WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Md Opu Ahmed
Case No. D2019-0238
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 / Md Opu Ahmed of Rangpur, Bangladesh.
2. The Domain Name and Registrar
The disputed domain name <legomovie-2.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2019. On January 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2019, 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 February 5, 2019, 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 February 8, 2019.
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 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2019.
The Center appointed Alfred Meijboom as the sole panelist in this matter on March 20, 2019. 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 is the owner of the word mark LEGO for mainly construction toys in class 28, registered in the European Union with registration number 39800 since October 5, 1998 and the United States of America (“United States”) with registration number 1,018,875 since August 26, 1975, as well many other countries worldwide (the “LEGO mark”). In addition, LEGO System A/S, which the Panel believes to be affiliated with the Complainant, owns LEGO mark in Bangladesh with registration number 14951 for goods in class 28 since December 13, 1987. Presently, the Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. A computer-animated adventure comedy film featuring the Complainant’s construction toy characters under the name “The LEGO Movie” was released in 2014, and a direct sequel named “The LEGO Movie 2: The Second Part” or “The LEGO Movie 2” (the “LEGO Movie”) was released in the United States on February 8, 2019.
The disputed domain name was registered on October 11, 2018. The disputed domain name resolves to a website which displays the trailer of the LEGO Movie, and offers the possibility to watch and download the full LEGO Movie.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to the LEGO mark. The suffix “movie”, a hyphen and the suffix “2” do not detract from the overall impression.
The Complainant further claims that the Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name. Neither has the Complainant found anything that would suggest that the Respondent has been using “Lego” in any other way that would give it legitimate rights in the disputed domain name. No license or authorization of any other kind has been given by the Complainant to the Respondent to use the LEGO mark, and the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. The Respondent is also not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Complainant asserts that the Respondent has intentionally chosen the disputed domain name based on the Complainant’s registered trademark in order to generate traffic and income through a commercial website offering an unauthorized copy of the Complainant’s LEGO movie.
As the LEGO mark is famous, the Complainant considers it quite obvious that it is such fame of the LEGO mark that has motivated the Respondent to register the disputed domain name and that the Respondent cannot claim to have been using the LEGO mark without being aware of the Complainant’s rights to the LEGO mark, so that the registration of the disputed domain name was made in bad faith. According to the Complainant, in addition to the disputed domain name, the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses, which demonstrates that the Respondent is engaging in a pattern of cybersquatting or typosquatting, which is evidence of bad faith registration and use of the disputed domain name. Also the failure of the Respondent to reply to the Complainant’s cease and desist letter, or a similar attempt at contact, should be considered relevant in a finding of bad faith. The disputed domain name is connected to a commercial website offering an unauthorized copy of the LEGO Movie, without any permission from the Complainant, without disclaimer being displayed on the website. The Complainant finds it quite clear that the Respondent has chosen a world famous trademark to attract visitors to its website. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the LEGO mark as to the source, sponsorship, affiliation or endorsement of its website. The Complainant concludes that the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Respondent did not file a Response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favor of the complainant. The complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the panel may draw appropriate inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove 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
It is well established that the generic Top Level Domain “.com” should be disregarded in the assessment under paragraph 4(a)(i) of the Policy.
The Panel finds that the disputed domain name is confusingly similar to the LEGO mark. The Respondent has taken the LEGO mark in its entirety, and added the word “movie” followed by a hyphen and the number 2 to the LEGO mark. The Panel finds these additions to the LEGO mark in the disputed domain name do not avoid confusing similarity with the Complainant’s LEGO mark (e.g., Philip Morris USA Inc. v. Janet C Lundy, WIPO Case No. D2018-1249).
Consequently, the first element of paragraph 4(a) of the Policy has been met.
B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant stated that it has not authorized the Respondent to use the LEGO mark as part of the disputed domain name and that the Respondent is not commonly known by the disputed domain name, which the Respondent has not denied. As the disputed domain name resolves to a website that shows the trailer and provides the Internet user the possibility to download or watch the full LEGO Movie without the Complainant’s permission, there is no evidence that the Respondent has any legitimate interests in the disputed domain name, in connection with a bona fide offering of goods or services for commercial gain or otherwise.
The Panel finds that the Complainant has made an unrebutted prima facie case. As a result, the Panel finds the Respondent has no rights or legitimate interests in the disputed domain name, and the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.
In the Panel’s view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the LEGO mark in mind as it had already been registered and used for many years worldwide, and should be considered famous (e.g., LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715). This is further supported by the fact that the disputed domain name resolves to a website which, in the Panel’s mind, mimics the Complainant’s website or at least let Internet visitors believe that the website originates from the Complainant or its affiliates, and offers to watch the trailer and full version of the LEGO Movie without any disclaimer being made. The Respondent’s use of the LEGO mark and the lack of a disclaimer likely confuse Internet users into believing that a relationship exists between the Complainant and the Respondent, or even that the website under the disputed domain name is the Complainant’s website. Under these circumstances the Panel is satisfied that the Respondent registered the disputed domain name in bad faith and that the use which the Respondent made of the disputed domain name to attract Internet users constitutes use of the disputed domain name in bad faith.
Consequently, the third and last element of paragraph 4(a) of the Policy is also met.
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 <legomovie-2.com> be transferred to the Complainant.
Date: March 25, 2019