WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Name Redacted / Sagar Sunar, legokorea.llc / Marco AntonioServin lugo, Legomexico llc / Wenben Zhou

Case No. D2018-1968

1. The Parties

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

The Respondents are Name Redacted¹ / Sagar Sunar, legokorea.llc of Gumi, Republic of Korea / Marco AntonioServin lugo, Legomexico llc of Queretaro, Mexico / Wenben Zhou of Anhui, China.

2. The Domain Names and Registrar

The disputed domain names <legobrazil.com>, <legoca.com>, <legoengland.com>, <legoeu.com>, <legomexico.com>, <legosouthkorea.com>, <legothailand.com> and <legovipclub.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2018. On August 30 and 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On August 30 and 31, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details for the <legobrazil.com>, <legomexico.com>, <legosouthkorea.com> and <legothailand.com> Disputed Domain Names and disclosing the registrant and contact information for the <legoca.com>, <legoengland.com>, <legoeu.com> and <legovipclub.com> Disputed Domain Names. The Center sent an email communication to the Complainant on September 3, 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 September 4, 2018.

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 September 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2018.

The Center notified the Parties of the commencement of the panel appointment process on September 26, 2018.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 3, 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

The Complainant LEGO Juris A/S is based in Denmark. It is the owner of the LEGO and all other trademarks used in connection with construction toys and other LEGO branded products. The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the European Union, Brazil, Republic of Korea, Mexico and China. The LEGO group has expanded its use of the LEGO trademark to computer hardware and software, books, videos and computer controlled robotic construction sets.

The Complainant owns numerous registrations worldwide for the trademark LEGO, the earliest registration dating from the year 1954 (Danish Registration No. VR 1954 00604, registered on May 1, 1954).

Furthermore, the Complainant is the owner of over 5,000 domain names containing the term LEGO and LEGOLAND.

The Respondent registered the following Disputed Domain Names:

- <legoeu.com>, registered on August 3, 2018,

- <legobrazil.com>, registered on August 4, 2018,

- <legosouthkorea.com>, registered on August 6, 2018,

- <legomexico.com>, registered on August 2, 2018,

- <legoengland.com>, registered on August 29, 2018,

- <legoca.com>, registered on August 29, 2018,

- <legothailand.com>, registered on August 22, 2018 and

- <legovipclub.com>, registered on August 27, 2018.

The Disputed Domain Names are currently inactive. However, the Complainant provided evidence that the Disputed Domain Names resolved to a website that features the Complainant’s LEGO toys products and offers toy products for sale, except for the Disputed Domain Name <legobrazil.com> which resolved to a website which offered women’s clothing.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

Identical or confusingly similar

The Complainant alleges that the dominant part of all the Disputed Domain Names comprises the term LEGO, which is identical to the registered trademark LEGO, registered by the Complainant as trademarks and domain names in numerous jurisdictions all over the world, including the European Union, Brazil, Republic of Korea, Mexico and China.

The fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions (See LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692, LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715)

Furthermore, the addition of the geographically descriptive terms “eu” (for European Union), “brazil”, “southkorea”, “mexico”, “thailand” and the suffix “vipclub” will not have any impact on the overall impression of the dominant part of the Disputed Domain Names, LEGO. Thus, these additions do not serve to distinguish the Disputed Domain Names from the trademark.

The addition of the Top-Level Domain (TLD) “.com” is irrelevant to determine the confusingly similarity between the trademarks and the Disputed Domain Names.

Internet users will perceive the Respondent’s Disputed Domain Names either as domain names owned by the Complainant, or where there is some kind of commercial relationship with the Complainant.

Rights or legitimate interests

The Complainant submits that the Respondent has no registered trademarks or trade names corresponding to the Disputed Domain Names and that it has not licensed or otherwise authorized the Respondent to use the trademark LEGO.

It is unlikely that the Respondent would not have known of the Complainant’s legal rights in the name LEGO at the time of the registration. There is no evidence to show that the Respondent is commonly known by the Disputed Domain Names.

Moreover, the Respondent is not using the Disputed Domain Names for a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen several domain names based on a registered trademark in order to generate traffic and income through an unauthorized website offering the Complainant’s products.

Registration and use in bad faith

According to the Complainant, the trademark LEGO is well-known and with a substantial and widespread reputation throughout the world.

The Respondent’s use of the Disputed Domain Names <legoeu.com>, <legosouthkorea.com>, <legomexico.com>, <legothailand.com>, <legoengland.com>, <legoca.com> and <legovipclub.com> constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under the Policy 4(b)(iii) since these Disputed Domain Names are confusingly similar to the Complainant’s trademark and the websites at the Disputed Domain names offer the Complainant’s goods for sale without the Complainant’s authorization.

With respect to the Disputed Domain Name <legobrazil.com>, the Respondent should also be considered to have known of the existence of the Complainant’s trademark when registering the Disputed Domain Name.

The Complainant addressed the Respondent with cease and desist letters regarding the Disputed Domain Names, however, the Respondent never replied.

The Complainant and its trademark LEGO enjoy a worldwide reputation, including in the European Union, Brazil, Republic of Korea, Mexico and China. Consequently, the Respondent cannot have been unaware of the Complainant’s prior rights. Furthermore, there is no connection between the Respondent and the Complainant.

B. Respondent

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

However, the Center received email communications from three of the persons named as the Respondents. They explained that in August 2018, they were victims of a fraud when they bought a Lego set through an advertisement via Facebook.

6.1. Preliminary Matter: Consolidation of Respondents

Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes.

Section 4.11.2, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), provides that “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s)”.

The Complainant submitted a request for the consolidation of proceedings against multiple respondents.

In the instant case, the evidence shows that:

- The registrant’s email address for the Disputed Domain Names <legoeu.com>, <legovipclub.com>, <legoengland.com>, <legoca.com>, <legobrazil.com>, <legosouthkorea.com> and <legomexico.com> are identical.

- The name servers of the Disputed Domain Names <legoeu.com>, <legobrazil.com>, <legosouthkorea.com>, <legothailand.com>, <legoengland.com>, <legoca.com> and <legovipclub.com> are also identical.

- All the Disputed Domain Names were registered in August 2018, with only a few days apart from each other.

- The websites found at the Disputed Domain Names <legoeu.com>, <legosouthkorea.com>, <legomexico.com>, <legothailand.com>, <legoengland.com>, <legoca.com> and <legovipclub.com> are nearly identical in regard to the content and look, where the Respondent sells LEGO products without license or authority.

- As for the Disputed Domain Name <legobrazil.com>, a perusal of its shipping and returns, privacy notice and payment pages are identical to the other seven Disputed Domain Names.

Taken all this information into consideration, the Panel finds that the Disputed Domain Names are subject to common control of the Respondent.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Names at issue in this case:

(i) the Disputed Domain Names are 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 Names; and

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Disputed Domain Names are confusingly similar to the Complaint’s trademark LEGO. The Disputed Domain Names wholly incorporate the Complainant’s trademark as its only distinctive element.

The Disputed Domain Names contains the Complainant’s LEGO trademark in its entirety with the addition of the geographically descriptive terms “eu”, “brazil”, “england”, “southkorea”, “mexico”, “thailand”, “ca” (for Canada) and the suffix “vipclub”.

The Panel has no difficulty in finding that the Disputed Domain Names are confusingly similar to the trademark LEGO, as the addition of the descriptive terms does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0.

Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Names:

(i) Before any notice to you of the dispute, your use of, 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 at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the trademark in the Disputed Domain Names. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Names for several decades.

The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Names. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contention.

The Respondent is using the Disputed Domain Names without authorization of the Complainant in order to offer LEGO products or other products not related to the LEGO trademark. Furthermore, there is no disclaimer on the websites disclosing the relationship between the Complainant and the Respondent.

As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.

The Disputed Domain Names were all registered during the month of August 2018, while the Complainant’s company was founded in the year 1932. Consequently, the Respondent knew or should have known about the existence of the LEGO trademark at the time of registration of the Disputed Domain Names.

The Disputed Domain Names resolved to unauthorized commercial websites offering LEGO products, therefore the Respondent cannot claim not to have knowledge of the legal rights in the name LEGO at the time of registration. Thus, the Panel concludes the Respondent has registered the Disputed Domain Names in bad faith.

The Panel also finds that the Respondent has used the Disputed Domain Names in bad faith. The Respondent operated its websites, offering LEGO products without the authorization of the Complainant. As for the Disputed Domain Name <legobrazil.com> it was used to sell women’s clothes, taking advantage of LEGO’s well-known trademark. This conduct qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondent’s use of the domain name attempts to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Thus, the Panel concludes the Respondent also has used the Disputed Domain Names in bad faith.

Finally, the Panel finds that the unrebutted claims of identity theft also support a finding of bad faith under paragraph 4(a)(iii) of the Policy.

Accordingly, the Panel finds that the Complainant has established the third element under paragraph 4(a) of the Policy.

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 <legobrazil.com>, <legoca.com>, <legoengland.com>, <legoeu.com>, <legomexico.com>, <legosouthkorea.com>, <legothailand.com> and <legovipclub.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: October 25, 2018

¹ The Center received email communications from three of the named registrants alleging identity theft and requesting their names to be redacted. Attached as Annex 1 to this Decision is the Panel’s instruction to the Registrar regarding the transfer of the disputed domain names including the three Respondents whose names have been redacted. The Panel has authorized to transmit Annex 1 to the Registrar as part of the order in this proceeding, but has indicated that Annex 1 to his Decision shall not be published due to the circumstances of the case.