WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Super Privacy Service LTD c/o Dynadot
Case No. D2019-2853
1. The Parties
The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lego.cam> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2019. On November 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 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 November 22, 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 November 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 the Respondent of the Complaint, and the proceedings commenced on November 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2019.
The Center appointed Fabrice Bircker as the sole panelist in this matter on December 23, 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 is a Danish company which owns LEGO trademarks (for example, United States of America trademark registration No. 1018875, registered on August 26, 1975) notably for construction toys.
This brand is protected in many countries all over the world and enjoys a considerable reputation (for instance, in the “Consumer Superbrand 2018” study it is ranked in first position in the category “Child Products – Toys and Education”; in 2018, the Reputation Institute nominated the LEGO Group as number 2 in its ranking of the world’s most reputable companies; in 2014, Time magazine announced LEGO to be “the Most Influential Toy of All Time”).
The well-known feature and the repute of the LEGO trademarks have already been recognized in many UDRP decisions (for a few examples among the numerous decisions issued in this respect: 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; LEGO Juris A/S v. WhoisGuard, Inc. / Dary Webber, WIPO Case No. D2019-0204; LEGO Juris A/S v. Contact Privacy Inc. Customer 0153814196 / Micahela Lopez Flores, WIPO Case No. D2019-0993).
The Complainant is also the holder of more than 5,000 domain names, including <lego.com>.
Very little is known about the Respondent and it did not intervene in this procedure.
The disputed domain name, <lego.cam>, was registered on July 30, 2019.
It systematically redirects toward a page displaying a message indicating that it may be for sale for USD 800.
Then, this message disappears and the disputed domain name randomly redirects toward different websites, such as:
- a website proposing to “Buy Lego.cam For USD 800” (according to the Panel’s observations, this website is from far the most recurrent);
- websites which seem to impersonate the Microsoft office helpdesk and which threaten the Internet user to block its computer and/or which trigger error or security messages (conducting to block the web browser);
- websites trying to download dubious software on the Internet user’s computer;
- a website organizing promotional operations related to LEGO branded products and collecting in this respect email addresses;
- websites promoting financial services.
It results from the record of the case that, before initiating this procedure, the Complainant sent several cease and desist letters to the Respondent, but they all remained unanswered.
5. Parties’ Contentions
The numerous arguments of the Complainant can be summarized as follows:
Identical or confusingly similar
The Complainant contends that the dominant part of the disputed domain name is an exact match of its LEGO trademarks, which are registered in numerous countries all over the world.
The Complainant points out that the fame of its trademarks has been confirmed in many UDRP decisions.
The Complainant also puts forward that Top-Level Domains (“TLD”) are usually discounted when assessing confusing similarity, as they serve a technical function. However, it indicates that the TLD “.cam” is very similar to the TLD “.com”. As a consequence, the disputed domain name <lego.cam> is visually confusingly similar to its main domain name <lego.com>.
Rights or Legitimate Interests
The Complainant asserts that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name.
The Complainant adds that no license or authorization of any other kind has been given by it to the Respondent to use the trademarks LEGO. Besides, according to the Complainant, the Respondent is not an authorized dealer of its products and has never had a business relationship with it.
The Complainant also contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because it has intentionally chosen a domain name based on the famous LEGO trademarks in an effort to direct Internet users to a parked aggregator website, and also because it is offering the disputed domain name for sale.
Registration and Use in Bad Faith
First of all, the Complainant points out that its LEGO trademarks are well known and reputed throughout the world.
Then, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith because it has purposefully registered a domain name that is confusingly similar to the Complainant’s LEGO trademarks with the intent of disrupting the business of the Complainant by diverting Internet users to an aggregator website.
In addition, the Complainant contends that offering the disputed domain name for sale for valuable consideration in excess of the Respondent’s out-of-pocket expenses also constitutes bad faith.
The Complainant adds that the absence of reply to its cease and desist letters and the use of a privacy service also participate to establish the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of the following three elements:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Besides, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Furthermore, paragraph 14(b) of the Rules provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
At last, Respondent’s failure to reply to Complainant’s contentions does not automatically result in a decision in favor of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the foregoing provisions into consideration the Panel finds as follows:
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to its trademark.
Annex 3 to the Complaint shows trademark registrations for LEGO in the name of the Complainant, in particular:
- United States of America trademark LEGO filed on September 17, 1974, registered under No. 1018875 on August 26, 1975, and covering products of class 28;
- European Union trademark LEGO filed on April 1, 1996, registered under No. 000039800 on October 5, 1998, and covering among others products of class 28 (it is incidentally noted that this trademark claims the seniority of many national trademarks, some of which were registered more than 70 years ago).
Besides, the disputed domain name <lego.cam> is identical to the LEGO trademarks since it consists in the reproduction of said trademarks and because it is of constant practice among the UDRP panels that generic TLD may be ignored for the purpose of assessing the identity or the confusingly similarity under the first element, as they play a technical function (see for instance, WIPO Overview 3.0, section 1.11.1 LEGO Juris A/S v. Bolo, Bolodewo Center, WIPO Case No. D2016-2174).
Consequently, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy are satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent], [the Respondent’s] 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] 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 trademark or service mark at issue.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).
In the present procedure, the Complainant claims that the Respondent is not affiliated with it in any way, nor has been authorized or licensed to use and to register its LEGO trademarks or to seek registration of any domain name incorporating said trademarks.
Besides, there is nothing in the record of the case likely to indicate that the Respondent may be commonly known by the disputed domain name.
Furthermore, the disputed domain name is put for sale (at the price of USD 800) and also redirects toward dynamic websites whose content is of commercial nature and even sometimes very likely fraudulent. Obviously such a use of a domain name which is identical to well-known trademarks is neither a bona fide offering of goods or services, nor a legitimate noncommercial use or fair use.
In view of all the above, the Panel finds that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The burden now shifts to the Respondent to show that it does have some rights or legitimate interests.
The Respondent, which has not replied to the Complainant’s contentions, has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.
As a consequence, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and is using the disputed domain name 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.
(1) Registration in Bad Faith
The Panel notes that:
- it is well established that the Complainant’s prior trademarks count among the most well-known brands in the world,
- the disputed domain name is identical to the Complainant’s LEGO trademarks and is also confusingly similar to its main domain name <lego.com>,
- the disputed domain name redirects to among others a website organizing promotional operations related to LEGO branded products and even displaying the Complainant’s logo.
These circumstances lead the Panel to consider that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademarks.
(2) Use in Bad Faith
As the disputed domain name:
- is ostensibly put for sale at the price of USD 800 (what is in the Panel’s view and in the absence of evidence to the contrary, valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name);
- is identical to the Complainant’s famous trademarks;
- is also confusingly similar to the Complainant’s main domain name, i.e. <lego.com>;
- is notably used to redirect toward dynamic websites.
the Panel concludes that the present case clearly falls within the scope of paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
Therefore, the Panel finds that the Respondent has registered the disputed domain name for the purpose of selling it to the Complainant or to a competitor of the Complainant, and is also using the disputed domain name to intentionally attempts to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of said websites.
As a consequence, the Panel finds registration and use in bad faith of the disputed domain name, so the requirements of paragraph 4(a)(iii) of the Policy are satisfied.
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 <lego.cam> be transferred to the Complainant.
Date: January 3, 2020