WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-2940

1. The Parties

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

Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Names and Registrar

The disputed domain names <firstlegoleage.org>, <firstlegoleauge.org> and <firstlegolegue.org> are registered with GoDaddy.com, LLC

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2019. On November 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 2, 2019, the Registrar transmitted by email to the Center its verification response, providing the name and contact details of the registrant of record. On December 3, 2019, the Center invited Complainant to amend the Complaint to reflect the registrant information received from the Registrar. On December 6, 2019, Complainant submitted an amended Complaint.

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 December 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 10, 2020.

The Center appointed Roberto Bianchi as the sole panelist in this matter on January 14, 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, based in Denmark, owns the LEGO trademark and other trademarks used in connection with the LEGO brands of construction toys and other products. Complainant has licensees authorized to exploit Complainant's intellectual property rights, including its trademark rights, in the United States and elsewhere. Complainant has subsidiaries and branches throughout the world. LEGO products are sold in more than 130 countries, including in the United States.

Complainant owns hundreds of registrations for the LEGO trademark in multiple jurisdictions, including the following:

United States: word mark LEGO, Registration Number 1018875, registration date August 26, 1975, filing date September 17, 1974, duly renewed (expiry date; September 23, 2024), covering toy building blocks and connecting links for the same, sold separately and as kits for construction of toy houses, buildings, household furnishing, robots, doll figures and vehicular toys, in International Class 28. First use in commerce: June 4, 1953; and

Panama: word mark LEGO, Registration Number 23428, registration date May 11, 1979, filing date October 31, 1978, duly renewed (expiry date June 11, 2029), covering toys, components and accessories of the same in International Class 28.

Complainant operates its own website under the domain name <lego.com>.

In 1998, the LEGO Group and the United States Foundation for Inspiration and Recognition of Science and Technology (“FIRST”) founded FIRST LEGO League, a robotics competition for elementary and middle school students, with online presence at the “www.firstlegoleague.org” website.

The disputed domain names were registered on September 11, 2019.

The website at the disputed domain name <firstlegoleage.org> displays a list of “related links”, some of them redirecting to websites offering LEGO toys. Another link redirects to a website dedicated to robotic carving. The website at the disputed domain name <firstlegolegue.org> contains similar links, and includes a redirection to the website of a robotics company apparently unrelated to Complainant. The website at the disputed domain name <firstlegoleauge.org> contains similar links, All three disputed domains names are for sale at the “www.sedo.com” website stating that the offer is USD 899, and that the seller is located in Cayman Islands and is active since 2005

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain names are confusingly similar to Complainant’s world famous trademark LEGO. The disputed domain names incorporate the term LEGO, registered by Complainant as trademarks and domain names in numerous countries, including in the United States.

The disputed domain names are a combination of Complainant’s LEGO trademark and the FIRST trademark, owned by FIRST, together with various misspellings of the term “league”. Complainant’s LEGO trademark is recognizable within the disputed domain names despite such additions and misspellings.

Respondent has no rights or legitimate interests in the disputed domain names. Nothing suggests that Respondent has been using the LEGO trademark in any way that could provide legitimate rights in the disputed domain names. Consequently, Respondent may not claim any rights established by common usage. No license or authorization of any kind has been given by Complainant to Respondent to use the trademark LEGO.

It is more than likely that Respondent was aware of Complainant’s legal rights in the name LEGO at the time of the disputed domain name registrations, and that it knew of Complainant’s domain name <firstlegoleague.org>, since the three disputed domain names are a blatant typo of it. Obviously, the worldwide fame of the LEGO trademark has motivated Respondent to register the disputed domain names.

Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Instead, Respondent has intentionally chosen domain names based on registered trademarks in order to generate traffic and income through websites with sponsored links. In so doing, Respondent is using the LEGO trademark to mislead Internet users to commercial websites. For instance, the websites to which the disputed domain names resolve feature multiple third party links that directly compete with Complainant’s business. Respondent’s websites at the disputed domain names also feature links that directly reference Complainant and its business, namely referring to links such as “LEGO Instructions”, “LEGO Sets”, LEGO Brick” and “FIRST LEGO League”. Presumably, Respondent receives pay-per-click fees from the linked websites listed on the disputed domain names’ websites. As such, Respondent is not using the disputed domain names to provide a bona fide offering of goods or services as allowed under Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy, paragraph 4(c)(iii).

Furthermore, the disputed domain names are being offered for sale for an amount that far exceeds Respondent’s out-of-pocket expenses in registering the disputed domain names. This is further evidence of Respondent’s lack of rights and legitimate interests. No evidence has been found that Respondent uses the name LEGO as a company name or has any other legal rights in the name. It is clear that Respondent is trying to benefit from Complainant’s world famous trademark by seeking to create an impression of association with Complainant.

The disputed domain names were registered and are being used in bad faith. LEGO is a famous trademark worldwide. Although there is no connection between Respondent and Complainant, Respondent has registered at least three domain names reflecting said trademark. It is clear that Respondent was aware of the rights Complainant has in the LEGO trademark and the value of said trademark, at the time of the registrations. The disputed domain names are connected to websites that include sponsored links. In addition, Respondent is currently offering to sell the disputed domain names, which constitutes bad faith under paragraph 4(b)(i) of the Policy because Respondent has demonstrated an intent to sell, rent, or otherwise transfer the disputed domain names for valuable consideration in excess of its out-of-pocket expenses.

The disputed domain names can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain names. Thus, the disputed domain names must be considered as having been registered and used in bad faith pursuant to Policy paragraph 4(b)(iv), with no good faith use possible.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has shown that it owns numerous registrations for the LEGO trademark. See section 4 above. Therefore, the Panel is satisfied that Complainant has rights in this mark for purposes of Policy paragraph 4(a)(i).

The Panel notes that in the disputed domain names the LEGO trademark, incorporated in its entirety, is a relevant element, to which the common, descriptive or dictionary term “first” is added as a prefix, while misspellings or typos of the equally common term “league” are added as suffixes. In the view of the Panel, these additions do not prevent a finding of confusing similarity between the disputed domain names and the LEGO trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.8 (“Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark? 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 Panel finds that the disputed domain names are confusingly similar to Complainant`s mark LEGO.

B. Rights or Legitimate Interests

The Panel notes that the registrant of record of the disputed domain names is “Carolina Rodrigues, Fundacion Comercio Electronico”. Since there is no evidence that this person or entity is known by any of the disputed domain names, the Panel agrees with Complainant that Policy paragraph 4(c)(ii) does not apply.

Complainant also contends that Respondent has intentionally chosen the disputed domain names based on Complainant’s registered trademarks, in order to generate traffic and income through websites with sponsored links, and to mislead Internet users to commercial websites, including third party links that directly compete with Complainant’s business. The disputed domain names, being obvious typos of “FIRST LEGO League”, are clearly redirecting traffic to commercial websites unrelated to Complainant, presumably generating click-through income, and creating – for commercial gain – confusion among Internet users looking for Complainant’s joint initiative with FIRST. The Panel again agrees with Complainant that this is neither a bona fide offering of goods or services under Policy, paragraph 4(c)(i) nor a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii). Thus, Complainant succeeded in rising a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names.

Since Respondent failed to present the Panel with any evidence whatsoever for its reasons for registering and using the disputed domain names as shown, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Complainant has shown that it had registered the LEGO mark decades before the registration of the disputed domain names, including in Panama, the country indicated by Respondent for its postal address when it registered the disputed domain names. See section 4 above.

The Panel agrees with previous UDRP panels that the LEGO mark is worldwide well known or famous. See e.g., LEGO Juris A/S v. Domains by Proxy, Inc. and Jiahong Zhu, WIPO Case No. D2011-1901 (“The Panel finds that LEGO is a well-known trademark worldwide and that thus the Respondents must have known of the Complainant’s legal rights in the name LEGO at the time of the registration. The fame of the trademark no doubt motivated the Respondents to register the Domain Name.”). See also, LEGO Juris A/S v. pcmaniabg, Paisiy Aleksandrov, WIPO Case No. D2010-1965 (“Prior decisions have held that the LEGO mark is well-known, including LEGO Juris A/S v. Reginald Hastings Jr., WIPO Case No. D2009-0680 (“The LEGO mark is well-known worldwide”), LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692 (“The Panel finds that the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive”).

The Panel also notes that the disputed domain names are obvious typos of “FIRST LEGO League”, the name for the initiative of “FIRST” and Complainant promoting robotics in the school. It is evident that Respondent knew of, and targeted Complainant and its LEGO mark at the time of registering the disputed domain names. In the circumstances of this case, the registration of the disputed domain names was clearly in bad faith.

The Panel further notes that the disputed domain names are being used to divert Internet users presumably looking for the FIRST LEGO League to commercial websites unrelated to, and eventually competing with Complainant. By using the disputed domain names as shown, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online locations, by creating a likelihood of confusion with Complainant’s LEGO marks as to the source, sponsorship, affiliation, or endorsement of its websites or locations or of products or services on its websites or locations. Pursuant to Policy paragraph 4(b)(iv), this is a circumstance of registration and use in bad faith of the disputed domain names. Moreover, Respondent has been offering the disputed domain names for sale for an amount by far exceeding the registration costs, which is evidence of registration and use in bad faith under Policy paragraph 4(b)(i).

Lastly, the courier entrusted with delivering the notification of the Complaint reported to the Center that it could not deliver the package to Respondent because of “bad address”. Because Respondent in all likelihood provided false or incomplete address details to the Registrar, in violation of its duties as a registrant under the registration agreement, this is additional evidence of Respondent’s bad faith.

The Panel concludes that the disputed domain names were registered and are being used in bad faith.

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 names <firstlegoleage.org>, <firstlegoleauge.org>, and <firstlegolegue.org> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: January 27, 2020