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WIPO Arbitration and Mediation Center


LEGO Juris A/S v. Contact Privacy Inc. Customer 0153814196 / Micahela Lopez Flores

Case No. D2019-0993

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 0153814196, Canada / Micahela Lopez Flores, United States of America.

2. The Domain Name and Registrar

The disputed domain name <thelegosworld.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2019. On May 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 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 May 6, 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 amendment to the Complaint on May 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 May 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2019.

The Center appointed Benjamin Fontaine as the sole panelist in this matter on June 11, 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 following facts were duly established by the Complainant:

The Complainant in this proceeding is Lego Juris A/S, the owner of the trademarks LEGO identifying in particular the well-known construction toys. Few brands in the world enjoy a reputation as strong as LEGO, and this is confirmed by numerous studies, some of which are annexed to the Complaint. For example, LEGO ranked no. 2 in the 2018 edition of the Global RepTrak 100. Besides, the magazine Time has classified LEGO as the no. 1 among the most influential toys of all time, in an article published in 2014.

The trademark LEGO is registered worldwide. The Complainant has submitted a whole trademark portfolio and extracts relating to registrations of LEGO in Canada. Canada is the country where the privacy service used by the Respondent is domiciled.

Little is known about the Respondent, an individual domiciled in the United States who did not intervene in this proceeding. The Respondent registered the disputed domain name <thelegosworld.com> on January 30, 2019.

The disputed domain name was used to host a website offering construction toys for sale, and operating under the name “The Legos World”. It features a number of articles which do clearly recall the Lego toys and figurines and the universes for which Lego has obtained licenses, including Star Wars and Harry Potter models. A close look at the offers indicates that these are most likely counterfeit goods, to a large extent: some are sold without proper packages, others are badly spelled (“Harri” instead of “Harry”), and others bear a brand inserted in a red rectangle which calls into mind the logo associated to the Lego toys. Last but not least, they are displayed in a similar fashion as in the website of the Complainant, hosted at <lego.com>.

A cease and desist letter was sent by the legal representative of Lego Juris to the Respondent on February 20, 2019. This letter and subsequent reminders remained unanswered.

5. Parties’ Contentions

A. Complainant

The detailed arguments put forward in the Complaint can be summarized as follows:

Regarding the first element of the Policy, the Complainant claims that the disputed domain name <thelegosworld.com> comprises the word LEGO which is subject to numerous trademark rights. It adds that the disputed domain name will be perceived as the expression “The LEGO’s world”, by reference to the famous brand. And indeed the Respondent does operate a website identified as “The LEGO’s world”.

On the second element of the Policy, the Complainant claims that the Respondent has, to its knowledge, no rights corresponding to the disputed domain name. Besides, the Respondent was not authorized by the Complainant, in any manner, to register and use the disputed domain name. Neither is the Respondent an authorized retailer of Complainant’s products. Finally, the Respondent is not making a bona fide use of the disputed domain name. Instead, it uses it to host a website that offers the products of competitors, or even counterfeit products.

Finally, regarding the third element of the Policy, the Complainant indicates that the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to its own website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. This bad faith behavior is confirmed by the fact that the Respondent hired a privacy service when registering the disputed domain name, in order to hide its identity. The Respondent did have the Complainant’s trademark in mind when registering the disputed domain name, and this is of course confirmed by the subsequent use made of it.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant specifically substantiated its trademarks rights over LEGO in Canada, when preparing and filing its Complaint. This is indeed the country in which the privacy service hired by the Respondent is domiciled. It was only subsequently that the identity of the owner of the disputed domain name, an individual domiciled in the United States, was disclosed by the Registrar. This has no impact on the assessment made by this Panel on the first element of the Policy: complainants are not necessarily required to establish trademark rights in the country where the respondent or its privacy service is domiciled. Besides, the Complaint does contain a full portfolio of LEGO trademarks registered worldwide, which includes references to a few US Federal registrations. Lastly, the level of reputation of LEGO is so outstanding that its owner can, in any event, claim worldwide fame.

It is standard practice to consider that confusing similarity exists for the purpose of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). Besides, the addition of a geographical term or equivalent term, such as “world” to a domain name has normally no impact on the finding of confusing similarity (see Section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition).

The disputed domain name <thelegosworld.com> is therefore confusingly similar to the trademarks of the Complainant, in accordance with the standards of the Policy.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In the absence of any contradictory claim by the Respondent, the Panel can only agree with the convincing arguments put forward by the Complainant. The very use made of the disputed domain name, to offer for sale counterfeit products which directly recall the LEGO branded toys of the Complainant, indicates that the Respondent does not operate a legitimate business and has no right or interest in the disputed domain name <thelegosworld.com>.

The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:

(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or

(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

The facts of this case leave little doubt as to the intentions of the Respondent when registering and using the disputed domain name <thelegosworld.com>.

The Respondent deliberately elected a domain name that incorporated the famous brand LEGO of the Complainant, and which would be directly associated to it. The expression “The LEGO’s world” does indeed indicate that the domain name will host a website offering “the whole world”, “the whole range”, of LEGO toys, products and entertainment services. And the Respondent did so using a privacy service, in order to conceal her identity.

Shortly after, the Respondent used the disputed domain name under the heading “The Lego’s world”, to sell toys which appear to be counterfeits, at least to a significant extent. Some of these toys are bad quality look-alikes of authentic LEGO constructions toys. Besides, the general layout of the Respondent’s website is quite similar to the one operated by the Complainant. That increases the damage caused to the business of the Complainant, which hence has requested the transfer of the disputed domain name to prevent the Respondent from using the disputed domain name in bad faith.

Accordingly, the third criteria set out in paragraph 4(a) of the Policy is also satisfied.

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, <thelegosworld.com> be transferred to the Complainant.

Benjamin Fontaine
Sole Panelist
Date: June 18, 2019