WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Jesus Montoya

Case No. D2019-3093

1. The Parties

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

The Respondent is Jesus Montoya, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <legodrywall.com>, <legodrywallinc.com>, and <lego.llc> (“the Disputed Domain Names”) 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 December 16, 2019. On December 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 17, 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 December 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2020. The Center received three email communications from the Respondent on December 31, 2019 and January 2, 2020 (the content of which shall be exposed under Section 3 below to the extent they are relevant for the proceedings).

On January 7, 2020, the Complainant requested suspension of the proceeding, and the proceeding was suspended on January 8, 2020.

On January 23, 2020, the Complainant requested the Center to reinstitute the proceeding. The proceeding was reinstituted on January 24, 2020.

The Center appointed Jacques de Werra as the sole panelist in this matter on February 18, 2020. 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 global toy company based in Denmark operating under the “LEGO” brand selling construction toys which are mostly built from toy bricks. The Complainant has expanded its use of the Trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States.

The “LEGO” brand is one among the best-known trademarks in the world and the Complainant is the owner of numerous trademarks for the “LEGO” brand for toys and other LEGO branded products which are registered in many countries (“the Trademark”). The Complainant is, inter alia, the owner of the United States trademark registration No. 1018875, registered on August 26, 1975.

The Complainant is the owner of close to 5,000 domain names containing the term “LEGO”, including its main domain name and associated website <LEGO.com>.

The Respondent registered the Disputed Domain Names on November 2, 2016 (<legodrywallinc.com>), July 28, 2017 (<legodrywall.com>) and October 2, 2019 (<lego.llc>) respectively¹. One of the Disputed Domain Names (i.e., <legodrywall.com>) resolves to a website associated to another domain name owned by the Respondent (<g.contractors>) which purports to present the activities of a company named “LEGO Dry Wall Inc.” and which displays the Trademark on a toy brick identical to the Complainant’s toy bricks.

The Respondent registered the domain names <harleydavidsoninc.com> and <harley-davidsoninc.com> that also redirect to the website associated with the domain name <g.contractors> owned by the Respondent.

The Complainant sent a cease and desist letter to the Respondent on October 16, 2019 relating to the registration of the domain name <lego.llc> by which it notified that the Complainant is carefully monitoring the use of this domain name and that it will not hesitate to take appropriate action against the Respondent, including, but not limited to, initiating Uniform Dispute Resolution Policy (UDRP) proceedings, should the Respondent start using this domain name or any trademarks belonging to the Complainant in any way which may infringe its rights. The Respondent did not respond to this letter.

Following the notification of the Complaint, the Respondent wrote to the Center an email on December 31, 2019, as follows:

“Hi can you please send me the things this domain broke/rules please and the rest of the two names of you guys want the name lego drywall is a short of four names like leticia(L)Enrique (E)G(for a last name) and the (O) for a name drywall inc Com So if a got lego.llc is because the extension appear on my browser so I decided to eliminate drywall to make it short for people to type less so how the I break the rules of domain names by picking up the first letter of the name of already explain it will be to long Leticiaenriqueguzmanolgadrywallinc.com I have a biz going on with this name
I submit this name back in 2016 and it was available thats how we became lego drywall before you still continue with this error please show me how I broke you’re rules
If this names are available and you didn’t protect them before me is there a way we can become into agreement Now if you want to know again who they are is Leticia my wife Enrique my son Olga my sister the only person I have on this country
Can you please tell me how this names first letter is broken the rules of domains. We don’t interfere whit your clients name at all check my website g.contractors.
I decided to move legodrywall to JM because we add the general-b license this year Plus if you guys are a trade mark and this names your client feel like he should be the owner his team of techs should put more attention to it Again lego drywall inc has no interest on lego/bricks

Thank you!.”

By email of January 2, 2020, the Respondent wrote to the Center as follows:

“Hi when can you take this names I want to get it done please send me the form how to transfer the names If your client feels like he owns this names he can take it I’ll be available tomorrow morning if we need to call goddady to transfer the names thank you there is no need to wait longer to resolve this dispute.”

This led to the suspension of the proceeding on January 8, 2020 (see Section 3 Procedural History above).

On this basis, the Complainant sent the WIPO Standard Settlement Form to the Respondent by email of January 9, 2020 and invited the Respondent to sign, date and return a scanned copy of the form no later than January 23, 2020. The Respondent did not agree to sign it which led to the initiation of the proceedings by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant makes in essence the following arguments:

The Complainant first claims that the dominant part of the Disputed Domain Names comprises the term “LEGO”, which is identical to the Trademark so that the Disputed Domain Names are confusingly similar to the Complainant’s Trademark. More specifically, the domain name <lego.llc> consists solely of the Complainant’s Trademark so that this domain name is identical to the Complainant’s Trademark. When comparing this domain name with the Complainant’s Trademark, the top level suffix of this domain name may properly be considered in assessing and determining confusing similarity between this domain name and Complainant’s Trademark. The Domain Name <lego.llc> consists solely of the Complainant’s Trademark and the Complainant has a Limited Liability Company (LLC) entity based in Dubai i.e., “LEGO Middle East FZ-LLC” which corresponds to this domain name’s top-level domain (TLD) “.LLC”. The fact that this TLD is related to the Complainant’s business increases the confusingly similarity between this domain name and the Complainant’s Trademark.

The domain names <legodrywall.com> and <legodrywallinc.com> further comprise the suffixes “dry”, “wall” or “inc”. The addition of these suffixes “dry”, “wall”, or “inc” do not detract from the overall impression.

The Respondent’s use of the domain name <legodrywall.com> contributes to the confusion. As Respondent is using this domain name to resolve to a website which makes several references to the Complainant’s Trademark and also displays the Trademark on a toy brick, this suggests that Respondent intended this domain name to be confusingly similar to Complainant’s Trademark as a means of furthering consumer confusion. The Respondent’s use of this domain name to resolve to a website which shows Complainant’s Trademark on a toy brick is further evidence that this domain name is confusingly similar to the Complainant’s Trademark. By using the Trademark as a dominant part of the Disputed Domain Names, the Respondent exploits the goodwill and the image of the Complainant’s Trademark, which may result in dilution and other damage for the Trademark.

With respect to the existence of the rights or legitimate interests in respect of the Disputed Domain Names, the Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the domain name <lego.llc>. Neither has the Complainant found anything, including the WhoIs details relating to this domain name that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in this domain name. Consequently, the Respondent may not claim any rights established by common usage. For the domain names <legodrywall.com> and <legodrywallinc.com>, the Complainant found that the Respondent has registered a company named “LEGO DRYWALL, INC.” in the State of California. However, the fact that the Respondent prominently displayed the Trademark on a toy brick on the website associated to the domain name <legodrywall.com> makes it very clear that the company name was chosen because of the fame of the Complainant’s Trademark. The Complainant would like to point out that many construction companies have attempted to leverage Complainant’s LEGO name to promote their own services. Therefore having a registered company name “LEGO DRYWALL, INC.” should not confer any rights or legitimate interests on the Respondent for the domain names <legodrywall.com> and <legodrywallinc.com>.

Furthermore, the domain names <legodrywall.com> and <legodrywallinc.com>, both redirect to another domain name owned by the Respondent (i.e., <g.contractors>), which prominently displays the name “JM General Contractors Inc.” The license number of this company matches the license number granted by the California Contractors State License Board for the company LEGO DRY WALL INC. However, JM General Contractors Inc and LEGO DRY WALL INC are not similar and it is also somewhat strange and disingenuous for the Respondent to display the License number of another company on its website. Finally, an exhaustive search on the Business Registry for the state of California reveals that there is no business registered to the Respondent called JM General Contractors Inc. There is “JM AND COMPANY GENERAL CONTRACTORS, INC.” which it is however registered to another party. As a result, the Respondent’s actions are deceitful and he has not sought to clarify any of this when the Complainant tried to contact him.

No license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the Trademark. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.

The Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen domain names based on a registered trademark in order to generate traffic and income by redirecting them to Respondent’s own commercial websites offering construction services, not related to the Complainant in any way. As such, the Respondent is not using the Disputed Domain Names to provide a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Past panels have determined that use of a disputed domain name to redirect internets users to content unrelated to a complainant does not automatically render the use of the disputed domain name legitimate. As the Respondent prominently displayed the Complainant’s Trademark on a toy brick on its website at the Domain Name <legodrywall.com>, it is quite clear that the Respondent is simply trying to benefit from the Complainant’s world famous Trademark.

With respect to the registration or use of the Disputed Domain Names in bad faith, the Complainant claims that the Trademark in respect of toys belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world. The awareness of the Trademark is considered, in the whole Community in general, to be significant and substantial. The number of third party domain name registrations comprising the Trademark in combination with other words has always been attractive to domain name infringers.

The Respondent registered the Disputed Domain Names on November 2, 2016 (<legodrywallinc.com>), July 28, 2017 (<legodrywall.com>) and October 2, 2019 (<lego.llc>) respectively. These dates are subsequent to the time the Complainant registered the Trademark in the United States where the Respondent resides, and elsewhere, by decades. It is quite obvious that it is the fame of the Trademark that has motivated the Respondent to register the Disputed Domain Names.

The failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith. The Complainant first tried to contact the Respondent on October15, 2019, through a cease and desist letter sent by email. The Complainantadvised the Respondent about the risk of infringing use of the LEGO Trademark within the domainname <lego.llc> and requested a voluntary transfer of the same. The Complainant also offered compensationfor the expenses of registration and transfer fees (not exceeding out of pocket expenses). However, no reply was ever received. Since the efforts to try to solve the matter amicably wereunsuccessful, the Complainant chose to file a complaint according to the UDRP process. The Disputed Domain Names are redirecting to the Respondent’s own commercialwebsites which are offering construction services, not related to the Complainant in any way. Nevertheless, no disclaimer is found on the websites. Rather, the domain name <legodrywall.com> resolves to a website where the Respondent claims to be a company named “LEGO Dry Wall Inc.” and makes several references to the Complainant’s Trademark and displays the Trademark on a toy brick. Thereby, it is quite clear that the Respondent is preying on a trademark, which is world famous for its construction toys, to attract visitors to the websites of its construction services. Consequently, the Respondent is using the Disputed Domain Names to intentionally attempt to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites.

In addition to the Disputed Domain Names, the Respondent currently holds registrations for a few other domain names that misappropriate the trademarks of well-known brands and businesses. This fact demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the Disputed Domain Names. The Respondent has indeed registered the domain names <harleydavidsoninc.com> and <harley-davidsoninc.com> that also redirect to the website associated with the domain name <g.contractors> which reinforces the fact that he registered multiple trademark-abusive domain names to intentionally confuse Internet users into visiting his websites for commercial gain. The Respondent has registered the Disputed Domain Names that each infringe upon the Complainant’s Trademark. Having registered a string of trademark infringing domain names, this demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding:

(i) the respondent’s 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 domain name; and

(iii) the respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademark.

A comparison between each of the Disputed Domain Names and the Trademark shows that the Disputed Domain Names are identical to the Trademark (for the domain name <lego.llc>) or confusingly similar to it (for the domain names <legodrywall.com> and <legodrywallinc.com>).

The top level domains, even with respect to new generic top level domains (new gTLDs) – in this case “.llc” for the domain name <lego.llc> -, are not relevant in determining identity or confusing similarity. See WIPO Panel Views on Selected UDRP Questions 3.0 (“”WIPO Overview”), Section 1.11.2.

The addition as suffix of the terms “drywall” and “drywallinc” in the respective domain names <legodrywall.com> and <legodrywallinc.com> does not prevent a finding of confusing similarity between these domain names and the Trademark and do not affect the finding that the Trademark constitutes the predominant element of these domain names.

As a result, based on the rights of the Complainant in the Trademark and on the identity or confusing similarity between the Trademark and the Disputed Domain Names, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, 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 has been commonly known by the Disputed Domain Name, even if it 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.

Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name. WIPO Panel Views on Selected UDRP Questions 3.0 (“”WIPO Overview 3.0 ”), section 2.1.

In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Complainant has indeed established that the Respondent registered the Disputed Domain Names that reflect the Trademark owned by the Complainant without the authorization of the Complainant and that the Respondent has used one of the Disputed Domain Names (i.e., <legodrywall.com>) to resolve to a website associated to another domain name owned by the Respondent (<g.contractors>) which purports to present the activities of a company named “LEGO Dry Wall Inc.” and which displays the Trademark on a toy brick identical to the Complainant’s toy bricks, in a way that can reasonably be explained only as a reference to the Complainant’s Trademark.

Based on the prima facie case made by the Complainant, the burden of proof shifts to the Respondent to come forward with relevant evidence of rights or legitimate interests in the Disputed Domain Names.

The Respondent has not formally submitted a Response in the proceedings. However, based on an email of January 2, 2020, it appears that the Respondent claims in essence that he would be legitimized to use the term “LEGO” (which is used in the corporate name of its California based company “Lego Dry Wall”) which is featured on the website associated to another domain name owned by the Respondent (<g.contractors>) to which one of the Disputed Domain Names (i.e., <legodrywall.com>) resolves. The Claimant alleges that the use of the term “lego” would be justified because it would constitute a reference to the four initials of the first names of four members of his family (starting by his wife Leticia, followed by his son Enrique, etc.) and refers to a hypothetical domain name <leticiaenriqueguzmanolgadrywallinc.com> in this context that would have been too long so that it allegedly led to the choice and the registration of the Disputed Domain Names, i.e., <legodrywallinc.com>). The Respondent has however not submitted any evidence supporting the reality of this claim relating to the alleged family-driven choice of the term “lego” that he would have made, it being noted that the Respondent operates a business under the corporate name “Lego Dry Wall” in California (based on the documents filed by the Complainant in the proceedings). It might hypothetically be claimed that such use of the Disputed Domain Names might amount to fair use.

However, fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry. See WIPO Overview 3.0, section 2.5. Panels have thus found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. WIPO Overview 3.0, section. 2.5.1. This is the case of one of the Disputed Domain Names (i.e., <lego.llc>), whereby the top level domain “.llc” does not help reducing the risk of implied affiliation because it is generic and designates limited liability companies which can apply to both the Complainant and to the Respondent.

Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1.

In this case, the Panel considers that the Respondent has not submitted a credible explanation justifying the choice of the Disputed Domain Names which correspond exactly to the Trademark (for the domain name <lego.llc>) or which predominantly features the Trademark of the Complainant (for the domain names <legodrywall.com> and <legodrywallinc.com>). The fact that the Respondent operates a business under the corporate name “Lego Dry Wall” in California does not justify nor legitimate the use of the Trademark and the image of the Complainant’s toy bricks which is made by the Respondent in connection to one of the Disputed Domain Names (i.e., <legodrywall.com>) on the website which is associated to the domain name to which it resolves.

The use of the Trademark in connection with the Disputed Domain Names cannot be legitimized either on the ground of prior use of the Disputed Domain Names in connection with an alleged bona fide offering of goods or services.

As indicated in the WIPO Overview 3.0, section 2.2, the assessment whether there is a prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may rely on various factors, including on whether there is evidence generally pointing to a lack of indicia of cybersquatting intent. In this case, there are indicia of cybersquatting activities committed by the Respondent as resulting from the registration and use of other domain names corresponding to famous third-party trademarks (i.e., <harleydavidsoninc.com> and <harley-davidsoninc.com>) by the Respondent which are used in the same way as some of the Disputed Domain Names in order to point to a third party website operated by the Respondent presenting the Respondent’s business activities in the construction industry. On this basis, the Panel considers that there is no convincing demonstration of a prior use of the Disputed Domain Names in connection with a bona fide offering of goods or services.

In this context, the fact that the Respondent might operate a business and a company in California under the name “Lego Dry Wall” under the relevant laws (the legitimacy of which is not for the Panel to decide) cannot establish the legitimacy of the registration and use of the Disputed Domain Names under the Policy given that the circumstances of this case establish that the Respondent intentionally alluded to the Complainant’s famous toy products and to the Trademark in the course of the registration and use of the Disputed Domain Names, which in turn cannot create rights or legitimate interests under the Policy. The fact that one of the Disputed Domain Names (i.e., <lego.llc>) may be inactive (it now appears to point to the website associated to the other domain name owned by the Respondent, i.e., <g.contractors>) is not relevant in this respect because there cannot be rights or legitimate interests in a domain name if there is reasonably no conceivable way to use the domain name at issue in good faith, which is precisely the case if the domain name corresponds to a well-established trademark. It is the case of the domain name <lego.llc>.

The Panel further notes that the Respondent (who has not submitted a Response in the proceedings) has not claimed and has not established that it would be commonly known by the Disputed Domain Names, it being noted that the Respondent uses another domain name for its business activities (i.e., <g.contractors>) to which one of the Disputed Domain Names points.

The Panel notes in any event that the fact that the Respondent might be in a position to operate legitimately a business and a company in California under the name “Lego Dry Wall” does not automatically give rise to a legitimate interest under the Policy.

As reflected in the WIPO Overview 3.0, section 2.2, panels carefully consider whether a respondent’s claim to be commonly known by the domain name is legitimate and mere assertions that a respondent is commonly known by the domain name will not suffice; respondents are indeed expected to produce concrete credible evidence. In this case, the Respondent has not produced any evidence supporting this.

As further noted in the WIPO Overview 3.0, section 2.2, panels will additionally typically assess whether there is a general lack of other indicia of cybersquatting and panels may refer to the respondent’s domain name-related track record more generally. In this case, there are indicia of cybersquatting activities committed by the Respondent as resulting from the registration and use of other domain names corresponding to famous third-party trademarks (i.e., <harleydavidsoninc.com> and <harley-davidsoninc.com>) by the Respondent. On this basis, the Respondent could not in any event legitimately claim that he would be commonly known by the Disputed Domain Names.

In addition, as pointed out by the Complainant, many construction companies have attempted to leverage the Complainant’s Trademark to promote their own services, and previous panels have held that these circumstances do not give rise to rights or legitimate interests under the Policy. See e.g. LEGO Juris A/S v. Dmitry Shelkovnikov, WIPO Case No. D2019-0555.

On this basis, the Panel considers that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that the Respondent has not established convincing evidence of its alleged rights or legitimate interests in the Disputed Domain Names.

Even if the argument of laches has not been expressly raised by the Respondent (who has however stated that it holds one of the Disputed Domain Names since 2016 – it being reminded that the domain name <legodrywallinc.com> was registered on November 2, 2016), the Panel notes that a mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. See WIPO Overview 3.0, section 4.17.

As a result, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that the condition of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden. See WIPO Overview 3.0, section 3.1. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the Panel holds that the Respondent registered the Disputed Domain Names in bad faith because the Disputed Domain Names clearly target the Complainant’s Trademark and famous toy products as reflected by the use of one of the Disputed Domain Names (i.e., <legodrywall.com>) to resolve to a website associated to another domain name owned by the Respondent (<g.contractors>) which displays the Trademark on a toy brick identical to the Complainant’s toy bricks. This use of one of the Disputed Domain Names constitutes a bad faith use under the Policy. It can be inferred from this that the choice of the Disputed Domain Names cannot be reasonably explained otherwise than as a reference to the Complainant’s Trademark and to the Complainant’s famous brick toy products. The registration of a company in California under the corporate name “Lego Dry Wall” (for which no credible explanation has been given as to the choice of the term “lego”) does not affect this finding (it being stated again that it is not for this Panel to decide whether the registration and use of such corporate name is admissible under the relevant laws).

The Panel further notes that the Respondent registered other domain names corresponding to famous trademarks of third parties (i.e., <harleydavidsoninc.com> and <harley-davidsoninc.com>) that also redirect to the website associated with the domain name <g.contractors> owned by the Respondent (which is the same website to which some of the Disputed Domaine Names redirect).

On this basis, the Panel considers that the circumstances relating to the registration and use of the Disputed Domain Names as well as the other circumstances of this case (specifically the registration and use of the domain names <harleydavidsoninc.com> and <harley-davidsoninc.com> by the Respondent) establish that the Respondent intentionally is using the Disputed Domain Names in an attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location pursuant to Paragraph 4(b)(iv) of the Policy.

As a result, the Panel finds that the Respondent registered and uses the Disputed Domain Names in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met.

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 <legodrywall.com>, <legodrywallinc.com>, and <lego.llc> be transferred to the Complainant.

Jacques de Werra
Sole Panelist
Date: March 3, 2020

¹ It is established that The Respondent registered the Disputed Domain Names as reflected by the fact the WHOIS information relating to the Disputed Domain Names all include the same email address and identify the same person (so that there is only one respondent in these proceedings).