WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Muhammad Hamza
Case No. D2019-0357
1. The Parties
Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Muhammad Hamza of Lahor, Punjab, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <legoconceptlab.com> (“Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2019. On February 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on March 14, 2109.
The Center appointed Marina Perraki as the sole panelist in this matter on April 8, 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.
Emails were received on March 12, 2019 and March 15, 2019 from a third party indicating that it has sold the Domain Name and from the Respondent on March 14, 2019, March 18, 2019 and March 19, 2019.
4. Factual Background
According to the Complaint, Complainant is a corporation organized and existing under the laws of Denmark. Complainant is the owner of LEGO trademarks used in connection with the Lego construction toys and other Lego branded products. Lego products are sold in more than 130 countries, including in Pakistan. The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.
Complainant is the owner of numerous trademark registrations for the LEGO mark in many jurisdictions around the world, including the Pakistan trademark LEGO (word), no. 69100 registered on March 8, 1979 for goods in international class 28.
Complainant also maintains numerous domain names incorporating the LEGO mark and an extensive website under the domain name <lego.com>.
Per Complaint, the trademark LEGO is among the best-known trademark in the world, due in part to long and extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.
The Domain Name was registered on November 15, 2018 and redirects to the website “www.weaccountax.co.uk/company-formation/”, which is the website of an advertising, accounting and company formation services company.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Name.
From March 14, 2019 to March 19, 2019, the Center received three emails from Respondent claiming that it bought the Domain Name because it was available for buying, and that it was purchased to redirect to its website.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identity of the Respondent
The named Respondent is Muhammad Hamza. Respondent appears as the current registered owner of the Domain Name. Complainant initiated this proceeding against the named Respondent, relying on the current state of the record which identified Muhammad Hamza, as the registrant. Registrar has confirmed that Respondent Muhammad Hamza is the current registrant of the Domain Name.
The Panel notes that the email communication received on March 14, 2019, March 18, 2019 and March 19, 2019 were sent from an email address corresponding to the registrant’s email address for the Domain Name which appeared as “Jogi Baba […]@gmail.com”. As defined in the Rules, the Respondent is “the holder of a domain name registration against which a complaint is initiated.”
Hence, the Panel does not find any reason not to proceed with the present administrative proceeding against the named Respondent, even if there might be further third parties involved with the Domain Name (either in the registration, acquisition or operation of the Domain Name). The Panel notes that there are certain benefits, obligations and repercussions from being the registrant of a domain name (see Philip Morris Products S.A. v. Registration Private / Galip Demirtas, WIPO Case No. D2019-0471). Therefore, for the purpose of this administrative proceeding, the Panel finds the named Respondent as the Respondent.
B. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use of the LEGO mark.
The Panel finds that the Domain Name <legoconceptlab.com> is confusingly similar to the LEGO trademark of Complainant.
The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The words “concept” and “lab” which are added in the Domain Name do not avoid a finding of confusing similarity (N. M. Rothschild & Sons Limited v. Super Privacy Services LTD c/o Dynadot / RothschildFintrade Co. Ltd, WIPO Case No. D2018-2036; KPMG International Cooperative v. Whois Privacy Services, Provided by Domain Protect LLC / Dmitriy Selivanov, WIPO Case No. D2017-0988; Philip Morris Products S.A. v. Yang Jiang Nan, WIPO Case No. D2018-1869; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are generally required for technical reasons (Trodat GmbH v. Fuat Akkus, Yonkinya, WIPO Case No. D2016-0226; Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
Complainant has established Policy, paragraph 4(a)(i).
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or 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 [Respondent] (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 [Respondent] 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 mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent did not submit a formal response to Complainant’s contentions and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name redirects to the website “www.weaccountax.co.uk/company-formation/”, which is the website of an advertising, accounting and company formation services company. A respondent’s use of a complainant’s mark to redirect users to a third party site (or to Respondent’s site) would not support a claim to rights or legitimate interests (WIPO Overview 3.0, section 2.5.3).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that the Domain Name was registered and is used in bad faith. As Complainant demonstrated, Complainant’s LEGO trademark is a famous and widely known mark, as this has been repeatedly recognised (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; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680). Furthermore, “lego” is a fictitious mark and the Domain Name incorporates in whole Complainant’s mark plus the additional terms “concept” and “lab”. Because the LEGO mark had been widely used and registered by Complainant at the time of the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
As regards bad faith use, Complainant demonstrated that the Domain Name redirects to the website “www.weaccountax.co.uk/company-formation/”, as an attempt to attract, for commercial gain, Internet users searching for Complainant’s LEGO mark, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship or affiliation of the website and this is a clear indication that the Domain Name is being used in bad faith under the Policy (Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049; Twitter, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Support, WIPO Case No. D2015-1488).
Under these circumstances and on this record, the Panel finds the Domain Name was registered and is used in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <legoconceptlab.com> be transferred to Complainant.
Date: May 2, 2019