WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Moshe Cohen / Funtasia Trade Ltd

Case No. D2019-2478

1. The Parties

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

The Respondent is Moshe Cohen, Israel / Funtasia Trade Ltd, Israel. (While technically one of the disputed domain names appears to be in the name of ‘Funtasia’, since Moshe Cohen is identified as the owner of Funtasia and thus under common control, the reference hereinafter will be “the Respondent.”)

2. The Domain Names and Registrar

The disputed domain names <לגו .com> (xn--6dbgt.com), <לגולנד .com> (xn--6dbcf0acy.com), <lego‑bricks.biz>, <lego-bricks.net>, <lego‑israel.biz>, <lego-israel.com>, <lego-israel.net>, <legoisrael.net>, and <לגו .net> (xn--6dbgt.net) (the “Domain Names”) are registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2019. On October 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 18, 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 October 23, 2019. On October 24, 2019, the Center received an email communication from the Respondent, indicating among other things, that he is “LEGO distributor and wholesaler and retailer in Israel”.

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 October 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2019. No substantive Response was filed with the Center. On November 14, 2019, the Center informed the Parties that it would proceed to appoint the Panel.

The Center appointed Ellen B Shankman as the sole panelist in this matter on November 29, 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.

The Panel also finds that the consolidation into one proceeding in the circumstances of all of the disputed Domain Names showing evidence of common control is justified, and to be determined by a single decision under the facts of this case to be fair and reasonable.

4. Factual Background

The dates of the Domain Names registrations and the status of the domain names appear in the table below:

The trademarks LEGO and LEGOLAND serve as trademarks of the Complainant and are protected as registered trademarks in multiple jurisdictions world-wide. The Complainant provided evidence of multiple trademark registrations for the mark LEGO and LEGOLAND including, inter alia, International Registration for LEGO United States Reg No. 4395578 (registered September 3, 2013) and Israel Reg No. 52122 (registered on June 13, 1985) and Registration for LEGO Israel Reg No. 47461 (registered on November 21, 1982) of both word marks and logos, that predate the date of the Domain Names registrations, inter alia, for toys and related goods.

5. Parties’ Contentions

A. Complainant

The trademark LEGO 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 trademark and brands, as well as the LEGOLAND trademark, have been recognized as being famous. For instance, in a list of the official Top 20 Consumer Superbrands for 2018, provided by Superbrands UK, showing LEGO as number 1 Consumer Superbrand and the winner in the category “Child Products - Toys and Education”. Moreover, the Reputation Institute nominated the LEGO Group as number 2 on both their lists of world’s most reputable companies i.e., “2018 Global RepTrak® Top 10 Companies” and “2018 Global RepTrak® 100In 2014”, TIME also announced LEGO to be the Most Influential Toy of All Time.

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. The LEGO Group also maintains an extensive website under the domain name <lego.com>. The LEGOLAND trademark is being used by the LEGO Group regarding for example; theme parks, hotels, entertainment, sporting and cultural activities. Further, the LEGO Group maintains a website under the domain name <legoland.com>. The LEGOLAND parks are today owned by Merlin Entertainments. The LEGO Group owns 20% of Merlin. However, all rights to the trademark LEGOLAND are still owned by the LEGO Group and Merlin has an exclusive license to use the trademark in connection with the parks. As shown, the marks LEGO and LEGOLAND are in possession of substantial inherent and acquired distinctiveness. The Complainant is the owner of close to 5,000 domain names containing the term LEGO and LEGOLAND.

The dominant part of the Domain Names comprise the term LEGO in English and in Hebrew, identical to the marks registered by the Complainant as trademarks and domain names in numerous countries all over the world, including in Israel where the Respondent is based.

The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Names. Neither has the Complainant found anything, including the WhoIs details that would suggest that the Respondent has been using LEGO or LEGOLAND in any other way that would give it any legitimate rights or legitimate interests in the names. Consequently, the Respondent may not claim any rights established by common usage.

No license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademarks LEGO or LEGOLAND. Further, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. There are no disclaimers on the websites to explain the lack of relationship to the Complainant.

The Domain Names can only be taken as intending to cause confusion among internet users as to the source of the Domain Names, and thus, the Domain Names must be considered as having been registered and used in bad faith pursuant to Policy paragraph4(b)(iv), with no good faith use possible.

More specifically, where all nine (9) Domain Names incorporate the Complainant’s famous LEGO or LEGOLAND trademarks in their entirety and the majority were registered within a 2 month time period, there is no plausible good-faith reason or logic for the Respondent to have registered these Domain Names. Rather it is indicative of an intention to hold the Domain Names “for some future active use in a way which would be competitive with or otherwise detrimental to Complainant”. Further, considering these circumstances, any use of the Domain Names whatsoever, whether actual or theoretical, would have to be in bad faith: “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”

The Complainant first tried to contact the Respondent on September 6, 2019, through a cease and desist letter sent by email. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the Domain Names and requested a voluntary transfer of the same. The Complainant also offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). Despite that reminders were being sent, no reply was ever received. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process.

To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademarks LEGO and LEGOLAND, in respect of a wide range of goods and services and that the marks are well-known. The Domain Names are confusingly similar to the trademarks owned by the Complainant. The addition of the generic terms does not prevent a finding of confusing similarity. Therefore, each and all of the Domain Names could be considered virtually identical and/or confusingly similar to the Complainant’s trademarks. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Domain Names were registered and are being used in bad faith. That continued use of the Domain Names would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registrations and use of the Domain Names constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Names.

B. Respondent

On October 24, 2019, the Respondent responded to the notification received from WIPO, and wrote:

“Dear all, I am LEGO distributor and wholesaler and retailer in Israel. All domain names registered after consulting with Israeli court of law. All is according to Israeli law…BR, Moshe Cohen-CEO, BRICKZONE IMPORT & TRADE LTD, www.legozone.co.il, Tel: +972-533313109.”

No substantive response was filed.

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii) That the Domain Name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for LEGO and LEGOLAND and finds that these marks are well-known.

The Panel finds that the Domain Names are confusingly similar to the Complainant’s well-known trademarks. Further, the Panel finds that the mere addition of the various terms to the Domain Names does not change the overall impression of the designations as being connected to the trademarks of the Complainant. It does not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademark and if anything, as described under the 2nd and 3rd elements enhances it to suggest the offer of the Complainant’s products online/ goods and services. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark”.

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Names are identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names <לגו .com> (xn--6dbgt.com), <לגולנד .com> (xn--6dbcf0acy.com), <lego‑bricks.biz>, <lego-bricks.net>, <lego‑israel.biz>, <lego-israel.com>, <lego-israel.net>, <legoisrael.net>, and <לגו .net> (xn--6dbgt.net) and that they are not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.

The Respondent claims that he is a legitimate distributor of the Complainant’s goods. The Complainant says he is not. Even if the Respondent were correct, that does not by itself provide him with a right in these multiple (also meaning the Complainant satisfies the oki data criteria) Domain Names – and also impacts on the third element below. If he were a legitimate distributor with authorized rights to use the mark, he wouldn’t have responded as he did to the Cease & Desist letter and be in this battle with the licensor. The Panel finds the Complainant more persuasive and holds that the Respondent has no legitimate interest or right.

Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted persuasively, that the Respondent lacks rights or legitimate interests in the Domain Names.

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Names, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Names with full knowledge of the Complainant’s trademarks LEGO and LEGOLAND and uses it for the purpose of misleading and diverting Internet traffic and taking an unfair commercial advantage of the LEGO and/or LEGOLAND trademarks.

The Respondent, in claiming to be a distributor of Lego products, has clearly registered the Domain Names with the full knowledge of the Complainant’s trademarks LEGO and LEGOLAND. That he chose to register more than 9 of them is sheer “chutzpah”, (a term the Respondent will well understand). That he claims that he was entitled to do so under Israel law at best proves at best that he was “misinformed” and more likely a deliberate attempt to engineer an excuse to profit opportunistically from the reputation of the Complainant. The Panel is curious as to which “Israeli Court” was consulted, since the Panel notes that under Israel Law, whether and how a legitimate distributor – which has not been proved here – of original branded goods are allowed to use in the mark in advertising, the Respondent is not necessarily free to obtain domain name registrations containing the trademark of another. That the response to the C&D letters was to fight makes it clear to the Panel that his choice to continue doing so is intentional bad faith in use.

Further, the evidence provided by the Complainant that this is part of a pattern of abusive registrations in that the Respondent has also registered a number of other domain names containing famous brands, including in the .IL ccTLD supports the Panel’s finding that Respondent is a serial bad actor with a pattern of abusive registrations. The evidence provided that aside from the Domain Names of this Complaint, the Respondent has registered another 25 “.il” domain names incorporating the Complainant’s LEGO and LEGOLAND trademarks, and the administrative emails are listed as [“bidursale@gmail.com”] – the WhoIs email used by the Respondent in this case.

Given the evidence of the Complainant’s prior rights in the trademarks, the timing of the registration of the Domain Names within a span of two months with full knowledge of the Complainant’s marks, together with and the Respondent’s reply to WIPO and the refusal to comply with the Complainant’s request for voluntary transfer of the Domain Names, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under paragraph 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 names <לגו .com> (xn--6dbgt.com), <לגולנד .com> (xn--6dbcf0acy.com), <lego-bricks.biz>, <lego-bricks.net>, <lego-israel.biz>, <lego-israel.com>, <lego-israel.net>, <legoisrael.net>, and <לגו .net> (xn--6dbgt.net) be transferred to the Complainant.

Ellen B Shankman
Sole Panelist
Date: December 13, 2019