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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Eric Meals

Case No. D2020-0823

1. The Parties

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

Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Eric Meals, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <legos2legos.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2020. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 4, 2020, 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 Complainant on April 13, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 14, 2020.

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 Respondent of the Complaint, and the proceedings commenced on April 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 13, 2020.

The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on May 28, 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

Complainant is a limited company incorporated in Denmark, with its principal place of business at Koldingvei, Denmark. Complainant is a designer and manufacturer of toys and playing materials for children together with computer hardware and software, books, videos and computer robotic construction sets. Complainant has subsidiaries and branches worldwide. Its products are sold in more than 130 countries.

Complainant is the owner of numerous registrations of its LEGO trade mark (“Complainant’s Mark”) with the earliest being registered in 1955, as well as approximately 5,000 domain names containing the term “lego”. Complainant’s trade mark registrations include United States trademark registration No. 1018875, registered on August 26, 1975. Complainant also maintains an extensive website under the domain name <lego.com>.

According to the publicly available WhoIs, the Domain Name was registered on December 31, 2019. Complainant provided evidence that the website related to the Domain Name is displaying pictures of LEGO products and redirecting Internet users to other websites.

Complainant sent cease and desist letters to Respondent on January 31, February 7, and February 14, 2020. However, no response was received.

5. Parties’ Contentions

A. Complainant

Complainant states that Complainant’s Mark is among the best-known trade marks in the world due in part to decades of extensive advertising, packaging and promotional materials, and that Complainant’s Mark and brand has been recognised as being famous, as has been confirmed in previous UDRP decisions.

Complainant contends that the Domain Name is confusingly similar to Complainant’s Mark in that it repeats its trade mark LEGO twice in the Domain Name. Further, Complainant contends that the addition of the letter “s” and the number “2” does not detract from the overall impression. Complainant suggests that an Internet user seeing the Domain Name is likely to mistake it for a domain name related to Complainant, therefore creating a likelihood of confusion. Complainant submits that Respondent is exploiting the goodwill and image of Complainant’s Mark which could result in dilution and damage to Complainant’s Mark.

Complainant states that Complainant and Respondent are not linked, and that no license or authorisation of any kind has been given by Complainant to Respondent to use Complainant’s Mark. Nor is Respondent an authorised dealer of Complainant’s products. As such, Complainant states that Respondent cannot claim any rights established by common usage.

Complainant asserts that Respondent has registered the Domain Name in bad faith as at the time of initial filing of the Complaint, Respondent had employed a privacy service to hide its identity. Complainant further asserts that the Domain Name is connected to a website directing Internet users to another commercial website, namely “www.ebay.com”, which on top of Complainant’s products, also offers a wide range of competing brands. Complainant further asserts that Respondent is using the Domain Name to intentionally attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of its website.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant is as the manufacturer of the well-known and long-established brand of children’s toys and playing materials LEGO. Since 1955, Complainant has secured registration of its LEGO trade mark, referred to above as Complainant’s Mark.

Complainant contends that the Domain Name is confusingly similar to Complainant’s Mark. That is, insofar as it repeats the trade mark LEGO twice in the Domain Name and adds the letter “s” and the number “2”. Complainant argues that this does not detract from the overall impression of the Domain Name. Given the distinctive character of the word “lego” and the non-distinctive character of the letter “s” and the number “2” this argument has merit. The additional letter and number do not prevent a finding of confusing similarity between Complainant’s Mark and the Domain Name.

Respondent does not explain why it chose to use Complainant’s Mark in its Domain Name. In the absence of a response and any attempt at an explanation, it is found that:

a) Complainant has rights in respect of Complainant’s Mark; and,

b) The Domain Name is confusingly similar to Complainant’s Mark.

Accordingly, the Panel is satisfied that the first element of the Policy has been met.

B. Rights or Legitimate Interests

In terms of whether Respondent has rights or legitimate interests in the Domain Name, in the absence of any response or explanation, the Panel finds that Respondent is not sponsored by or affiliated with Complainant. Nor has Respondent been licensed, authorized, or permitted to register domain names incorporating Complainant’s Mark. Further, Respondent is not commonly known by the Domain Name.

Based on Complainant’s assertions, the Domain Name is being used to direct Internet users to a commercial website linked to a third party. The website offers, inter alia, a wide range of competing brands. This suggests that the Domain Name is being used for monetization purposes.

Based on the above, the Panel is therefore satisfied that the second element of the Policy has been met.

C. Registered and Used in Bad Faith

Given Complainant’s use and registration of Complainant’s Mark, and its international repute, the Panel infers that Respondent knew of Complainant’s Mark when registering the Domain Name.

Noting the competing use of the Domain Name and lack of any plausible good faith use, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s Mark. The Panel finds that Respondent registered and is using the Domain Name to take bad faith advantage of Complainant’s long-standing interest in Complainant’s Mark, at the time of registration of the Domain Name, and since.

The Panel thus finds that the third limb of the Policy has been 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 name <legos2legos.com> be transferred to Complainant.

Clive L. Elliott Q.C.
Sole Panelist
Date: June 15, 2020

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