WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Whois Agent, Whois Privacy Protection Service, Inc. / Supassorn Chiangka

Case No. D2019-0542

1. The Parties

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

Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Supassorn Chiangka of Bangkok, Thailand.

2. The Domain Name and Registrar

The Disputed Domain Name <loopylego.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2019. On March 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 18, 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 Complainant on March 19, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 25, 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 Respondent of the Complaint, and the proceedings commenced on March 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 18, 2019.
The Center appointed Richard W. Page 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

Complainant owns numerous trademark registrations of “Lego” (the “LEGO Mark”) including registrations in Thailand. Complainant is located in Denmark and owns all rights in the LEGO brands of construction toys and other LEGO branded products. Complainant’s licensees are authorized to exploit Complainant’s intellectual property rights, including its trademark rights, in Thailand and elsewhere. Over the years, the business of making and selling LEGO branded toys has grown remarkably. Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Thailand.

Complainant is the owner of close to 5,000 domain names containing the term “lego”. It is the strict policy of Complainant that all domain names containing the term LEGO should be owned by Complainant.

The LEGO Mark is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO Mark on all products, packaging, displays, advertising and promotional materials. Indeed, the LEGO Mark and brands have been recognized as being famous. For instance, Complainant Superbrands for 2108, provided by Superbrands UK, showed the LEGO Mark as winner in the category “Child Products – Toys and Education” and LEGOLAND as winner in the category “Leisure & Entertainment – Destinations.” Moreover, the Reputation Institute nominated the LEGO Group as number 2 on their list of “the World’s Most Reputable Companies” 2018. In 2014, TIME also announced LEGO to be the Most Influential Toy of All Time.

Complainant has expanded its use of the LEGO Mark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. Complainant also maintains an extensive website under the domain name <lego.com>.

The Disputed Domain Name was registered on December 24, 2018. The Disputed Domain Name resolves to a website in both Thai and English. The website advertises for sale LEGO education toy sets.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name contains the entirety of the LEGO Mark and is confusingly similar to the LEGO Mark.

In addition, the Disputed Domain Name also contains the prefix “loopy,” which Complainant alleges is a generic prefix and does nothing to detract from the overall impression. Also, the addition of “.com” is merely a generic Top-Level Domain (“gTLD”) which is not distinctive.

Complainant further contends that the public will perceive the Disputed Domain Name either as a domain name owned by Complainant or that there is some kind of commercial relation with Complainant. There is also a risk that the LEGO Mark will be tarnished by being connected with this website. By using, the LEGO Mark as a dominant part of the Disputed Domain Name, Respondent exploits the goodwill and the image of the LEGO Mark, which may result in dilution and other damage to Complainant.

Complainant contends that Respondent has no legitimate rights or interests in the Disputed Domain Name. Complainant further contends that Respondent has no registered trademarks of trade names corresponding to the Disputed Domain Name. Further, Complainant has not found anything that would suggest that Respondent has been using LEGO in any other way that would provide legitimate rights in any of the names.

Respondent has no license or authorization of any kind from Complainant to use the LEGO Mark. Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant.

Complainant alleges that Respondent had actual and constructive knowledge of Complainant’s legal rights in the LEGO Mark at the time the Disputed Domain Name was registered. In fact, it is rather obvious that it is the fame of the LEGO Mark what has motivated Respondent to register the Disputed Domain Name. That is, Respondent cannot claim to have been using the LEGO Mark, without being aware of Complainant’s rights.

Complainant alleges that Respondent is today not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Complainant further alleges that Respondent has intentionally chosen a domain name based on registered trademarks in order to advertise for sale LEGO education toy sets. Complainant further alleges that Respondent is using Complainant’s LEGO Mark to mislead Internet users to its own commercial website. No evidence has been found that Respondent used the LEGO name as a company name or has any other legal right in the name. Complainant further alleges that Respondent is trying to spoon off Complaint’s world-famous trademark.

Complainant alleges that the LEGO Mark, has the status of well-known and reputed trademark with a substantial and widespread reputation, throughout the whole community and the world. The awareness of the LEGO Mark is considered, in the whole community in general, to be significant and substantial. The number of third-party domain name registrations containing the LEGO Mark in combination with other words has always been attractive to domain name infringers. The considerable value and goodwill of the LEGO Mark is most likely, a large contributing factor to this and also what made Respondent register the Disputed Domain Name.

Complainant first tried to contact Respondent on January 15, 2019 through a cease and desist letter sent by email. Complainant advised Respondent that the unauthorized use of the LEGO Mark within the Disputed Domain Name violated Complainant’s rights. Complainant requested a voluntary transfer of the Disputed Domain Name and offered compensation for the expenses of registration and transfer fees. No additional reminders were sent, and no reply was ever received. Since the efforts of trying to solve the matter amicably were unsuccessful, Complainant chose to file a complaint under the UDRP.

The Disputed Domain Name is currently connected to a commercial website which advertises for sale LEGO educational toy sets, thereby, it is clearly using a commercial purpose

Consequently, Respondent is using the Disputed Domain Name to intentionally attract Internet users to its own website for commercial gain, by creating a likelihood of confusion with the LEGO Mark as to the source, sponsorship, affiliation or endorsement of this website.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Respondent is not obliged to participate in this UDRP proceeding, but when it fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) that the Dispute Domain Name registered by Respondent is identical or confusingly similar to the LEGO Mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has numerous registrations of the LEGO Mark. Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this presumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Respondent has not rebutted this presumption. Therefore, the Panel finds that for purposes of this proceeding Complainant has enforceable rights in the LEGO Mark.

Complainant further contends that the Disputed Domain Name is identical with or confusingly similar to the LEGO Mark pursuant to paragraph 4(a)(i) of the Policy. Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark.

Complainant argues that the Disputed Domain Name incorporates the entire LEGO Mark with only the addition of the descriptive prefix “loopy”. This makes the Disputed Domain Name confusingly similar to the LEGO Mark. See, Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792. See also section 1.8 of the WIPO Overview 3.0 .

Therefore, the Panel finds that, Complainant has met the requisite elements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed 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 Disputed 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 Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the LEGO Mark.

Complainant contends that Respondent has no registered trademarks corresponding to the Disputed Domain Name. Further, Complainant has not found anything that would suggest that Respondent has been using LEGO in any other way that would provide legitimate rights in any of the names.

Respondent has no license or authorization of any kind from Complaint to use the LEGO Mark. Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant.

No evidence has been found that Respondent used the LEGO name as a company name or has any other legal right in the name.

Complainant alleges that Respondent is today not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Complainant alleges that Respondent had actual and constructive knowledge of Complainant’s legal rights in the LEGO Mark at the time the Disputed Domain Name was registered. In fact, it is rather obvious that it is the fame of the LEGO Mark what has motivated Respondent to register the Disputed Domain Name. That is, Respondent cannot claim to have been using the LEGO Mark in any bona fide or legitimate noncommercial manner.

Complainant further alleges that Respondent has intentionally chosen a domain name based on registered trademarks in order to advertise for sale LEGO education toy sets. Complainant further alleges that Respondent is using Complainant’s LEGO Mark to mislead Internet users to its own commercial website.

The Panel finds that Complainant has made a prima facie case that Respondent lacks legitimate rights or interests in the Disputed Domain Name. Respondent has not contested these allegations.

Therefore, the Panel finds that Complainant has proven the necessary elements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the LEGO Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the LEGO Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the LEGO Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product

Complainant alleges that the LEGO Mark, has the status of well-known and reputed trademark with a substantial and widespread reputation, throughout the whole community and the world. The considerable value and goodwill of the LEGO Mark is most likely, a large contributing factor to this and also what made Respondent register the Disputed Domain Name.

The Disputed Domain Name is currently connected to a commercial website which advertises for sale LEGO educational toy sets, thereby, it is clearly being used for a commercial purpose.

Respondent has not contested Complainant’s allegations of bad faith.

Therefore, the Panel finds that Complainant has satisfied paragraphs 4(b)(iv) and 4(a)(iii) 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 Name, <loopylego.com> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: May 13, 2019