of the Policy. Given the above, the Panel believes that the Respondent has registered the disputed domain name in order to trade off the reputation of the Complainant's trademarks. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. page 4 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. /Nayiri Boghossian/ Nayiri Boghossian Sole Panelist Date: March 8, 2023
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