WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. WhoisGuard, Inc. / Dary Webber

Case No. D2019-0204

1. The Parties

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

The Respondent is WhoisGuard, Inc. of Panama City, Panama / Dary Webber of Tangerang, Banten, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <legos.website> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2019. On January 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2019, 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 January 29, 2019, 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 January 30, 2019.

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 January 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2019.

The Center appointed Tobias Malte Müller as the sole panelist in this matter on February 26, 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

The Complainant, based in Denmark, is the owner of the LEGO trademark used in connection with the LEGO construction toys and other LEGO branded products.

The Complainant is the registered owner of numerous registered trademarks worldwide consisting of the verbal element “LEGO”, amongst which are Indonesian trademark registrations No. IDM000208750 (registered on June 26, 2009, for goods in class 28) and No. IDM000297111 (registered on March 10, 2011, for goods in class 28).

According to the Registrar’s verification response, the Respondent registered the disputed domain name on September 27, 2018. The language of the registration agreement is English.

It is noted that the disputed domain name resolves to a website displaying sponsored links.

The Complainant contacted the Respondent with a cease and desist letter sent by email through the registrar (since no contact information of the Respondent where available) on October 25, 2018, requesting a voluntary transfer of the disputed domain name. The Complainant even offered the Respondent compensation for the expenses of registration and transfer fees (not exceeding out-of-pocket expenses). The Complainant sent a second and third notice dated November 9 and 16, 2018 but did not receive any reply.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Indonesia, where the Respondent is located. The Complainant further contends that its trademark LEGO is among the best-known trademarks in the world, due to decades of advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. It results from the Complainant’s documented allegations that the list of the official top Superbrands for 2017, provided by Superbrands UK, ranks LEGO as winner in the category “Child Products - Toys and Education”. Moreover, the Reputation Institute nominated the LEGO Group as number 2 on their list of “the World’s Most Reputable Companies” (2017). Finally, TIME also announced LEGO to be the “Most Influential Toy of All Time” (2014).

The Complainant contends that the disputed domain name is confusingly similar to its LEGO trademark, since it is nothing but a purposeful misspelling of the Complainant’s LEGO trademark.

The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the Complainant’s mark. According to the Complainant, the Respondent connected the disputed domain name to a parking website with sponsored links in order to generate traffic and income. Consequently, the disputed domain name is being used for commercial purposes.

Finally, the Complainant contends that the Respondent registered the disputed domain name in bad faith. In its view, the Respondent intentionally attempted to attract for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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.

The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of various trademark registrations consisting of the verbal element “LEGO”. Reference is made, in particular, to the two Indonesian trademark registrations No. IDM000208750 (registered on June 26, 2009) and No. IDM000297111 (registered on March 10, 2011) respectively for goods in class 28.

Many UDRP Panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark LEGO is fully included in the disputed domain name. The mere addition of an “s” will be understood by the relevant public as referring to the genitive or plural of LEGO and does therefore not avoid confusing similarity between the disputed domain name and the Complainant’s trademark.

Hence, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i). Policy paragraph 4(a)(i) is satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name:

According to the Complaint’s allegations, which have remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademark LEGO, e.g., by registering the disputed domain name comprising said mark entirely.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

Finally, it results from the Complainant’s undisputed allegations that the disputed domain name is connected to a website displaying sponsored links, through which it generates revenues. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy. In fact, this Panel shares the view of previous panels’ holdings 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 compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition - “WIPO Overview 3.0”).

Previous UDRP panels have found that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

One of these circumstances is that the respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).

It is the view of this Panel that these circumstances are met in the case at hand:

In the Panel’s view, the Respondent has intentionally registered the disputed domain name which contains the Complainant’s trademark LEGO identically. By the time the disputed domain name was registered, it is unlikely that the Respondent did not have knowledge of the Complainant’s trademark. The Complainant also proved that the Respondent is using the disputed domain name to lead to a parking page, with sponsored links. These facts confirm that the disputed domain name is used to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The finding of bad faith is supported by the further circumstances surrounding the disputed domain name’s registration and use in the present case which are (i) the worldwide reputation of the Complainant’s mark LEGO, (ii) the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the Respondent’s failure to reply to the cease and desist letters, (iv) the implausibility of any good faith use to which the disputed domain name may be put, and (v) the Respondent concealing its identity behind a privacy shield (see section 3.3 of the WIPO Overview 3.0).

In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) 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 <legos.website> be transferred to the Complainant.

Tobias Malte Müller
Sole Panelist
Date: March 12, 2019