WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Carlos Steffen, KOPLAI

Case No. D2020-2355

1. The Parties

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

The Respondent is Carlos Steffen, KOPLAI, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <blocklego.com> 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 September 10, 2020. On September 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 September 21, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was October 11, 2020. The Respondent did not submit any response. Accordingly, the Center sent notification of the Respondent’s default on October 12, 2020.

The Center appointed Petra Pecar as the sole panelist in this matter on October 23, 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 LEGO Juris A/S is a limited company incorporated in Denmark, part of the LEGO group of companies, and the owner of the LEGO trademarks used in connection with construction toys and other LEGO branded products. The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights. The Complainant has subsidiaries and branches throughout the world. LEGO products are sold in more than 130 countries. The LEGO group has expanded its use of the LEGO trademark to computer hardware and software, books, videos and computer controlled robotic construction sets.

The Respondent is an individual based in Switzerland.

The disputed domain name <blocklego.com> was registered on June 8, 2020, and at the time the Complaint was filed, it resolved to a commercial website selling Bitcoin ATM installation packages.

5. Parties’ Contentions

A. Complainant

The Complainant is part of LEGO Group and the owner of LEGO trademarks that have been registered in numerous countries all over the world. In addition, the Complainant is the owner of more than 5,000 domain names containing the term LEGO. In support of the above, the Complainant has provided much evidence on the registration of LEGO trademarks, such as Danish trademark with registration no. 604-1954, registered on May 1, 1954, and Swiss trademark with registration no. 2P-426855, registered on August 25, 1994, as well as list of registered domain names in various territories and on various top-level domains.

According to the Complainant, the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, as it comprises the term LEGO which is identical to the Complainant’s trademarks, and the addition of the generic term “block” will not outweigh that similarity. Moreover, the Complainant contends that the generic term “block” is closely linked and associated with the Complainant’s brand and trademark and that therefore, it only serves to underscore and increase the confusing similarity between the disputed domain name and the Complainant’s trademark. The Complainant further argues that the LEGO trademark is recognizable as a world-famous or well-known trademark, which has been confirmed in numerous previous UDRP decisions such as LEGOJuris A/S v. Level 5 Corp., WIPO Case No. D2008-1692; LEGOJuris A/S v. Michael Longo, WIPO Case No. D2008-1715; and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680.

The Complainant also contends that the LEGO trademarks are among the best-known trademarks in the world, due in part to decades of extensive advertising which depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. In support of that claim, the Complainant has provided evidence that the LEGO trademarks and brands have been recognized as prominent. That includes the official Top 10 Consumer Superbrands report for 2019, showing LEGO as the number 1 Consumer Superbrand and number 8 in the Consumer Relevancy Index; evidence that the Reputation Institute recognized the LEGO Group as number 1 on its list of the world’s Top 10 Most Reputable Global Companies of 2020; and for 10 consecutive years prior to that; evidence that in 2014, TIME also announced LEGO to be the most influential toy of all time.

The Complainant further argues that past panels have consistently held that a domain name that consists merely of a complainant’s trademark and an additional term that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trademarks. As an illustration, the Complainant has quoted the decision Inter IKEA Systems B.V. v. Franklin Lavallee / IkeaCuisine.net, WIPO Case No. D2015-2042; and section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), which stipulates that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Complainant has also concluded that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not add any distinctiveness to the disputed domain name.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not commonly known by the disputed domain name. At the moment of the filing of the Complaint, WhoIs information identified the Registrant as “KOPLAI” which does not resemble the disputed domain name in any manner. Thus, where no evidence, including the WhoIs record for the disputed domain name, suggests that the Respondent is commonly known by the disputed domain name, then the Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name. The Complainant has emphasized that the previous UDRP panels (for example, in case Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049) noted that when the respondent’s name is different from the domain name, it couldn’t be commonly known by the disputed domain name in question. The Complainant has also underlined that no license or any other authorization was issued by the Complainant to the Respondent to use the LEGO trademark. In support of that, the Complainant has cited Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 where the panel finds that 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 disputed domain name could be claimed by respondent.

In addition, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. This circumstance was discussed by the previous UDRP panel as a factor in the finding of non-legitimate interest with the respondent in Dr.Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312. The Complainant further contends that LEGO is a famous trademark, and it is highly unlikely that the Respondent did not know of the Complainant’s respective trademark rights when registering the disputed domain name. On the contrary, the Complainant suggests that the Respondent has intentionally chosen a domain name based on the Complainant’s well-known trademark in order to generate traffic and income through a website which offers or attempts to sell the Respondent’s products. As an illustration, the Complainant underlines that in Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, it was established that any use of such a trademark in a domain name would likely violate the exclusive trademark rights which a complainant has long held in its mark. Thereby, it is rather clear that the Respondent is trying to benefit from the Complainant’s world-famous trademarks.

The Complainant adds that in the case Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that rights or legitimate interests couldn’t be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.

In respect to the third condition, the Complainant contends that the disputed domain name was registered and is being used in bad faith since LEGO is a well-known trademark. The Complainant has demonstrated that its LEGO trademark is particularly attractive for domain name registrations from unauthorized parties and that, as such, it is frequently subject to legal proceedings seeking the protection of its LEGO trademark. Having that in mind, such attractiveness of the LEGO trademark probably motivated the Respondent when registering the disputed domain name. From the above, the Complainant draws the conclusion that the Respondent was aware of the Complainant’s trademark rights when registering the disputed domain name.

Finally, the Complainant further argues that the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as a bad faith registration. The Complainant adds that there is also a risk that its LEGO trademarks can be tarnished by being connected to the website to which the disputed domain name resolves and that by using the trademarks as a part of the disputed domain name, the Respondent exploits the goodwill and the image of the trademarks, which may result in dilution and other damage for the Complainant’s trademarks. Consequently, the Complainant draws the conclusion that the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to its own website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Complainant further states that the Respondent ignored the Complainant’s cease and desist letters and adds that there is no connection between the Respondent and the Complainant.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

i) the disputed 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 disputed domain name; and

iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (See WIPO Overview 3.0, section 1.2.1).

The Complainant has provided detailed evidence of its rights in the trademark LEGO on the basis of its multiple trademark registrations for the same in various jurisdictions around the world including, among others, Swiss Trademark registration No. 2P-426855.

Previous panels have found the Complainant’s LEGO trademark to be well-known (see in particular LEGOJuris A/S v. Level 5 Corp., WIPO Case No. D2008-1692, LEGOJuris A/S v. Michael Longo, WIPO Case No. D2008-1715 and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680). More importantly, the Complainant has provided extensive evidence in respect to the recognition of reputation of the LEGO trademark throughout the world, and this Panel, therefore, holds that indeed the LEGO trademark should be observed as a well-known trademark.

The disputed domain name reproduces the Complainant’s LEGO trademarks and domain names in their entirety. The adjunction of the term “block”, which refers to the nature of the products registered and sold under LEGO trademarks, does not prevent a finding of confusing similarity. According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Similarly, the gTLD “.com” does not preclude a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks in accordance with well-established practice of previous panels. The Panel, therefore, finds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademarks.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, meaning that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends, inter alia, that it has not authorized the Respondent to use the LEGO trademark, and that there is no relationship between the parties. Also, the Complainant has emphasized that the Respondent is not known by the name LEGO nor has any connection with such name.

At the time the Complaint was filed, the disputed domain name resolved to a website containing information about and offering for sale Bitcoin ATM installation packages. Thereby, it seems that the Respondent is using the Complainant’s trademarks to mislead Internet users to its own commercial website on the basis of the Complainant’s goodwill. It also seems that the Respondent has, therefore, adopted the Complainant’s LEGO trademarks for its own use and incorporated them into the disputed domain name in order to confuse Internet users into believing the Respondent is linked to the Complainant, which in any case, does not constitute a bona fide offering of goods and services.

Additionally, the Panel finds that the Respondent does not seem to be known by the name “lego” or to have any particular rights in such name nor does there seem to be any legitimate interest on the Respondent’s side for use of such name. The Respondent is an individual based in Switzerland with no clear connections with the term “lego”. On the contrary, the Respondent is indicated in the WhoIs record under the name “KOPLAI” as the registrant’s organization, which also does not have any clear connections with the name “lego”. As the Respondent has failed to provide its response and to explain any potential nature of its entitlement to use the LEGO trademark, the Panel can only confirm the lack of such entitlement based on all evidence presented.

Consequently, the Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, as it has used the same to illegitimately generate traffic to its website to which the disputed domain name resolved.

Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy stipulates that any of the following circumstances, inter alia, shall be considered as 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 who is 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 above list of examples of bad faith registration and use of domain names is not meant to be exhaustive and other circumstances indicating bad faith may be taken into account by panels (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Panel also notes that section 3.1 of the WIPO Overview 3.0 stipulates that bad faith is present when by using the domain name, the respondent 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 marks and obtain business interest on the basis of the complainant’s goodwill.

In the present case, it seems quite clear from all of the circumstances that the Respondent had the Complainant in mind when registering the disputed domain name and that the same was registered with the intention of being used for the creation of a false affiliation or connection with the Complainant. The LEGO trademark was duly registered long before the Respondent registered the disputed domain name on June 8, 2020. Likewise, the Panel notes that the Complainant is also the registrant of thousands of domain names comprising its registered trademark LEGO. Having in mind the well-known character of the LEGO trademark in many countries in the world, including Switzerland (where the Respondent is based), it seems rather unlikely that the Respondent did not have the Complainant in mind when registering the disputed domain name. In addition, the use of the Complainant’s LEGO trademark in combination with the word “block” which is connected with the Complainant’s LEGO products should be observed as a strong indicator of the Respondent’s targeting of the Complainant. The composition of the disputed domain name suggests to Internet users a connection of the disputed domain name with the LEGO trademark. As a matter of fact, the descriptive term “block” is clearly associated with the Complainant’s business, i.e. toys which allow customers to build predesigned structures using only small sized blocks.

Furthermore, the Respondent could have easily found the relevant information on the Internet about the Complainant and its LEGO trademarks through a simple web search or search of trademark registries (see section 3.2.2 of the WIPO Overview 3.0). The Complainant’s extensive use, widespread business and numerous trademark registrations worldwide makes it very unlikely that the Respondent has chosen to register a domain name consisting of the terms “lego” and “block” out of pure coincidence.

Having in mind the above, the Panel concludes that it seems quite unlikely that the Respondent was unaware of the Complainant’s LEGO trademark at the time of the registration of the disputed domain name and that the Respondent consequently registered the disputed domain name in bad faith.

It also seems that the Respondent has registered and used the disputed domain name primarily for the commercial purposes of selling or advertising Bitcoin ATM installation packages. By using the disputed domain name in such manner, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s LEGO trademarks.

The lack of response from the Respondent does not necessarily contribute to bad faith, but it also does not provide any additional ground for interpretation of the circumstances and facts known to the Panel. For that reason, the Panel finds that the Complainant has managed to establish a prima facie case that the Respondent has registered and used the disputed domain name in bad faith.

Therefore, the Panel concludes that the Respondent must have been aware of the Complainant’s trademark and had registered the disputed domain name in bad faith. The Panel also finds that the Respondent has acted with bad faith in using the disputed domain name.

Accordingly, the Panel holds 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 <blocklego.com> be transferred to the Complainant.

Petra Pecar
Sole Panelist
Date: November 5, 2020