WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Super Privacy Service LTD c/o Dynadot / Yuejuan Mao
Case No. D2020-1695
1. The Parties
Complainant is LEGO Juris A/S of Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Yuejuan Mao, China.
2. The Domain Names and Registrar
The disputed domain name <mylego365.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2020. On June 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2020, 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 Complainant on July 8, 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 July 10, 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 July 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 4, 2020.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on September 10, 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, a multinational company based in Denmark, is a major international creator of toys, games, and other products. Complainant is the owner of several marks for LEGO around the world. These include Denmark Registration No. VR196300094 (registered January 12, 1963); United States Registration Nos. 1018875 (registered August 26, 1975) and 1026871 (registered December 9, 1975); and China Registration No. 75682 (registered December 22, 1976), where Respondent lists an address of record. Due to extensive use, advertising, and revenue associated with its LEGO mark, Complainant enjoys a high degree of renown associated with these marks around the world.
Complainant owns the registration for numerous domain names that include its registered LEGO mark, including <lego.com>. Complainant uses this domain name to connect to a website through which it informs potential customers about its LEGO mark and its toys, and its other related products.
The disputed domain name <mylego365.com> was registered on April 20, 2020. The URL associated with the disputed domain name resolves to a website with sponsored links that appear to be advertising or offering online gambling. Respondent has no affiliation with Complainant. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
5. Parties’ Contentions
Complainant contends that (i) the disputed domain name <mylego365.com> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that it owns the LEGO mark, which various global rankings and prior UDRP panels have found to be distinctive and famous throughout the world. Complainant contends that Respondent has incorporated its well-known LEGO mark into the disputed domain name, and merely added the descriptive terms “my” and “365”.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name, and rather has registered and is using it in bad faith, having simply acquired the disputed domain name for Respondent’s own commercial gain.
Respondent did not reply to Complainant’s contentions in this proceeding.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether <mylego365.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s well-known, registered trademark LEGO, and merely adds the descriptive terms “my” and “365”.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step-Web, WIPO Case No. D2000‑1500 (transferring <microsofthome.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); and CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>) and section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Furthermore, the specific term “365” when added to a complainant’s registered mark, has been found not to make it less “identical or confusingly similar”. See F. Hoffmann-La Roche A.G. v. Kovtun, WIPO Case No. D2016-0852 (transferring <accutane365.click>); citing Lego Juris A/S v. shenglan li, WIPO Case No. D2012-0373 (transferring <365lego.com> and finding that 365 is a “generic term commonly referring to 365 days in a year.”)
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Respondent did not reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name. Rather, as mentioned in section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a website with sponsored links that appear to be advertising or offering online gambling.
Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of rights or legitimate interests in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in section 4 of this Panel’s decision, Respondent has set up a website at the URL associated with the disputed domain name, and provided sponsored links to other websites. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. The Panel finds that the added words (“my” and “365”) can be perceived by Internet users as descriptive of a website where they could find personalized information about Complainant’s LEGO products and services year-round, or 365 days a year.
Furthermore, considering the high degree of renown of Complainant’s LEGO marks around the world the Panel finds strong evidence that Respondent was likely aware of Complainant’s rights and marks when registering the disputed domain name. See Lego Juris A/S v. Michael Longo, WIPO Case No. D2008-1715 (transferring <legonetworks.com>); Lego Juris A/S v. Reginald Hastings Jr., WIPO Case No. D2009-0680 (transferring <legosaurusrex.com>); Lego Juris A/S v. Duma Haryanto, WIPO Case No. D2011-0862 (transferring <legomindstormsrcx.com>).
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.
For all 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 <mylego365.com> be transferred to Complainant.
Date: September 19, 2020