WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Truong Bui, truongbui1991

Case No. D2020-1706

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Truong Bui, truongbui1991, Viet Nam.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2020. On June 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2020, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 9, 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 the Respondent of the Complaint, and the proceedings commenced on July 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2020.

The Center appointed William R. Towns as the sole panelist in this matter on August 17, 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

The Complainant is a limited company incorporated in Denmark and best known for its popular construction toys. The Complainant trades under the LEGO brand, and has secured trademark registrations for its LEGO marks in numerous jurisdictions throughout the world, including the following:

- United States Trademark Registration No. 1,018,875, registered on August 26, 1975;
- Denmark Trademark Registration No. VR195400604, registered on May 1, 1954;
- Cambodia Trademark Registration No. 898, registered on July 23, 1992;
- Canada Trademark Registration No. TMA106457, registered on April 26, 1957;
- European Union Trademark Registration No. 000039800, registered on October 5, 1998;
- Vietnam Trademark Registration No. 4-0060988-000, registered on March 14, 2005; and
- Panama Trademark Registration No. 23428, registered on June 11, 1979.

The fame and distinctive character of the Complainant’s LEGO mark has been recognized in numerous UDRP decisions. 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; LEGO Juris A/S v. WhoisGuard, Inc. / Dary Webber, WIPO Case No. D2019-0204; LEGO Juris A/S v. Contact Privacy Inc. Customer 0153814196 / Micahela Lopez Flores, WIPO Case No. D2019‑0993; LEGO Juris A/S v. Contact Privacy Inc. Customer 1246240368 / Nguyen Anh Duy, WIPO Case No. D2020-0822; LEGO Juris A/S v. lin zhang, WIPO Case No. D2020-0675; LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Eric Meals, WIPO Case No. D2020-0823; LEGO Juris A/S v. Nadir Boukeraa, WIPO Case No. D2020-0874; and LEGO Juris A/S v. Wu Zhang, WIPO Case No. D2020-0914.

The disputed domain name <legostore.work> was registered on March 19, 2020, according to the Registrar’s WhoIs records. The disputed domain name presently does not resolve to an active website; however, the disputed domain name has been linked with a website displaying the Complainant’s distinctive LEGO mark and offering for sale LEGO products and other merchandize unrelated to the Complainant.

Upon becoming aware of the registration of the disputed domain name the Complainant dispatched a cease and desist letter to the Respondent, to which the Complainant received no reply.

5. Parties’ Contentions

A. Complainant

The Complainant states it is the owner of the LEGO mark and all other trademarks used by the Complainant in connection with the famous LEGO brands of construction toys, and other LEGO branded products. The Complainant explains that its licensees are authorized to exploit the Complainant’s intellectual property rights, including its property rights in Panama, Viet Nam and elsewhere. The Complainant represents that it maintains subsidiaries and branches throughout the world, with LEGO products sold in more than 130 countries. The Complainant further relates that it also owns close to 5,000 domain name containing the LEGO mark.

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s LEGO mark, observing that the fame and distinctiveness of the LEGO mark has been confirmed in numerous UDRP decisions. The Complainant maintains that the addition of descriptive word “store” in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s LEGO mark. The Complainant further notes that the Top-Level Domain (“TLD”) “.work” is disregarded when assessing confusing similarity as it does not impact the overall impression of the dominant portion of the disputed domain name.

The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant represents that the Respondent has not been licensed or otherwise authorized to use the Complainant’s LEGO mark, and that given the fame of the LEGO mark any such use would violate the Complainant’s rights in the mark. The Complainant submits that the Respondent is not making a noncommercial or other fair use of the disputed domain name, and that the Respondent has not been commonly known by the disputed domain name.

The Complainant contends that the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant acknowledges that while the Respondent might claim to be an unauthorized reseller of the Complainant’s LEGO products and other unrelated third-party merchandise, the Respondent has prominently displayed the Complainant’s famous LEGO mark on his website, making no effort to prevent confusion by including a disclaimer on the Respondent’s website or otherwise making clear that the Respondent was not the trademark owner.

The Complainant asserts that the disputed domain name has been registered and used in bad faith. The Complainant submits that the LEGO mark already was a well-known trademark with a substantial reputation many decades before the Respondent registered the disputed domain name. The Complainant calls attention to a previous UDRP decision involving the same parties in LEGO Juris A/S v. Truong Bui, truongbui1991, WIPO Case No. D2019-2894, which according to the Complainant confirms that the Respondent cannot credibly claim in the instant case to have been using the LEGO mark without an awareness of the Complainant’s rights.

The Complainant contends that the Respondent’s failure to reply to the Complainant’s cease and desist letter is relevant to a finding of bad faith. The Complainant concludes that the Respondent was well aware of and deliberately targeted the Complainant’s famous LEGO mark, seeking intentionally to attract Internet users to the Respondent’s website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website. The Complainant accordingly submits that the Respondent should be considered to have registered and be using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain name”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the 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 with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <legostore.work> is confusingly similar to the Complainant’s LEGO mark, a well-known and famous mark in which the Complainant has established rights through registration and extensive use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

In this case the Complainant’s LEGO mark is clearly recognizable in the disputed domain name.² The inclusion of the descriptive term “store” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.³ The TLDs generally are disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.⁴

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s well-known LEGO mark. The Respondent notwithstanding registered the disputed domain name, which the Respondent has linked with a website displaying the Complainant’s distinctive and well-known LEGO mark, and advertising for sale the Complainant’s LEGO products as well as other unrelated third-party merchandise.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

The Panel concludes from the record in this case that the Respondent was aware of the Complainant and had the Complainant’s famous LEGO mark in mind when registering the disputed domain name. The disputed domain name appropriates the Complainant’s LEGO mark in its entirety, and the Respondent’s use of the disputed domain name with a website prominently displaying the Complainant’s mark is likely to convey to Internet users the false impression that the Respondent’s website is affiliated with, sponsored, or endorsed by the Complainant.

UDRP panels generally have found that a domain name appropriating a complainant’s trademark plus an additional term or terms, as is the case here, carries a risk of implied affiliation if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, sections 2.5 and 2.5.1. The use of a domain name cannot be “fair” if it suggests a non-existent affiliation with the trademark owner. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, WIPO Case No. D2014-1359; Project Management Institute v. CMN.com, WIPO Case No. D2013-2035. There is no disclaimer on the Respondent’s website, an omission by the Respondent that in the Panel’s judgment may well have been intentional.

In view of the foregoing, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

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

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

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

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As previously noted, the Panel concludes that the Respondent was well aware of the Complainant and had the Complainant’s famous LEGO mark firmly in mind when registering the disputed domain name. The Respondent’s registration of the disputed domain name in the attendant circumstances smacks of opportunistic bad faith. The Panel concludes that the Respondent has used the disputed domain name intentionally 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 source, sponsorship, affiliation or endorsement of the Respondent’s website or products displayed on the Respondent’s website.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 <legostore.work> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: August 24, 2020

¹ See WIPO Overview 3.0 , section 1.7.

² See WIPO Overview 3.0, section 1.8 and cases cited therein.

³Id.

⁴ See WIPO Overview 3.0 , section 1.11. In some instances the meaning of a particular TLD may be relevant to assessments under the second and third elements of the Policy. See WIPO Overview 3.0, sections 1.11.2, 2.14, and cases cited therein.