About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Titan Bahis, Titanbahis

Case No. D2020-3046

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 / Titan Bahis, Titanbahis, Turkey.

2. The Domain Name and Registrar

The disputed domain name <lego.rest> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2020. On November 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 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 the Complainant on November 19, 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 November 23, 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 November 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2020.

The Center appointed James Bridgeman SC as the sole panelist in this matter on December 30, 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 producer of construction toys, computer hardware and software, books, videos, and computer controlled robotic construction sets and the owner of the LEGO trademark for which it owns an extensive international portfolio of trademark registrations including the following examples:

- United States of America trademark registration LEGO, registration number, 1,018,875, registered on the Principal Register on August 26, 1975 for goods in International class 28;
- Panama trademark registration LEGO, registration number 23428 01, registered on June 11, 1979 for goods in International class 28.

The Complainant has an established Internet presence and maintains a website at “www.lego.com”.

The disputed domain name was registered on July 22, 2020 and the evidence shows that it does not resolve to any active website.

In the absence of any response to the Complaint, there is no information available about the Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Center for verification of the registration details of the disputed domain name. The Respondent has availed of a privacy protection service to conceal his identity on the published WhoIs.

5. Parties’ Contentions

A. Complainant

The Complainant claims rights in the LEGO trademark acquired by its ownership of the trademark registrations described above and its extensive global use of the mark in its sale of its LEGO-branded products and provision of services.

The Complainant alleges that the disputed domain name is identical or confusingly similar to its LEGO trademark submitting that the disputed domain name consists solely of the Complainant’s LEGO mark. The Complainant adds that the generic Top-Level Domain (“gTLD”) extension “.rest” is not relevant for the purposes of comparison because it has no impact on the overall impression created by the disputed domain name, which makes an obvious association with the Complainant’s trademark, thereby creating considerable risk that the public will perceive the disputed domain name to be owned by or in some way associated with the Complainant.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name, submitting that the Complainant has not found any evidence that the Respondent owns any registered trademarks or trade names corresponding to the disputed domain name or anything that would suggest that the Respondent has been using the term LEGO in any other way.

The Complainant asserts that it has not given any license or authorization to the Respondent, to use the trademark LEGO. The Complainant refers to Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 wherein the panel stated that: “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent.”

The Complainant adds that the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.

The Complainant further submits that because LEGO is a famous trademark worldwide, any unauthorized use of the mark in a domain name would violate the rights of the Complainant as the trademark owner and argues that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant refers to a screenshot of the blank page that is generated when searching for a web location to which the disputed domain name resolves. The Complainant alleges that the screenshot illustrates that the Respondent has failed to make use of the disputed domain name as a website address and has not demonstrated any attempt to make legitimate use of the disputed domain name.

The Complainant further submits that the disputed domain name was registered and is being used in bad faith, alleging that the registration of the disputed domain name was motivated by an intention to target the Complainant’s goodwill. The Complainant argues that because it enjoys such a substantial and widespread reputation throughout the world, the LEGO mark is frequently targeted by infringing registrations of domain names. The Complainant lists numerous instances of successful complaints that it has brought under the Policy to protect its trademark and argues that the Respondent was similarly motivated to register the disputed domain name.

As the disputed domain name currently resolves to an inactive site, which the Complainant submits passive holding that constitutes bad faith registration and use pursuant to Policy paragrah 4(a)(iii) as identified in Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainant also cites Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260, where the panel made a finding of bad faith registration and use where the respondent made no use of the domain name in question and there were no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose.

The Complainant submits that there is no possible good faith use for the disputed domain name because of the strength of the Complainant’s mark; that the disputed domain name registration can only be taken as intending to cause confusion among Internet users as there is no plausible good-faith reason or logic for its registration, but rather, the registration is indicative of an intention to hold the disputed domain name “for some future active use in a way which would be competitive with or otherwise detrimental to the Complainant”. The Complainant cites Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.

The Complainant adds that it first tried to contact the Respondent on August 6, 2020 through a cease and desist letter sent by email, a copy of which is annexed to the Complaint, in which it advised the Respondent that the unauthorized use of the LEGO trademark within the disputed domain name violated the Complainant’s rights in the LEGO trademark, requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). No reply was ever received.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to establish that:

(i) the disputed 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 disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant has adduced clear, convincing and uncontested evidence of its rights in the LEGO trademark acquired by its ownership of the trademark registrations described above and its extensive use of the mark in its sale of products and provision of services including on its website.

The disputed domain name <lego.rest> is identical to the Complainant’s LEGO trademark because the gTLD extension “.rest” may be ignored for the purposes of comparison as in the circumstances of this case, and it would be perceived as a necessary technical element of a domain name.

The Panel finds that the Complainant has therefore proven that the disputed domain name is identical to the LEGO trademark in which it has rights and has satisfied the first element of the test in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, submitting

- that the Complainant has not found any evidence that the Respondent owns any registered trademarks or trade names corresponding to the disputed domain name or anything that would suggest that the Respondent has been using LEGO in any other way;
- that the Complainant has not given any license or authorization to the Respondent, to use the LEGO trademark;
- that the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant;
- that LEGO is a famous trademark worldwide and any unauthorized use of the mark in a domain name would violate the rights of the Complainant as the trademark owner;
- that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services;
- that the screenshot of the blank page that was generated when searching for a web location to which the disputed domain name resolves illustrates that the Respondent has failed to make use of the disputed domain name as a website address and has not demonstrated any attempt to make legitimate use of the disputed domain name.

It is well established that when a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name in issue, the burden of production shifts to the respondent to establish such rights or interests. In casu, the Respondent has failed to discharge the burden of production and therefore this Panel must find that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has therefore succeeded in the second element of the test in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the strength and extent of the reputation and goodwill of the LEGO mark, it is most improbable that the Respondent was unaware of the Complainant and its LEGO mark when the disputed domain name was chosen and registered. Given the distinctiveness and fame of the mark, it is improbable that the disputed domain name was registered for any reason other than to target and take predatory advantage of the Complainant’s goodwill and reputation.

The Complainant has argued that because it is frequently targeted by infringing activity and has referred to a long list of domain name cases in which it has been successful. Each case must however be considered on its own facts and taken on its own merits, and regardless of how long such a list of previous successes may be, it is of no probative value unless it can be shown that it has been successful against the present Respondent on previous occasions.

The Complainant has shown that the disputed domain name is not being used as a website address and there is no evidence that it is being put to any active use.

Looking at the totality of the circumstances in this case, and taking into account that the LEGO mark is highly distinctive; that the Complainant and the LEGO mark share a global reputation and goodwill; the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good-faith use of the disputed domain name; the Respondent’s failure to respond to the cease-and-desist letter sent on behalf of the Complainant on August 6, 2020; that the Respondent has used a privacy service to conceal its identity on the published WhoIs; that the disputed domain name is identical to the Complainant’s trademark, consisting of the mark in its entirety with no additional elements; and that it is most implausible given the distinctiveness and reputation of the LEGO mark, that the disputed domain name could be put to any unauthorized good faith use; this Panel finds that the passive holding of the disputed domain name by the Respondent amounts to use in bad faith for the purposes of the Policy.

As the Complainant has proven on the balance of probabilities that the disputed domain name was registered and is being used in bad faith, the Panel finds that the Complainant has succeeded in the third and final element of the test in paragraph 4(a)(iii) of the Policy and is entitled to the relief requested in the Complaint.

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 <lego.rest> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Date: January 12, 2021

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/