WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Domain Administrator, See PrivacyGuardian.org / Shi Lei
Case No. D2018-0987
1. The Parties
1.1 The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
1.2 The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America / Shi Lei of Linping, Hangzhou, Zhejiang, China.
2. The Domain Names and Registrar
2.1 The disputed domain names <lego6th.com>, <lego60t.com> and <wwwlego60th.com> (the "Domain Names") are registered with NameSilo, LLC.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 4, 2018. At the time or shortly before the Complaint was filed, the publically available WhoIs data for the Domain Names recorded the registrant as the Registrar's "privacy service". On May 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 4, 2018, the Registrar transmitted by email to the Center its verification response disclosing the details of and contact information for the person recorded as the underlying registrant for the Domain Names. Unless the contrary is apparent from the context, references to the Respondent herein after in this decision are references to that underlying registrant. The Center sent an email communication to the Complainant on May 8, 2018 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 May 9, 2018.
3.2 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").
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 8, 2018.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on June 21, 2018. 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
4.1 The Complainant is very well-known. It is a company based in Denmark, which for many years has supplied what it calls "construction toys", but many others would describe as simply "Lego" or "Lego bricks", under the LEGO brand. Its products are sold in more than 130 countries and have been extensively advertised for decades.
4.2 The Complainant is the owner of a large number of trade marks that comprise or incorporate the term "Lego". They include:
(i) United States registered trade mark no. 1,018,875 filed on September 17, 1974 for the word mark LEGO in class 28; and
(ii) European trade mark no. 39800 filed on April 1, 1996 for the word mark LEGO in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, and 42.
4.3 The Complainant has what it describes as a "strict policy" that the Complainant should own all domain names it considers to take unfair advantage of the word "Lego". It is presently the owner of more than 5,000 domain names.
4.4 The Respondent would appear to be an individual located in China.
4.5 All of the Domain Names were registered on February 2, 2018. They have all since that date resolved to pay-per-click websites with links such as "LEGO", "Brick Set" and "LEGO toy".
4.6 A "cease and desist letter" or "letter before action", was sent to the contact details displayed for the Domain Names by the Complainant's legal representatives to the Respondent, registrant of the Domain Names on February 28, 2018. The Complainant received no response to that letter despite a number of chasing emails.
4.7 The Respondent has been a party to a number of proceedings under the Policy where the domain names in issue were ordered to be transferred to the complainant; in particular:
- Equifax Inc. v. Shi Lei,
WIPO Case No. D2017-1875;
- Heaven Hill Distilleries, Inc. v. Nexperian Holding Limited / Shi Lei, WIPO Case No. D2018-0002;
- Sanofi and Sanofi Biotechnology v. Domain Administrator, See PrivacyGuardian.org / Shi Lei, WIPO Case No. D2018-0204;
- Sanofi and Sanofi Biotechnology v. Domain Administrator, See PrivacyGuardian.org / Shi Lei, WIPO Case No. D2018-0205.
4.8 Pay-per-click websites continue to operate from the Domain Names as at the date of this decision.
5. Parties' Contentions
5.1 The Complainant refers to its business and marks and how the Domain Names have been used since registration. The Complainant contends that each the Domain Names combine its LEGO mark with suffixes that include the number "60" and which are claimed to be references to the 60th anniversary for LEGO on January 28, 2018. It claims that as a consequence each of the Domain Names is confusingly similar to trade marks in which the Complainant has rights.
5.2 The Complainant contends that none of the examples of rights or legitimate interests set out in the Policy applies in this case. It further contends that the use of the Domain Names to direct Internet users to pay-per-click pages of the sort displayed, does not involve a bona fide offering of goods or services.
5.3 The Complainant also contends that the timing of the registrations, which was shortly after the Complainant had advertised the 60th anniversary of the Lego business, and the use made of the Domain Names thereafter, makes it clear that the Domain Names were registered with knowledge of the Complainant's mark and with the intention to attract Internet users to pay-per-click pages for commercial gain. This is said to fall within the scope of the example of circumstances indicating bad faith registration and use set out in paragraph 4(b)(iv) of the Policy.
5.4 The Complainant refers to the past proceedings in which the Respondent involved. It also identifies a number of other domain names said to be registered by the Respondent. They include <hirebygoogle.com>, <facebookloca.xyz>, and <wwwfreefacebook.com>. This it claims demonstrates that the Complainant is a serial cybersquatter. Further, it contends that in this case where the use of a privacy service is also a factor that indicated bad faith.
5.5 The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent the Panel from determining the dispute based upon the Complaint, notwithstanding the failure of any Respondent to lodge a Response.
6.2 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall "draw such inferences therefrom as it considers appropriate".
A. Identical or Confusingly Similar
6.4 The Panel accepts that the only sensible reading of the Domain Name is as the terms "lego" in combination with the text "60th", "6th", or "60t" and in one case "www" in combination with the generic Top-Level Domain ("TLD") ".com". The use of "Lego" in each of the Domain Names is identical to the Complainant's mark and the additional text is clearly a reference to the Complainant's 60th anniversary (as to which see the Panel's comments on typosquatting later on in this decision). As a consequence each of the Domain Names is clearly confusingly similar to the Complainant's marks.
6.5 It follows that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy
B. Rights or Legitimate Interests
6.6 As is discussed in the context of bad faith, the Panel accepts that the text of each of the Domain Names was chosen by the Respondent so as to incorporate the Complainant's mark and in order to make a reference or allusion to the Complainant's 60th anniversary. This was done in order to take advantage of potential confusion between each of the Domain Names and the Complainant's mark so as to draw Internet users to pay-per-click websites.
6.7 There is no right or legitimate interest in holding a domain name for such a purpose and such conduct is prima facie evidence that no such right or legitimate interest exists (see section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
6.8 It follows that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy
C. Registered and Used in Bad Faith
6.9 The Panel has little hesitation in concluding that each of the Domain Names was registered in bad faith in order to take unfair advantage of the Complainant's LEGO mark. It also concludes that the Domain Name have been thereafter used in bad faith to draw Internet users to a pay-per-click website with a view to the Respondent's commercial advantage, or has been held with some other bad faith use in mind.
6.10 When the Domain Names are considered in combination together with the fact that they were all registered on the same day, it is clear that the Respondent intended to and is engaged in "typosquatting" seeking to take advantage of the Complainant's promotion of its 60th anniversary. This is for example particularly clear in the case of the Domain Name <wwwlego60th.com>, where it is obvious that the Respondent is trying to take advantage of persons who might inadvertently omit to add a "." between "www" and "lego60th.com" when entering this as a url into a browser
6.11 Typosquatting is of itself an indicator of bad faith (see section 3.2.1 of the WIPO Overview 3.0) and even had the Domain Names not been used it is likely that the Panel would have held that the Domain Names were being held with the intention of in some manner taking unfair advantage of the Complainant's mark. However, the Domain Names have been used in order to display of pay-per-click links. This is likely to have been for the Respondent's commercial advantage. However, even were this not the case, it is clear that the Domain Name and website is being used in a manner that intends to benefit the other websites to which the links are made. That is sufficient for the purposes of paragraph 4(b)(iv) of the Policy, which the Panel concludes applies in this case (see for example Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267 and also section 3.1.4 of the WIPO Overview 3.0).
6.12 The fact that the Respondent has been held in a significant number of cases to have registered and used other domain names in bad faith, also supports the Complainant's contention that this has occurred in this case. Further, and although not determinative, the Panel accepts that the Complainant is correct when it contends that the Respondent has used a privacy service with the intention of disguising his identity. This is therefore one of these cases where the use of such a privacy service is a further indicator of bad faith (see section 3.6 of the WIPO Overview 3.0).
6.13 It follows that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <lego6th.com> <lego60t.com>, and <wwwlego60th.com> be transferred to the Complainant.
Matthew S. Harris
Date: June 28, 2018