WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Contact Privacy Inc. Customer 0146725180 / Amar Gandhi, LegoMug

Case No. D2017-0548

1. The Parties

The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Contact Privacy Inc. Customer 0146725180 of Toronto, Canada / Amar Gandhi, LegoMug of West Seneca, New York, United States of America (“United States” or “USA”).

2. The Domain Name and Registrar

The disputed domain name <legomug.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2017. On March 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 March 21, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on March 22, 2017.

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 March 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2017. The Center received email communications from the Respondent on March 21, 2017 and March 27, 2017 (one on each date).

The Center appointed Gökhan Gökçe as the sole panelist in this matter on April 24, 2017. 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, LEGO Juris A/S is a manufacturer of toys which uses the trademark LEGO. The Complainant is a member of the LEGO group of companies and the proprietor of registrations of the mark LEGO in numerous countries around the world, including Canada and the USA. Annex 6 to the Complaint contains a list of all registrations of the trademark LEGO by the Complainant. Most of these trademarks were registered prior to the registration of the disputed domain name. As evidenced in Annex 8 of Complaint, the Complainant also holds numerous domain name registrations incorporating the term “lego”.

The Complainant is the owner of several trademark registrations for LEGO, among which are:

- European Union Trademark Registration LEGO, No. 000039800 of 1998;

- Canadian Trademark Registration LEGO, No. 106,457 of 1957; and

- United States Trademark Registration LEGO, No. 1,018,875 of 1975.

The trademark LEGO is among the best-known trademarks in the world, pursuant to Annex 9 of the Complaint the LEGO trademark and brand have been recognized as being famous.

The disputed domain name <legomug.com> was registered by the Respondent on December 7, 2016.

As shown in Annex 11 of the Complaint, the disputed domain name previously resolved to a website which offered for sale LEGO-marked mugs. However, on May 8, 2017, the Panel visited the disputed domain name and determined that the disputed domain name does not resolve to any web page. However, “www.buildbrickmug.com”, which is the website that the Respondent admitted to having used, is still active and offers “build-on brick” mug sales.

5. Parties’ Contentions

A. Complainant

In accordance with the Policy, the Complainant requests that the disputed domain name be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.

(i) Identical or Confusingly Similar

The Complainant submits that the disputed domain name is identical or confusingly similar to the LEGO trademark in which the Complainant has rights. The dominant part of the disputed domain name contains the element “lego”, which is identical to the LEGO trademark. In addition to the trademark LEGO, the disputed domain name also comprises the generic, descriptive term “mug”. Confusing similarity is generally recognized when well-known trademarks are paired up with generic terms. In this case, the generic term “mug” does not detract from the overall impression created by the “lego” element of the disputed domain name, and there is a considerable risk that the trade public will perceive the disputed domain name either as a domain name owned by the Complainant, or as somehow related to the Complainant. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity or identity between the trademark and the disputed domain name.

(ii) Rights or Legitimate Interests

Moreover, the Respondent has no registered trademarks or trade names corresponding to the disputed domain name. The Complainant affirms that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register and/or use the disputed domain names and it is not making a noncommercial or fair use of the disputed domain name.

It is unlikely that the Respondent was not aware of the Complainant’s legal right on the LEGO brand at the time of the registration of the disputed domain name. The Complainant finds support with Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314.

The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but it is instead using it to generate traffic to its website, which is a commercial website offering a product that takes advantage of Complainant’s brand and trademark. The Complainant finds support with Drexel University v. David Brouda, WIPO Case No. D2001-0067.

(iii) Registration and Use in Bad Faith

The trademark LEGO designates the toys produced and sold by the Complainant and has the status of a well-known and reputed trademark, with a substantial and widespread reputation throughout the USA, Canada and the world. The number of third-party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed the last years. The considerable value and goodwill of the mark LEGO is most likely a reason for this and it is also what made the Respondent register the disputed domain name.

The Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith. It submits that, given the notoriety of the LEGO trademark, the Respondent intentionally registered the disputed domain name without authorization to redirect Internet users, for commercial gain, to website at which a product that takes advantage of the fame of the Complainant’s trademark can be purchased. The Complainant also sees an indication of bad faith in the absence of response to its cease-and-desist letters.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, an email from the Respondent was received on March 27, 2017, with the following content:

“We stopped using the domain name legomug.com about 3 months ago.

We changed our domain to https://www.buildbrickmug.com/.

Notice if you go to legomug.com, you will be redirected to https://www.buildbrickmug.com/

If you are interested in purchasing this domain from us legomug.com. Please let me know and I we can work out a good price.”

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and

(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.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.

A. Identical or Confusingly Similar

Through many trademark registrations and extensive use, the Complainant has obtained rights in the LEGO mark. As such, the Complainant has clearly established that it has rights in the LEGO trademark. See paragraph 1.1 of the WIPO Overview 2.0 (“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.”).

The disputed domain name <legomug.com> is confusingly similar to the Complainant’s LEGO mark. The word “mug” is a dictionary term and its addition to the distinctive LEGO trademark does not prevent a finding of confusing similarity. LEGO Juris A/S v. PrivacyProtect.org / Kim Bum LLC, WIPO Case No. D2012-2462. It has been established that the mere addition of an additional term to a registered mark is insufficient to distinguish a domain name from a distinctive mark such as LEGO. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696; Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488).

The addition of a gTLD such as “.com” after a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the complainant is required to make out prima facie case that the respondent lacks rights or legitimate interests in a domain name. Belupo d.d. v. WACHEM d.o.o ,supra. Once the complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the respondent. The Policy at paragraph 4(c) provides various ways in which the respondent may demonstrate rights or legitimate interests in a domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant contends that (i) the Respondent is not a licensee or authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademark LEGO, (ii) there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services, (iii) the Respondent is not commonly known by the disputed domain name, (iv) the Respondent did not intend to use the disputed domain name in connection with any legitimate purpose and its use cannot be considered a legitimate noncommercial or fair use without intent for commercial gain, because the Respondent is directing the disputed domain name to a commercial website offering a product that takes advantage of the fame of the Complainant’s trademark.

The Panel finds that there is no evidence to suggest that the Respondent has any rights in any trademarks or service marks which are identical, similar or related to the disputed domain name. The Panel accepts that the Respondent is not commonly known by the disputed domain name and the Respondent has acquired no trademark or service mark rights.

The disputed domain name presently does not resolve to any website. This indicates that the Respondent’s present use of the disputed domain name is not in connection with a bona fide offering of goods or services for the purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Nor can the Respondent’s prior use be considered bona fide in light of the use of the disputed domain name in connection with the sale of the Respondent’s products.

The Complainant informs the Panel that it has never licensed or authorized the Respondent to use its LEGO trademark. In the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent.

The Respondent chose the disputed domain name because it incorporates the well-known LEGO mark. Rights or legitimate interests cannot be created where the registrant of the domain name at issue would not choose such a name unless the registrant was seeking to create an impression of association with the complainant. See Drexel University v. David Brouda, supra.

The requirements of paragraph 4(a)(ii) of the Policy are fulfilled and consequently the Panel finds in favor of the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that may evidence a respondent’s bad faith registration and use:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or

(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product or service on respondent’s website or location.

The Panel finds that the Complainant has demonstrated that the Respondent registered and is using the disputed domain name in bad faith. The Panel finds that the Respondent was aware of the Complainant and the LEGO mark when it registered the disputed domain name. The Panel finds that the Respondent was previously using the disputed domain name to divert Internet users who are searching for the Complainant’s website to the Respondent’s own website by capitalizing on the public recognition of the LEGO mark and that this constitutes bad faith use under the Policy.

In addition to the above, the Complainant sent cease-and-desist letters to the Respondent, indicating that it is the owner of the LEGO trademark and requesting the Respondent to cease in the use of the disputed domain name. The Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees; however, the Complainant received no response to date. The failure of a respondent to respond to a cease-and-desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith. Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598.

As regards the use in bad faith of the disputed domain name <legomug.com>, which currently resolves to an inactive website, the Panel considers that bad faith may exist even if the Respondent has done nothing but register the disputed domain name (so-called “passive holding”, as set forth in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Furthermore, the awareness of the trademark LEGO is considered to be significant and substantial. In several prior UDRP decisions, LEGO has been considered a well-known trademark. LEGO Juris A/S v. Kiana Seyfi, Lego, WIPO Case No. D2016-1166; LEGO Juris A/S v. shilei, WIPO Case No. D2016-0152; LEGO Juris A/S v. Park KyeongSook, WIPO Case No. D2016-1195; LEGO Juris A/S v. Viktor Tkachev, Lego Town, WIPO Case No. D2016-0239; LEGO Juris A/S v. Andrei Novakovich, WIPO Case No. D2016-1513.

The Panel also notes the Respondent’s offer to sell the disputed domain upon receipt of notice of the filing of the Complaint, further supporting the Panel’s findings.

All in all, the Panel cannot conceive of any good faith use of the disputed domain name which is not related to the trademark owned by the Complainant. Accordingly, the Panel finds in favor of the Complainant on the third 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 <legomug.com> be transferred to the Complainant.

Gökhan Gökçe
Sole Panelist
Date: May 8, 2017