WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Maya Ron

Case No. D2020-0933

1. The Parties

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

Respondent is Maya Ron, Israel, represented by Danhirsh & Co. (DNH), Israel.

2. The Domain Name and Registrar

The disputed domain name <superlego.net> (the “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 April 16, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 17, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 24, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 28, 2020.

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 Respondent of the Complaint, and the proceedings commenced on April 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2020. On May 13, 2020, Respondent requested an extension of the Response due date. An automatic four-day extension of the Response due date was granted until May 23, 2020, under paragraph 5(b) of the Rules. The Center received three email communications from Respondent on May 19, 24, and 25, 2020.

The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on June 5, 2020. 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

Complainant is a limited company incorporated in Denmark, with its principal place of business at Koldingvei, Denmark. Complainant is a designer and manufacturer of toys and playing materials for children together with computer hardware and software, books, videos and computer robotic construction sets. Complainant has subsidiaries and branches worldwide, and its products are sold in more than 130 countries, including Israel, where Respondent is located.

Complainant is the owner of numerous registrations of its LEGO trade mark (“Complainant’s Mark”) with the earliest one being registered in 1955, as well as approximately 5,000 domain names containing the term “lego”. The Complainant’s trade mark registrations include the Israeli trade mark No. 18759, registered on November 8, 1961. Complainant also maintains an extensive website under the domain name <lego.com>.

According to the publicly available WhoIs, the Domain Name was registered on November 27, 2019.

Complainant sent cease and desist letters to Respondent on December 24 and 31, 2019, and January 7, 2020, however, no response was received.

Complainant provided evidence that the Domain Name resolved to a website containing, inter alia, press articles about Complainant.

5. Parties’ Contentions

A. Complainant

Complainant states that Complainant’s Mark is among the best-known trade marks in the world, due in part to decades of extensive advertising, packaging and promotional materials. Complainant further states that Complainant’s Mark has been recognised as being famous, as has been confirmed in previous UDRP decisions.

Complainant contends that the Domain Name is identical and confusingly similar as the dominant part of the Domain Name comprises Complainant’s Mark in its entirety, along with the addition of “super”, that does not detract from the overall impression. Complainant submits that an Internet user seeing the Domain Name is likely to mistake it for a domain name related to Complainant, therefore creating a likelihood of confusion.

Complainant asserts that the Domain Name resolves to a website featuring numerous articles about Complainant and its products, while simultaneously selling Complainant’s DUPLO branded products as well as “knock-off” or counterfeit versions of Complainant’s products, stating the toys are compatible with “LEGOing”. Complainant argues that such use of the Domain Name, and its website, shows that Respondent intended the Domain Name to be confusingly similar to Complainant’s Mark.

Complainant states that there is a likelihood of confusion as an Internet user seeing the Domain Name is likely to mistake it for a domain name related to Complainant. Respondent is therefore exploiting the goodwill and image of Complainant’s Mark, which could result in dilution and damage to Complainant’s Mark.

Complainant states that Complainant and Respondent are not linked, and that no license or authorisation of any kind has been given by Complainant to Respondent to use Complainant’s Mark. Nor is Respondent an authorised dealer of Complainant’s products. As such, Complainant states that Respondent cannot claim any rights established by common usage.

Complainant asserts that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, but instead has intentionally chosen a domain name based on a registered trade mark in order to generate traffic and income by offering products for sale that compete directly with Complainant’s products.

Complainant contends that the Domain Name is currently connected to a commercial website featuring press articles about Complainant, whilst simultaneously selling Complainant’s DUPLO branded toys and counterfeit construction brick toys. As such, Complainant submits, Respondent is using the Domain Name to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant, which constitutes bad faith registration of the Domain Name.

B. Respondent

Respondent did not respond to the allegations set out in the Complaint. However, by email to the Center dated May 25, 2020, Respondent advised that the Domain Name was not in commercial use and was inactive. Respondent suggested Complainant could present an offer for consideration to purchase the Domain Name.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant is the manufacturer of the well-known and long-established brand of children’s toys and playing materials LEGO. Since 1955, Complainant has secured registration of Complainant’s Mark. Complainant trades around the world and its products are sold in more than 130 countries, including Israel, where Respondent is located.

Complainant contends that the Domain Name is confusingly similar to Complainant’s Mark. That is, insofar as the dominant part of the Domain Name comprises Complainant’s Mark in its entirety, along with the word “super”. The addition of the word “super” does not prevent a finding of confusing similarity between the Complainant’s Mark and the Domain Name.

Respondent does not explain why it chose to use Complainant’s Mark in its Domain Name. Nor does it attempt to refute the allegations in the Complaint. It is found that:

a) Complainant has rights in respect of Complainant’s Mark; and

b) the Domain Name is confusingly similar to Complainant’s Mark.

Accordingly, the Panel is satisfied that the first element of the Policy has been met.

B. Rights or Legitimate Interests

In terms of whether Respondent has rights or legitimate interests in the Domain Name, in the absence of any response or explanation, the Panel finds that Respondent is not sponsored by or affiliated with Complainant. Nor has Respondent been licensed, authorized, or permitted to register domain names incorporating Complainant’s Mark. Further, Respondent is not commonly known by the Domain Name.

Complainant contends that the Domain Name is currently connected to i.e. resolves to, a commercial website featuring press articles about Complainant, and selling Complainant’s DUPLO branded toys and allegedly counterfeit construction brick toys. In the absence of any formal response from Respondent, the Panel infers that Respondent is using the Domain Name to attract Internet users to a website for commercial gain. Respondent did email the Center on May 25, 2020, stating that the Domain Name was not in commercial use and was inactive. Complainant, in its Complaint, asserts and provides evidence indicating otherwise. Given Respondent failed to file a formal response or any evidence to back up its assertion, the Panel accepts Complainant’s position, at least regarding the use of the Domain Name at the time of submission of the Complaint.

Based on the above, the Panel is therefore satisfied that the second element of the Policy has been met.

C. Registered and Used in Bad Faith

Given Complainant’s use and registration of Complainant’s Mark, and its international repute, and operation in over 130 countries around the world, including in Israel, the Panel infers that Respondent knew of Complainant’s Mark when registering the Domain Name.

In that regard, the word “super” in the Domain Name is laudatory and suggests a “super” version of “Lego” and Internet users seeing the Domain Name are likely to mistake it for a name related to or associated with Complainant. This composition reinforces Respondent’s registration and use of the Domain Name in bad faith.

Taking into account the evidenced commercial use of the Domain Name provided by Complainant, the Panel finds that Respondent registered and is using the Domain Name to take bad faith advantage of Complainant’s long-standing interest in Complainant’s Mark, at the time of registration of the Domain Name and since.

Furthermore, noting the evidenced use of the Domain Name, Respondent’s claims regarding the Domain Name not resolving to an active website would appear to indicate a change of use after notification of the present proceeding and in these circumstances further supports a finding of bad faith. See section 3.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel thus finds that the third limb of the Policy has been met.

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 <superlego.net> be transferred to Complainant.

Clive L. Elliott
Sole Panelist
Date: June 19, 2020