WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Stuart Jantze

Case No. D2021-0789

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 / Stuart Jantze, United States of America (“United States”).

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2021. On March 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2021, 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 March 19, 2021 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 March 24, 2021.

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 March 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2021.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on April 27, 2021. 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 in this proceeding, LEGO Juris A/S of Denmark, is the owner of the world-renowned LEGO trademark used in connection with the famous LEGO construction toys and other LEGO-branded products.

The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Panama and the United States.

The Complainant owns the LEGO mark, which enjoys thorough protection through many registrations thereof worldwide, United States included.

The LEGO trademark is well known around the world.

The Complainant is, inter alia, the owner of United States trademark registration number 1018875 for the LEGO mark, granted in August 26, 1975.

Moreover, the Complainant is also the owner of thousands of domain name registrations corresponding to and/or containing the LEGO mark.

The disputed domain name was registered on September 16, 2020.

The disputed domain name is currently not reachable, whereas at the time the Complaint was filed it resolved (at least until March 29, 2021) to a largely blank website that reads, in part, “Store Unavailable. The store is currently unavailable due to maintenance. It should be available again shortly.”
However, previously it used to resolve to a website selling LEGO-branded products.

The Complainant’s trademark registrations predate the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the dominant part of the disputed domain name comprises the term “lego”, identical to the registered trademark LEGO, and that the addition of the term “shops” does not have any impact on the overall impression of the dominant part of the name, “lego”, recognizable as a world-famous trademark. The Complainant thus concludes that the disputed domain name is confusingly similar to the LEGO trademark. To this end, the Complainant quotes several UDRP decisions in which it is established that confusing similarity is generally recognized when well-known trademarks are paired with different kinds of prefixes and suffixes.

The Complainant further states that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name. In fact, the Complainant claims that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, and that it has not found anything else that would suggest that the Respondent has been using the term “lego” in any other way that would give it any legitimate rights in the name. No license, or authorization of any other kind, has been given by the Complainant to the Respondent to use the LEGO trademark.

Moreover, the Complainant asserts that LEGO is a world-famous trademark, and consequently the Respondent was aware of the rights the Complainant has in the LEGO trademark, and of the value of said trademark, at the time of the registration.

The Complainant then claims that the Respondent was using the Complainant’s trademark to mislead Internet users to go to its own commercial website, where LEGO branded products were sold.

The Complainant thus concludes that the Respondent was trying to benefit from the Complainant’s world-famous trademark, and that the disputed domain name has been registered and is being used in bad faith.

The Complainant also claimed that the Respondent never replied to the Complainant’s cease and desist letter and following reminders.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to 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; 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.

A. Identical or Confusingly Similar

The Complainant has established rights in the LEGO trademark.

The disputed domain name contains the Complainant’s LEGO with the addition of the term “shops” and the generic Top-Level Domain (“gTLD”) “.store”.

The addition in the disputed domain name of the term “shops” is obviously not sufficient to prevent confusing similarity with the renowned LEGO trademark.

Pursuant to section 1.8 of the Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which states: “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 nature of such additional term(s) may however bear on assessment of the second and third elements.”

Therefore, the Panel finds the disputed domain name to be confusingly similar to the LEGO trademark in which the Complainant has rights.

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

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name.

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

C. Registered and Used in Bad Faith

Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the LEGO mark when it registered the disputed domain name.

In fact, the Complainant’s LEGO trademark is a fanciful name with no meaning aside from referring to the Complainant’s goods. It has been registered and used for many decades and is a renowned trademark worldwide, especially in the toy sector, where the Respondent appears to be active.

In addition, the Respondent’s knowledge of the LEGO mark is particularly obvious, given that the Respondent was using the Complainant’s trademark to mislead Internet users to go to its own commercial website where LEGO-branded products were sold. Hence, the registration of the disputed domain name does not seem to be a coincidence, and thus indicates that the Respondent knew of the Complainant’s marks and intentionally intended to create an association with the Complainant and its business at the time of the registration of the disputed domain name.

In addition, the Respondent’s use of the disputed domain name to resolve to a website where LEGO branded products were sold constitutes an inference of bad faith use as well as a disruption of the Complainant’s business under the Policy. The fact that the website is no longer reachable via the disputed domain name does not prevent a finding of bad faith in the present circumstances (see section 3.3 of the WIPO Overview 3.0).

Inference of bad faith can also be found in the failure to respond to the cease and desist letter sent by the representative of the Complainant.

Another factor supporting the conclusion of bad faith registration and use of the disputed domain name is given by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service. While the use of a privacy or proxy registration service is not in and of itself an indication of bad faith, it is the Panel’s opinion that in the present case the use of a privacy shield, combined with the elements discussed here, amounts to a further inference of bad faith registration and use.

Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.

Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <shopslego.store> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: May 3, 2021