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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Truong Bui

Case No. D2020-2457

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Truong Bui, Viet Nam.

2. The Domain Names and Registrar

The disputed domain names <legomovie.store> and <movielego.store> are registered with NameCheap, Inc. NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2020. On September 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 22, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 24, 2020 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 September 25, 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 the Respondent of the Complaint, and the proceedings commenced on October 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2020.

The Center appointed Anne Gundelfinger as the sole panelist in this matter on November 16, 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 LEGO Juris A/S, a Danish limited company best known for its popular construction toys and associated entertainment products and theme parks. The Complainant trades in over 130 countries around the world under the LEGO brand as well as online at “www.lego.com”. It owns hundreds of trademark registrations globally for its LEGO trademark and service mark (hereafter the “Mark” or the “LEGO Mark”), including the following registrations:

- United States of America Trademark Registration No. 1,018,875, registered on August 26, 1975;
- European Union Trade Mark Registration No. 000039800, registered on October 5, 1998; and
- Viet Nam Trademark Registration No. 60988, registered on March 14, 2005.

The Complainant has demonstrated with substantial evidence that LEGO Mark is among the most
well-known and well-respected brands in the world. For example, Superbrands UK lists LEGO as the number 1 Consumer Superbrand for 2019 and number 8 in the Consumer Relevancy Index. Similarly, the Reputation Institute recognized the LEGO Group as number 1 on its list of the world’s Top 10 Most Reputable Global Companies of 2020, and has included it on its top 10 list for 10 consecutive years. In 2014, TIME magazine named LEGO to be the Most Influential Toy of All Time.

Moreover, the fame and distinctive character of the Complainant’s LEGO Mark has been recognized in numerous UDRP decisions. See e.g., 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; LEGO Juris A/S v. Contact Privacy Inc. Customer 1246240368 / Nguyen Anh Duy, WIPO Case No. D2020-0822; LEGO Juris A/S v. lin zhang, WIPO Case No. D2020-0675; LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Eric Meals, WIPO Case No. D2020-0823; LEGO Juris A/S v. Nadir Boukeraa, WIPO Case No. D2020-0874; and LEGO Juris A/S v. Wu Zhang, WIPO Case No. D2020-0914.

According to the Registrar’s WhoIs records, the first disputed domain name <legomovie.store> was registered on June 8, 2020, and the second disputed domain name <movielego.store> was registered on June 12, 2020. Neither of the disputed domain names currently resolves to an active website. However, at the time of discovery by the Complainant, both the disputed domain names resolved to commercial websites purporting to sell what appeared to be the Complainant’s products. The website at the first disputed domain name <legomovie.store> bore the branding DN LEGO in a logo format, and the website at the second disputed domain name <movielego.store> bore the branding MOVIE LEGO also in a logo format.

Upon becoming aware of the registration of the disputed domain names the Complainant sent more than one cease and desist letters to the Respondent. The Complainant received no reply.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to its long-used, globally-registered, and globally famous LEGO Mark because the disputed domain names wholly incorporate the Mark along with the common English term “movie”, which also refers to products offered by the Complainant under the LEGO Mark, e.g., The LEGO Movie, The LEGO Movie 2, The LEGO Batman Movie, and The LEGO Ninjago Movie.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names, and that the disputed domain names were registered and have been used in bad faith. The Complainant has presented substantial evidence in support of these contentions.

Specifically, the Complainant asserts inter alia that (a) the Complainant’s Mark is famous and well known globally, so much so that the Respondent must have known of and targeted the Complainant’s Mark in registering the disputed domain names, (b) the Complainant has given no authorization for use of the disputed domain names, (c) the Respondent is not an authorized dealer for the Complainant’s products, (d) the Respondent is not commonly known by the disputed domain names, (e) the Respondent’s use of the disputed domain names for websites purporting to sell the Complainant’s own movie and other products both fails to establish rights or legitimate interests and also demonstrates the Respondent’s bad faith registration and use, (f) the Respondent’s use of the disputed domain names was misleading and created a likelihood of confusion as to the source or sponsorship of the Respondent’s websites, (g) the Respondent has engaged in a pattern of cybersquatting on LEGO-based domain names in the past, and (h) when registering the disputed domain names the Respondent cloaked its true identity by use of a domain name privacy service, which is further evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to be successful in this action: (i) the disputed domain names are identical or confusingly similar to trademarks or service marks 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 used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names wholly incorporate the Complainant’s LEGO Mark along with the term “movie”. It is well-established that the addition of other terms (whether generic, descriptive, geographical, pejorative, meaningless, or otherwise) to a complainant’s mark does not prevent a finding of confusing similarity between a domain name and that mark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and cases cited therein. See also, Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017-0287. Similarly, the addition of the generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test.

Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s Mark under the requirements of the Policy, and that the first element of the test is satisfied.

B. Rights or Legitimate Interests

It is well established that a complainant must present a prima facie case in relation to the second element of the test, not mere allegations. Once a prima facie showing is made, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. This burden-shifting is appropriate given that the respondent is often the only party with access to evidence of its own rights or legitimate interests. Given this, where a respondent fails to file a response, a panel may draw inferences from the failure to respond as appropriate under the circumstances of the case and while still weighing all available evidence irrespective of whether a response is filed. See, section 2.1 of the WIPO Overview 3.0 and cases cited therein. See also, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here the Complainant has averred that it did not authorize the Respondent’s use of the disputed domain names and that the Respondent is not an authorized dealer of the Complainant. The Complainant further argues that the Respondent is not commonly known by the disputed domain names and is not using them in connection with a bona fide offering of goods and services.

Given the Respondent’s clear targeting of the Complainant’s world-famous LEGO Mark (discussed further below), it is difficult to see how the Respondent could have any legitimate interest in the disputed domain names. One could argue that if the Respondent were reselling genuine Lego products under the two disputed domain names, the Respondent might have some legitimate interest in making a reseller fair use under the fair use principles articulated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. See also, section 2.8 of the WIPO Overview 3.0 and cases cited therein. However, in the absence of a response from the Respondent, we cannot tell whether the goods being sold on the two websites are genuine or fake and therefore whether or not the Respondent is a legitimate reseller. Moreover, even if the goods being offered by the Respondent are genuine, the content of the two websites does not otherwise satisfy the Oki Data fair use factors, especially in view of the Respondent’s use of misleading LEGO-based branding on the two websites.

Accordingly, based on the evidence before it, and in the absence of countervailing evidence from the Respondent, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names, and that the second element of the test is satisfied.

C. Registered and Used in Bad Faith

The third element of the test requires a showing that the disputed domain names have been registered and used in bad faith. As previously concluded, the disputed domain names are confusingly similar to the Complainant’s world-famous LEGO Mark. Indeed, given the global fame and highly distinctive nature of the LEGO Mark (recognized by many previous UDRP panels), as well as the use of the term “movie” and the purported sale of the Complainant’s products (or possibly counterfeits thereof), there can be no doubt that the Respondent knew of and was targeting the Complainant’s Mark. Moreover, the Respondent has an established pattern of targeting the Complainant’s Mark. See e.g., LEGO Juris A/S v. Truong Bui, truongbui1991, WIPO Case No. D2019-2894; LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Truong Bui, truongbui1991, WIPO Case No. D2020-1706; and LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Truong Bui, truongbui1991, WIPO Case No. D2020-1696. Given the sale of products on the two websites under the disputed domain names, it is clear that the targeting of the Complainant’s Mark was for commercial gain. Accordingly, the Respondent’s bad faith has been established. See, paragraph 4(b)(iv) of the UDRP; sections 3.1 and 3.1.4 of the WIPO Overview 3.0 and cases cited therein.

Finally, while not necessary to the finding, the Respondent’s use of a privacy protection service raises an inference of and further supports a finding of bad faith registration. See, section 3.6 of the WIPO Overview 3.0 and cases cited therein.

Accordingly, the Panel concludes that the disputed domain names were registered and have been used in bad faith, and that the third element of the test is satisfied.

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 <legomovie.store> and <movielego.store> be transferred to the Complainant.

Anne Gundelfinger
Sole Panelist
Date: November 30, 2020

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