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WIPO Arbitration and Mediation Center


LEGO Juris A/S v. Whoisguard Protected, Whoisguard, Inc. / Giovanni Bonny

Case No. D2017-0143

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 City, Panama / Giovanni Bonny of Limburg, Belgium, self-represented.

2. The Domain Name and Registrar

The disputed domain name <chineselego.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2017. On January 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 26, 2017, 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 January 27, 2017, 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 January 30, 2017.

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 February 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2017. In accordance with paragraph 5(b) of the Rules, the due date for Response was extended until February 26, 2017. The Response was filed with the Center on February 26, 2017.

The Center appointed Peter Wild as the sole panelist in this matter on March 2, 2017. 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 a large number of trademarks for LEGO in various classes, including class 28., e.g., European Union trade mark no. 39800, registered on October 5, 1998. The Complainant is active and well known in the market for toys and uses the domain name <lego.com> as its main Internet address. In addition, the Complainant owns a large number of similar domain names and is one of the best known toy producers in the world with the brand LEGO.

The disputed domain name was registered on August 21, 2016 using a privacy shield. The disputed domain name is currently inactive; however, the Complainant submitted evidence that prior to the filing of the Complaint it resolved to a website appearing to offer Chinese copies and counterfeits of the Complainant’s products for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is the owner of a number of trademarks consisting of or containing the main element LEGO for a range of goods, including toys in class 28. The Complainant has been selling toys for a long time and is one of the bestselling toy companies worldwide. The Complainant also claims that, in connection with toys, it is omnipresent on the Internet, with its main website at “www.lego.com” and that the domain name <chineselego.com> is confusingly similar to the above mentioned famous LEGO trademarks. The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and used in bad faith.

B. Respondent

The Respondent replied that in the disputed domain name, the trademark LEGO is used as a “genericization” for interlocking plastic toy bricks. The Respondent acknowledges that the LEGO brand is very well known around the world. He furthermore claims that the website to which the disputed domain name points looks very different from the Complainant’s website and that it is clearly indicated that there is no connection to the trademark LEGO and that, consequently, there is no confusion possible for the general public.

The Respondent also denies that the website is automatically generated and claims it was generated out of interest, not to generate revenue and consequently, the disputed domain name is not used in bad faith.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns registered rights in the trademark LEGO. This trademark is fully integrated in the disputed domain name. It stands prominently after the geographical term “Chinese” in the disputed domain name. The geographical term “Chinese” is self-explanatory and refers to Chinese origin or marketplace. Such an addition does not alter the overall similarity and therefore, the Panel is satisfied that the first element of the Policy is met.

B. Rights or Legitimate Interests

The Complainant must establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the Respondent to demonstrate rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

The Respondent is not known under the disputed domain name and claims no connection with or authorization from the Complainant. It is clear that the toys offered for sale through the links on the website under the disputed domain name are toys which imitate, copy, or counterfeit the Complainant’s well known trademark and toys. As such, they are competing goods. The Respondent even explicitly mentions this fact and claims the website is used out of personal interest and to provide information. The Respondent claims that this shows its legitimate interest in the disputed domain name and that it he uses the disputed domain name in a generic way. This is no acceptable defense, as the term “LEGO” is clearly protected as a trademark and must not be used by third parties without the owner’s (the Complainant’s) consent. In addition, the links, which are provided on the website at the disputed domain name, are active and allow consumers to click through to commercial websites.

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 a registered trademark in order to generate traffic and income through commercial links. Such behavior does not establish rights or legitimate interests.

The Panel does not find the Respondent’s submission that LEGO has somehow become “genericized” to be convincing, nor does it accept that the Respondent’s statement on the website (that the products referred to are not genuine products of the Complainant) could give rise to rights or legitimate interests on the part of the Respondent. In the absence of any further explanation by the Respondent, the Complainant’s establishment of the prima facie case is therefore sufficient.

With the evidence on file, this Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The disputed domain name is currently inactive. However, the Complainant submitted evidence (Annex 11 to the Complaint) that prior to the filing of the Complaint it directed Internet users to a website on which various links to infringing or counterfeited toys were listed. On the website at the disputed domain name, pictures of toy products and imitations of the Complainant’s logo could be found. The Respondent explicitly acknowledges that the LEGO brand is well-known and that he knew the Complainant’s trademark when he selected the disputed domain name. The Respondent also claims that he wanted to allow easy access to Chinese “bootleg” versions of the Complainant’s original toys. Registering a domain name with a famous trademark to draw Internet users to unauthorized copies and counterfeits of products which are sold under that famous trademark is a clear case of bad faith registration. In this Panel’s view this establishes bad faith registration of the disputed domain name as there was neither authorization nor consent from the Complainant to register the disputed domain name.

The Respondent claims that, on the website, he clearly states that there is no connection with the Complainant and, therefore, the use of the disputed domain name cannot be in bad faith. The Panel rejects this view. Using a domain name which refers to the Complainant’s well-known products but links to counterfeit products will attract Internet users who are interested in the Complainant’s products. The use of the Complainant’s trademark in the disputed domain name and the commercial links on the website to which the disputed domain name resolves must therefore be seen as the Respondent’s intentional attempt to attract, for commercial gain, Internet users to its website, 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 the Respondent’s website or location (paragraph 4(b)(iv) of the Policy). This establishes bad faith use of the disputed domain name.

This Panel therefore comes to the conclusion that the third element of the Policy is met.

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 <chineselego.com> be transferred to the Complainant.

Peter Wild
Sole Panelist
Date: March 15, 2017