WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Nofel Izz, JID
Case No. D2019-2601
1. The Parties
The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Nofel Izz, JID, Canada.
2. The Domain Names and Registrar
The disputed domain names <legotower.com> and <legotowers.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2019. On October 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 24, 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 November 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2019. The Respondent submitted emails on November 5 and 13, 2019. However, no formal response was received. On November 26, 2019, the Center transmitted a Commencement of Panel Appointment email.
The Center appointed Evan D. Brown as the sole panelist in this matter on December 10, 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 owns the LEGO trademark which it has registered in many countries, including Canada (Registration Number TMA106457, registered on April 26, 1957), the home country of the Respondent. The Complainant has used the mark for many years on its construction toys and other LEGO branded products. According to the WhoIs records, the disputed domain names <legotower.com> and <legotowers.com> were registered on August 12, 2007, and May 11, 2009, respectively. The Respondent did not use the disputed domain names for active websites, but used them to set up web pages that simply stated “website coming soon”.
The Parties exchanged a number of email communications through at least November 13, 2019, exploring potential resolution of the matter. Such efforts were unsuccessful, and the matter has proceeded to disposition herein.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (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 disputed domain names have been registered and are being used in bad faith. All three of these elements are discussed below.
A. Identical or Confusingly Similar
This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain names are identical or confusingly similar to that mark.
The Complainant has established rights in the LEGO mark based on the Complainant’s use of the mark as well as trademark registrations in various jurisdictions around the world.
The disputed domain names are also confusingly similar to the LEGO mark. The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain names contain the Complainant’s trademark LEGO in its entirety. The additional words “tower” and “towers” do not avoid the confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Complainant has successfully established this first element under the Policy.
B. Rights or Legitimate Interests
The Complainant will succeed under this second element of the Policy if it establishes, prima facie, that the Respondent lacks rights or legitimate interests under the Policy. The Complainant has made that showing and the Respondent has not overcome it. The following facts establish the Complainant’s prima facie case:
(1) The Respondent has not been using the LEGO mark in any way that would provide legitimate rights in any of the disputed domain names;
(2) The Complainant has never licensed the Respondent to use the LEGO mark;
(3) The Respondent’s use of the disputed domain names to establish “website coming soon” pages is not a bona fide offering of goods or services; and
(4) There is no evidence that the Respondent has been known by the disputed domain names.
The Complainant has prevailed on this second element of the Policy.
C. Registered and Used in Bad Faith
The Respondent has made no use of the disputed domain names other than establishing the above-noted “website coming soon” pages, and there are no other indications in the record that the Respondent could have registered and used the disputed domain names for any legitimate purpose. Further, the disputed domain names are confusingly similar to the Complainant’s trademark. Based on all the facts in the record, it is more likely than not that the Respondent knew of and targeted the Complainant’s trademarks when it registered and used the disputed domain names.
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 <legotower.com> and <legotowers.com> be transferred to the Complainant.
Evan D. Brown
Date: December 12, 2019