The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is nam jong Gang, Republic of Korea.
2. The Domain Name and RegistrarThe Disputed Domain Name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2021. On July 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 15, 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 July 16, 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 July 20, 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 July 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2021.
The Center appointed Colin T. O’Brien as the sole panelist in this matter on August 27, 2021. 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 Complainant, based in Denmark, is the owner of the LEGO trademark used in connection with construction toys and other products. LEGO branded products are sold in more than 130 countries and the Complainant has subsidiaries and branches throughout the world, including in the Republic of Korea, Colombia, and the United States of America. The Complainant has registered its LEGO trademark throughout the world including the Republic of Korea, and Colombia. For example the Complainant owns the United States of America trademark registration no. 1018875, for the word mark LEGO, registered on August 26, 1975. The Complainant also owns close to 5,000 domain names containing its LEGO trademark.
The Disputed Domain Name was registered on December 1, 2020, which resolves to a website displaying sponsored links that reference “ALL LEGO PRODUCTS” and “BRICK SHOP” that provide further links to websites featuring unauthorized LEGO dealers, and other related and unrelated products and services.
5. Parties’ Contentions A. ComplainantThe Complainant claims that the Disputed Domain Name is confusingly similar to the Complainant’s well-known LEGO trademark because it incorporates in its entirety the LEGO mark. The addition of the country code Top-Level Domain (“ccTLD”) “.co” and a hyphen does not have any impact on the overall impression of the dominant portion of the Disputed Domain Name.
The Respondent does not have any rights of legitimate interests in the Disputed Domain Name because it does not have any registered trademarks or trade names corresponding to the Disputed Domain Name; the Respondent is neither an authorized seller nor a licensee of the Complainant; the obvious inference is the fame of the LEGO mark motivated the Respondent to register the Disputed Domain Name. The Disputed Domain Name is being offered for sale in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the domain, which serves as further evidence of the Respondent’s lack of rights and legitimate interests in the Disputed Domain Name.
The Disputed Domain Name, which incorporates the Complainant’s famous LEGO mark, was registered and is being used in bad faith to intentionally attempt to attract Internet users to the Respondent’s own website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has demonstrated it owns registered trademark rights in the LEGO mark worldwide, including in Colombia and Republic of Korea. The Disputed Domain Name reproduces the LEGO mark in its entirety. The additions of the ccTLD“.co” and a hyphen do not avoid a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”).
Accordingly, the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate InterestsThe Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; has not at any time been commonly known by the Disputed Domain Name; but is using the Disputed Domain Name as a pay-per-click (“PPC”) website which contains links to websites which sell LEGO branded products as well as products of the Complaint’s competitors without the authorization of the Complainant.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455.
Here, the Respondent has provided no evidence of any right or legitimate interests in the Disputed Domain Name. Moreover, the nature of the Disputed Domain Name carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
In the absence of any evidence indicating a legitimate reason for registering the Disputed Domain Name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that the Complainant has satisfied its burden of proof in establishing the Respondent’s bad faith registration and use. Paragraph 4(b)(iv) states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract Internet users, for commercial gain.
As set forth in section 3.1.4 of WIPO Overview 3.0, panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. In the case at issue, as the Complainant has demonstrated, the LEGO trademark is globally famous and is reproduced in the Disputed Domain Name in its entirety. Due to the worldwide renown of the LEGO mark, it is inconceivable that the Respondent registered the Disputed Domain Name without knowledge of the Complainant.
Further, the facts establish a deliberate effort by the Respondent to cause confusion using the Disputed Domain Name with the Complainant’s LEGO mark for commercial gain. First, the Disputed Domain Name is used for a website which contains links to websites selling unauthorized Lego products. Second, the Complainant has demonstrated that the Disputed Domain Name was being offered for sale shortly after its registration for USD 399, which is in excess of the usual registration costs. Thus, the Respondent has no rights to or legitimate interests in the Disputed Domain Name, see, WIPO Overview 3.0, section 3.1.
Under the circumstances, the Panel finds no plausible good faith reason for the Respondent’s conduct and concludes that the Disputed Domain Name was registered and used in bad faith
7. DecisionFor 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
Colin T. O’Brien
Sole Panelist
Date: September 13, 2021