WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Domain Administrator, See PrivacyGuardian.org / Md Opu Ahmed

Case No. D2018-2901

1. The Parties

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

The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America / Md Opu Ahmed of Rangpur, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <the-legomovie.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2018. On December 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2018, 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 21, 2018, 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 21, 2018.

The Center verified that the Complaint, together with the amended Complaint (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 December 24, 2018. In accordance with the Rules, paragraph 5, the due date for the Response was January 13, 2019. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 14, 2019.
The Center appointed D. Brian King as the sole panelist in this matter on January 18, 2019. 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

A. The Parties

The Complainant is a limited liability company incorporated in Denmark. The Complainant is the owner of LEGO and many other trademarks used in connection with the LEGO brand. The Complainant first registered the LEGO mark in Denmark on May 1, 1954, under registration number VR 1954 00604. The LEGO brand has grown enormously over the years, and LEGO products are now sold in over 130 countries. Notably, the Complainant’s uses of the mark have included the release of major motion picture films entitled “The LEGO Movie”.

The Panel has no information about the activities of the Respondent, except as discussed below in relation to the disputed domain name.

B. The Marks

The Complainant is the registered owner of the LEGO trademark in jurisdictions around the world (Annex 6 to the Complaint). Representative examples follow:

In total, the Complainant has registered the LEGO mark in over 230 national jurisdictions (Annex 6 to the Complaint).

C. Domain Names

The Complainant is the owner of more than 5,000 domain names containing the LEGO mark (Annex 8 to the Complaint).

The disputed domain name, <the-legomovie.com> (the “Domain Name”), was registered on September 18, 2018, in the United States of America (“United States”). This date is later by decades than when the Complainant registered its LEGO trademark in the United States. As of the date of the Complaint, the Domain Name resolved to a webpage offering a copy of the Complainant’s motion picture, “The LEGO Movie” (Annex 11 to the Complaint).

On October 15, 2018, the Complainant attempted to contact the Respondent via a cease-and-desist letter sent by email. The Complainant advised the Respondent that the Domain Name made unauthorized and unfair use of the Complainant’s LEGO trademark (Annex 12 to the Complaint). As of the date the Complaint was filed, the Complainant had not received any response from the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the Domain Name is identical or confusingly similar to its registered trademark. It submits that the LEGO mark has widespread recognition, and indeed is among the best-known trademarks in the world. The Complainant notes that LEGO was named the “Most Influential Toy of All Time” by Time Magazine in 2014 (Annex 9 to the Complaint). In addition, the LEGO brand won the “Children’s Products – Toys and Education” category in UK Superbrand’s 2017 list (Annex 9 to the Complaint). The Complainant argues that the dominant part of the Domain Name is comprised of the term LEGO, which is identical to the Complainant’s trademark. That overall impression, the Complainant argues, is not affected by the other elements of the Domain Name: the term “the”, a hyphen, the suffix “movie”, and the generic Top-Level Domain “.com” suffix.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant represents that it has not given the Respondent any licensing rights or permissions whatsoever to use its trademark. Moreover, according to the Complainant, the Respondent is not using the Domain Name in connection with the bona fide offering of goods or services. Rather, the Respondent has intentionally chosen a domain name incorporating the LEGO mark to generate Internet traffic and income through a commercial website offering an unauthorized copy of the Complainant’s LEGO film. The Complainant further submits that the Respondent is not commonly known by or associated with the Domain Name.

Finally, the Complainant submits that the Domain Name was registered and is being used in bad faith. LEGO is an internationally known trademark, the Complainant argues, and therefore the Respondent must have been aware of the existence of the Complainant’s rights in the LEGO mark. As such, the registration of the Domain Name including the LEGO mark, in itself, shows bad faith. Furthermore, the Complainant reiterates that the Domain Name resolves to a commercial website offering a copy of “The LEGO Movie”, without any permission from the Complainant to do so. The website also lacks any disclaimer noting that it is not affiliated with the Complainant. The Complainant submits that all of this shows that the Respondent is using the Domain Name in bad faith, with the intention of attracting Internet users to the website for commercial gain. Finally, the Complainant asserts that the Respondent has registered several other domain names incorporating famous marks and argues that this confirms the bad faith nature of the Respondent’s conduct.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:

(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.

Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of paragraph 4(a)(ii) above.
Paragraph 4(b) of the Policy sets out illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) above.

A. Identical or Confusingly Similar

The Complainant has provided evidence demonstrating that it possesses rights in the LEGO mark. That mark has been registered by the Complainant in jurisdictions around the world (Annex 6 to the Complaint).

The dominant part of the Domain Name is the term “LEGO”, which is identical to the Complainant’s trademark.

Panels have consistently held that the addition of dictionary or descriptive words to a complainant’s trademark does not distinguish a domain name from the registered mark (see Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; eBay Inc. v. ebayMoving/Izik Apo, WIPO Case No. D2006-1307; Lime Wire LLC v. David Da Silva / Conactprivacy.com, WIPO Case No. D2007-1168; Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber, WIPO Case No. D2003-0251). A corollary to this rule is that when a domain name wholly incorporates a mark in a recognizable manner, the addition of non-distinctive text does not remedy the confusing similarity to the mark (see Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Revlon Consumer Products Corporation v. IONE Inc., WIPO Case No. D2010-1000).

In this case, the Domain Name adds the word “the”, a hyphen, the word “movie”, and the suffix “.com” to the Complainant’s LEGO mark. Consistent with the holdings in the prior cases noted above, the Panel finds that these additions do not reduce the close similarity of the Domain Name to the Complainant’s trademark. On the contrary, the resulting Domain Name is rendered nearly identical to the title of the Complainant’s motion picture.

Accordingly, the Panel has no difficulty in concluding that the Domain Name is confusingly similar to the Complainant’s LEGO mark. The first element of the test under paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

Many prior UDRP panels have found that complainants only need to establish a prima facie case in relation to the second element of the test under paragraph 4(a) of the Policy (see MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205; Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith, WIPO Case No. D2010-1576; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). Once a prima facie showing is made, the burden shifts to the respondent to prove that it does have rights or legitimate interests in the disputed domain name. To overcome a complainant’s prima facie showing, a respondent can, for example, provide evidence of a bona fide offering of goods or services, the dictionary use of the disputed domain name, or a legitimate noncommercial or fair use.

The present Panel agrees that the Complainant need only make out a prima facie case and finds that the Complainant has done so here. The Domain Name was registered in September 2018, decades after the Complainant obtained registered trademarks for LEGO (Annex 6 to the Complaint). The Complainant has further shown that at least until the time the Complaint was filed, the Domain Name resolved to a website offering access to the Complainant’s movie and prominently displaying LEGO products (Annex 11 to the Complaint). Previous UDRP decisions have confirmed the fame of the trademark at issue in this case (see 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). The clear inference is that the Respondent, with knowledge of the Complainant’s rights in the LEGO mark, sought to profit by trading off the Complainant’s goodwill. Viewed in light of the Respondent’s bad faith use, discussed further below, that is the antithesis of rights or legitimate interests in a domain name.

The Respondent has not filed a Response. Thus, the Complainant’s contentions as to the Respondent’s lack of rights or legitimate interests in the Domain Name remain unchallenged. In the absence of any contrary evidence, the Panel accepts the Complainant’s representations that it has not given the Respondent permission to use the Complainant’s trademark in any manner and that there is no commercial relationship between the Complainant and the Respondent. The Panel likewise finds no evidence that the Respondent is commonly known by a name corresponding to the Domain Name.

For these reasons, the Panel concludes that the Complainant has satisfied the requirements of the second element of the test under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element of the test under paragraph 4(a) requires proof that the Domain Name has been registered and is being used in bad faith.

Previous UDRP panels have found that the mere registration of a domain name that is confusingly similar to a famous mark can establish bad faith (see, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Georgia-Pacific Corporation v. Charlie Kalopungi, WIPO Case No. D2011-0634). The Panel has already concluded above that the Domain Name is confusingly similar to the Complainant’s LEGO mark. Moreover, given the content of the webpage to which the Domain Name resolved, it is inconceivable that the Respondent registered the Domain Name without prior knowledge of the LEGO mark. The Panel thus concludes that the Respondent registered the Domain Name in bad faith.

The Complainant has also provided sufficient evidence to show that the Respondent is using the Domain Name in bad faith. The website associated with the Domain Name displays the Complainant’s LEGO film and other LEGO products, despite the Respondent’s lack of any authorization from the Complainant to do so (Annex 11 to the Complaint). Further, there is no disclaimer acknowledging the Respondent’s lack of association with the Complainant. The Panel accordingly finds that the Domain Name has been purposefully used in a manner that creates the false impression that the corresponding website is associated with the Complainant. The intentional creation of that false impression constitutes bad faith usage.

Finally, the Panel notes that the Complainant has also shown that the Respondent has registered domain names incorporating other famous marks, for example: <superbowl2019.net>, <2020superbowl.net>, <oscars2018.net>, and <indy-500-live.net>. This pattern of conduct by the Respondent further strengthens the finding of bad faith registration and use in the present case (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.2).

On all these grounds, the Panel determines that the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy as well.

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 Domain Name <the-legomovie.com> be transferred to the Complainant.

D. Brian King
Sole Panelist
Date: February 1, 2019