About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Michael Schutt

Case No. D2016-1082

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Michael Schutt of Shokeda, Israel.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2016. On June 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2016, 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 June 2, 2016 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 June 2, 2016.

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 June 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2016.

The Center appointed Evan D. Brown as the sole panelist in this matter on July 6, 2016. 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 owns the famous LEGO trademark (the “Mark”) which it has registered in many countries, including Israel (Registration Number 18.759 issued in 1961), the home country of the Respondent. The Complainant has used the mark for many years on its well-known construction toys and other LEGO branded products. According to the WhoIs records, the disputed domain name <legoshop.xyz.com> was registered on September 3, 2015. The Respondent used the disputed domain name to display links to Amazon.com, offering various types of products from a wide range of different brands as well as to the Complainant’s products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely 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 provided evidence of its registrations of the Mark in many countries, including registrations which predate the registration of the disputed domain name. On the basis of these registrations, as well as the widespread fame of the Mark, the Panel is satisfied that the Complainant has rights in the Mark.

The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s mark. “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark”. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant’s trademark LEGO in its entirety. The addition of the suffix “shop” does nothing to diminish this confusing similarity. In this case, the suffix “shop” does not detract from the overall impression. Instead, considering that the Complainant runs its own “LEGO Shop”, the addition of said suffix may contribute to the confusion.

Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. See Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2014-0948, citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 (after the complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).

Paragraph 4(c) of the Policy instructs respondents on a number of ways a respondent could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

In this the Complainant asserts, among other things, that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the Mark. The Panel further finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen a domain name based on the Mark in order to generate traffic and income through a website offering links to Amazon.com for the purchase of the Complainant’s goods as well as other branded goods.

The Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent’s favor.

Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name, and the Complainant has prevailed on this element of the UDRP.

Because the Panel is satisfied, based on the above facts, that the Complainant has met its burden under this second element of the UDRP, it is not necessary to address the Complainant’s additional argument that the Respondent’s registration of the disputed domain name fails to meet the test under the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

C. Registered and Used in Bad Faith

The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location.”

In this case, it is clear that the purpose of registering the disputed domain name was primarily to rely on the value of the Mark in order to attract Internet users to the Respondent’s website and to generate revenue. The Respondent was clearly aware of the Mark as evidenced by the use, and its use of the Mark in the disputed domain name was likely to cause confusion with the Complainant’s Mark as to the sponsorship, affiliation, or endorsement of the Respondent’s website.

The Complainant has prevailed on this third element of the UDRP.

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 <legoshop.xyz> be transferred to the Complainant.

Evan D. Brown
Sole Panelist
Date: July 20, 2016

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/