WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Steven Ridzyowski, Anywhere LLC

Case No. D2019-0268

1. The Parties

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

The Respondent is Steven Ridzyowski, Anywhere LLC, of Monroe Township, New Jersey, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <discountedlegos.com>, <legoemporium.com>, <legooverstock.com>, <legosupplyco.com>, <overstocklegos.com>, and <ultimatelegosets.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2019. On February 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 6, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received email communications from the Respondent on February 7, 11, and 12, 2019. The Complainant filed an amended Complaint on February 12, 2019.

On February 13, 2019, the Center received a request for the suspension of the proceedings from the Complainant. On the same date, the Center suspended the administrative proceeding until March 30,
2019, for purposes of settlement discussions concerning the disputed domain names. The Complainant requested the reinstitution of the proceedings on February 26, 2019, and filed an additional amended Complaint. On the same date, the Center reinstituted the proceedings.

The Center verified that the Complaint, together with the amended Complaints, 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 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2019. The Center received additional email communications from the Respondent on March 1 and 2, 2019. On March 5, 2019, the Center received a request from the Complainant to suspend the proceedings, and suspended the proceedings until April 4, 2019. On April 3, 2019, the Complainant requested the reinstitution of the proceedings. The proceedings were reinstituted as of April 4, 2019, and the Response due date was extended to April 19, 2019. The Center informed the Parties of the commencement of the panel appointment process on April 23, 2019.

The Center appointed Assen Alexiev as the sole panelist in this matter on April 30, 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 based in Denmark and is the owner of the LEGO brand of construction toys and other LEGO branded products. It has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States. The LEGO Group also uses the LEGO trademark for computer hardware and software, books, videos, and computer controlled robotic construction sets.

The Complainant is the owner of the following trademark registrations for LEGO (the “LEGO trademark”):

- the trademark LEGO with registration No.1018875, registered in the United States on August 26, 1975 for goods in International Class 28;
- the trademark LEGO with registration No.1248936, registered in the United States on August 23, 1983 for goods in International Classes 16, 20, 22 and 25; and
- the trademark LEGO with registration No.1535046, registered in the United States on April 18, 1989 for goods in International Class 9.

The official website of the Complainant is located at the domain name <lego.com>.

The disputed domain names <discountedlegos.com>, <legooverstock.com>, <legosupplyco.com>, <overstocklegos.com> and <ultimatelegosets.com> were registered on November 19, 2018. The disputed domain name <legoemporium.com> was registered on November 26, 2018. The disputed domain names currently do not resolve to an active website, however, at the time of filing of the Complaint the disputed domain names resolved to websites featuring pay-per-click links.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the LEGO trademark has a substantial inherent and acquired distinctiveness, and the awareness of it is considered to be significant in the whole community. In the Superbrands UK ranking for 2018, the brand LEGO was the winner in the category “Child Products – Toys and Education” and the brand LEGOLAND was the winner in the category “Leisure & Entertainment – Destinations”. In 2017, the Reputation Institute nominated the LEGO Group as number 2 on their list of “the World’s Most Reputable Companies”, and in 2014, the TIME magazine ranked LEGO to be the Most Influential Toy of All Time. The Complainant refers to Article 6bis of the Paris Convention for protection of Industrial Property and to Articles 16.2 and 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, according to which the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services, regardless of the list of the products and services for which the trademark is registered. Thus, according to the Complainant, the protection of the LEGO trademark goes beyond toys and goods similar to toys.

The Complainant submits that the disputed domain name is confusingly similar to the LEGO trademark, because the dominant part of the disputed domain name is identical to this trademark. The addition of the elements “ultimate”, “discounted”, “overstock”, “emporium”, “sets”, “supply co” and “overstock” does not eliminate the confusing similarity of the disputed domain names with the LEGO trademark, and there is a considerable risk that the public will perceive the disputed domain names as owned by the Complainant or as having a commercial relation with the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has no registered trademarks or trade names corresponding to the disputed domain names and has not used the disputed domain names in a way that would give rise to rights or legitimate interests in them. The Complainant has not given authorization to the Respondent to use the LEGO trademark, and the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. The Complainant points out that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen the disputed domain names incorporating the Complainant’s LEGO trademark to mislead Internet users and to generate traffic and income through websites containing sponsored links. The Complainant points out that the use of domain names to host parked pages featuring pay-per-click links does not represent a bona fide offering if such links capitalize on the reputation and goodwill of a trademark of another or mislead Internet users.

The Complainant submits that in their correspondence prior to the dispute, the Respondent claimed he registered the disputed domain names to set up fan websites in the future. In this regard, the Complainant points out that the disputed domain names contain the elements “discounted”, “overstock”, “emporium”, “sets”, “supply co” and “overstock”, which indicate a commercial purpose that is not consistent with the Respondent’s allegation.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Respondent registered the disputed domain names in view of the value and goodwill of the LEGO trademark decades after the Complainant registered the LEGO trademark in the United States. The combination of elements in the disputed domain names shows that the Respondent was well aware of the LEGO trademark when he registered them, and that they were intended to lead Internet users to believe that they referred to commercial websites offering the Complainant’s LEGO products.

The Complainant submits that it tried to contact the Respondent on December 19, 2018 through a cease‑and‑desist letter. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark as part of the disputed domain name <legoemporium.com> violated the Complainant’s trademark rights, requested a voluntary transfer of this disputed domain name and offered compensation for the Respondent’s out of pocket expenses. On December 30, 2018, the Respondent replied that he would be willing to transfer the disputed domain name <legoemporium.com> plus the disputed domain names <legooverstock.com> and <legosupplyco.com> for the price of USD 100,000 each. When the Complainant contested this selling price, the Respondent reduced it to USD 10,000 per domain name. The Respondent also announced that he was the registrant of the other disputed domain names, which he also offered for sale to the Complainant for the same price.

The Complainant points out that the disputed domain names point to pay-per-click websites. According to the Complainant, the Respondent cannot disclaim responsibility for the automatically generated pay-per-click links appearing on the websites associated to the disputed domain names if such links are generated by a third party or if the Respondent itself has not directly profited from such pay-per-click links, because the Respondent has at all times been in contractual control of the content of the websites at the disputed domain names and has the power to cause the removal of the pay-per-click links. According to the Complainant, the Respondent has engaged in a pattern of cybersquatting, as he has registered six domain names that each infringe the Complainant’s LEGO trademark.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the Respondent has registered and is using the disputed domain names in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the LEGO trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain names.

The relevant part of each of the disputed domain name contains the element “lego” combined with either “discounted”, “overstock”, “emporium”, “ultimate” and “sets”, “supply co”, or “overstock”. The “lego” element is identical to the LEGO trademark, while the other elements added to it either reflect a commercial offering or are descriptive of the products sold under the LEGO trademark and do not dispel confusing similarity.

In view of the above, the Panel finds that the disputed domain names are confusingly similar to the LEGO trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent has not been authorized by the Complainant to use the LEGO trademark, that there are no business relations between the Parties, and that the Respondent is not carrying out a bona fide use of the disputed domain names, but uses them for websites that contain sponsored links. According to the Complainant, the choice of the disputed domain names incorporating the Complainant’s LEGO trademark and their use to host parked pages featuring pay-per-click links that capitalize on the reputation of the LEGO trademark does not give rise to rights or legitimate interests of the Respondent in the disputed domain names. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Respondent has not submitted a Response and has not alleged that he has rights and legitimate interests in the disputed domain names and has not disputed the Complainant’s allegations in this proceeding.

The Respondent has registered six disputed domain names that are all confusingly similar to the LEGO trademark, which has long been registered in the United States where the Respondent is located. The disputed domain names contain elements such as “discounted”, “overstock”, “emporium”, “ultimate” and “sets”, “supply co”, or “overstock”. Following from the discussion above in section 6.A, Internet users may regard them as referring to commercial websites where the Complainant’s LEGO toys are offered for sale. The disputed domain names resolve to websites that contain pay-per-click links that are likely generating income for the Respondent or for another person or entity.

In view of the above and in the lack of any denial by the Respondent of the above, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s LEGO trademark, has registered and used the disputed domain names in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s websites that contain pay-per-click links. Such conduct is not legitimate and does not give rise to rights or legitimate interests of the Respondent in the disputed domain names.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

As discussed above, the disputed domain names fully incorporate the LEGO trademark, which has long been registered in the United States where the Respondent is located, in combination with elements such as “discounted”, “overstock”, “emporium”, “ultimate” and “sets”, “supply co”, or “overstock”, which all have a commercial character. The Respondent does not deny that each of the disputed domain names is linked to a website that features pay-per-click links. In its correspondence with the Complainant prior to this proceeding, the Respondent has not denied its knowledge of the Complainant and of the LEGO trademark. Rather, the Respondent has claimed to have registered the disputed domain names for the purposes of future fan sites dedicated to the Complainant’s LEGO toys. In response to the Complainant’s cease‑and‑desist letter, the Respondent has also offered to sell the disputed domain names to the Complainant for a price of USD 10,000 per domain name.

Taking the above into account, the Panel accepts that the Respondent has registered the disputed domain names with knowledge of the Complainant and has targeted the LEGO trademark in an attempt to attract traffic to the disputed domain names by confusing Internet users that they are reaching online locations offering the Complainant’s products and then expose them to pay-per-click links for commercial gain. In view of this, the Panel accepts that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites at the disputed domain names, by creating a likelihood of confusion with the Complainant’s LEGO trademark.

The circumstances of this case also justify a finding that the Respondent has registered the disputed domain names for the purpose of selling them to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names.

Therefore, the Panel finds that the disputed domain names have been registered and used in bad faith.

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 <discountedlegos.com>, <legoemporium.com>, <legooverstock.com>, <legosupplyco.com>, <overstocklegos.com>, and <ultimatelegosets.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: May 13, 2019