ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. N Rahmany Case No. D2023-0608 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. The Respondent is N Rahmany, 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 9, 2023. On February 9, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2023, 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. 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 February 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2023. On February 23 and 28, 2023 and March 1 and 3, 2023, the Respondent sent informal emails to the Center. The Respondent did not submit any response to the Complaint. Accordingly, the Center notified the Respondent of the Commencement of Panel Appointment Process on March 17, 2023. The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on March 29, 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. page 2 4. Factual Background The Complainant is Lego Juris A/S, based in Denmark and with subsidiaries and branches throughout the world. The Complainant's LEGO products are sold in more than 130 countries, including in the United States and the LEGOLAND theme parks have about 1,4 million visitors per year. The Complainant owns numerous trademark registrations in many different jurisdictions around the world for LEGO and LEGOLAND, including the United States trademark registration No. 2334535 for LEGOLAND, registered on March 28, 2000. Also, the Complainant owns numerous domain names containing the terms LEGO and LEGOLAND and maintains websites under the domain names and . The disputed domain name was registered on February 21, 2022 and resolves to a website displaying sponsored links. 5. Parties' Contentions A. Complainant The Complainant argues that the disputed domain name is confusingly similar to its trademarks since it consists of the reproduction of its well-known trademarks LEGO and LEGOLAND, followed by the suffix "verse", which does not have any impact on the overall impression of the dominant part of the disputed domain name. The Complainant alleges that the Respondent does not own any registered trademarks or trade names corresponding to the disputed domain name and that it has not been licensed or authorized by the Complainant to use the LEGO and LEGOLAND trademarks. Additionally, the Complainant says that the disputed domain name is connected to a website displaying sponsored links to attract some of the Complainant's customers to the Respondent's website. Furthermore, the Complainant argues that it is highly unlikely that the Respondent did not know of the Complainant's legal rights in the name LEGO and/or LEGOLAND and that it is rather obvious that it is the fame of the trademark that has motivated the Respondent to register the disputed domain name. The Complaint mentions that many different third-party domain name registrations comprising the trademark LEGO in combination with other words have already been subject to UDRP disputes, due to the considerable value and goodwill associated with the Complainant's trademarks. The Complainant adds that it tried to settle the case amicably with the Respondent by sending a cease and desist letter and that the Respondent replied offering the disputed domain name for sale, which confirms the bad-faith. Moreover, the Complainant shows evidence that the Respondent has previously been involved in the other UDRP cases, which demonstrates the pattern of cybersquatting in which the Respondent is engaging. Finally, the Complainant requests the transference of the disputed domain name. B. Respondent The Respondent sent multiple emails to the Center requesting an attorney, providing screenshots of other page 3 websites and businesses that included the LEGO mark, and alleging that the Complainant was seeking to wrongfully take the disputed domain name. The Respondent did not submit a formal response to the Complainant's contentions. 6. Discussion and Findings As per paragraph 4(a) of the Policy, the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or 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. A. Identical or Confusingly Similar The evidence demonstrates that the Complainant is the owner of several trademark registrations for LEGO and LEGOLAND, which are indeed considered well-known and reputed trademarks. The disputed domain name incorporates the Complainant's famous trademarks LEGO and LEGOLAND in their entirety. The addition of the term "verse" does not avoid a finding of confusing similarity between the disputed domain name and the Complainant's trademarks. As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant's mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Also, it is the general view among UDRP panels that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element of the UDRP. See section 1.8 of the WIPO Overview 3.0. The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests The Respondent has not submitted a formal response to the Complaint. There is no evidence that the Respondent has any authorization to use the Complainant's trademark or to register domain names containing the Complainant's trademarks LEGO and LEGOLAND. There is no evidence that the Respondent is commonly known by the disputed domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, there is evidence in the Complaint that the Respondent has used the disputed domain name as an attempt to redirect Internet traffic for its own profit to a website containing sponsored links to third-party websites. page 4 Moreover, the construction of the disputed domain name itself is such to carry a risk of implied affiliation that cannot constitute fair use. The Panel finds that the use of the disputed domain name, which incorporates the Complainant's famous trademarks, does not correspond to a bona fide use of the disputed domain name under the Policy. For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The trademarks LEGO and LEGOLAND are registered by the Complainant in multiple jurisdictions all over the world and have been used for a long time. The disputed domain name entirely incorporates the Complainant's trademarks and the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant's LEGO and LEGOLAND marks are distinctive, widely well-known and are also considered highly reputed trademarks worldwide. It is, therefore, not conceivable that the Respondent would not have been aware of the Complainant's trademark rights at the time of the registration of the disputed domain name. Thus, a domain name that comprises such well-known marks is undoubtedly suggestive of the registrant's bad faith. This Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant's trademarks by misleading Internet users to believe that its website belongs to or is associated with the Complainant. Moreover, the Respondent has sent emails offering the disputed domain name for sale and has chosen not to respond to the Complainant's allegations. According to the panel's decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, "[...] the failure of the Respondent to respond to the Complaint further supports an inference of bad faith". This Panel finds that the Respondent's attempt at taking undue advantage of the trademarks LEGO and LEGOLAND for commercial gain as described in paragraph 4(b)(iv) of the Policy has been demonstrated. For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith. 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. /Mario Soerensen Garcia/ Mario Soerensen Garcia Sole Panelist Date: April 11, 2023
Full & Egal Universal Law Academy