WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Karen Neal
Case No. D2020-3404
1. The Parties
The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Karen Neal, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name, <axlego.com> (the “Domain Name”), is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2020. On December 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 15, 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 the Complainant on December 16, 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 December 17, 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 December 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2021.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 14, 2021. 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.
The invitation to the Complainant to file an amended Complaint stemmed from the fact that at the time of the submission of the Complaint the identity of the registrant of the Domain Name was not available to the Complainant on a search of the Registrar’s WhoIs database. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name is currently registered. The amended Complaint names the underlying registrant as the Respondent.
4. Factual Background
The Complainant is a Denmark based toy manufacturer, which has marketed its products worldwide under and by reference to the “Lego” name for many decades. It is the registered proprietor of numerous trade mark registrations of or including the “Lego” name. For present purposes it is only necessary to mention one of them, namely:
United States Trademark Registration No. 1018875 LEGO (word mark) registered on August 26, 1975 (application filed on September 17, 1974, in class 28 for inter alia toy building blocks). The registration features a first use in commerce claim of June 4, 1953.
The Domain Name was created on November 20, 2019, and is connected to a pay-per-click webpage containing “Related Links” currently labelled in capital letters as “window replacement and repair”, “how much does five g cost”, “trailer axles”, “best charity to donate a car”, “utility vehicle”, and “utility trailer”.
5. Parties’ Contentions
The Complainant contends that the Respondent selected the Domain Name in bad faith for its confusing similarity to the Complainant’s LEGO trade mark and having no rights or legitimate interests in respect of the Domain Name. The Complainant contends that the Respondent has been using the Domain Name in bad faith to attract Internet users to her pay-per-click website for commercial gain on the back of the fame of the LEGO trade mark. The Complainant contends that the Respondent registered the Domain Name and has been using it in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark 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 Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the letters “a” and “x” followed by the Complainant’s registered trade mark LEGO and the “.com” generic Top-Level Domain (“gTLD”) identifier.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Complainant’s registered trade mark is readily recognizable in its entirety in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant’s case under this element of the Policy commences as follows:
“The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. Neither has the Complainant found anything, including the whois details, that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by common usage.”
The Complainant goes on to state that it has not granted the Respondent any licence to use its LEGO trade mark.
Paragraph 4(c) of the Policy sets out circumstances, any of which if found by the Panel to be present shall demonstrate rights or legitimate interests for the purposes of this element of the Policy. The Complainant contends that none of them is applicable. Specifically, the Complainant asserts that the Respondent selected the Domain Name precisely for its confusing similarity to the Complainant’s trade mark and connected it to a revenue earning pay-per-click webpage, relying upon Internet users being attracted to the webpage on the back of the fame of the LEGO trade mark and in the mistaken belief that the website is a website of or authorized by the Complainant. The Complainant contends that such a use cannot constitute a bona fide offering of goods and services for the purposes of paragraph 4(c)(i) of the Policy; nor can it constitute a legitimate noncommercial or fair use of the Domain Name for the purposes of paragraph 4(c)(iii) of the Policy.
The Complainant points out that there is no evidence to suggest that the Respondent is commonly known by the Domain Name (paragraph 4(c)(ii) of the Policy).
The Panel is satisfied that the Complainant has made out a prima facie case under this element of the Policy; in other words a case calling for an answer. However, the Respondent has elected not to respond to the Complainant’s contentions.
In the absence of any explanation from the Respondent, the Panel cannot conceive of any basis upon which the Respondent might reasonably be said to have rights or legitimate interests in respect of the Domain Name and finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Complainant relies upon sub-paragraph (iv), which provides: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
As can be seen from C above the Panel has found on the unchallenged evidence of the Complainant that the Respondent registered the Domain Name, a domain name confusingly similar to the Complainant’s LEGO trade mark, with knowledge of that trade mark and with intent to use the reputation of that trade mark to attract Internet users to her pay-per-click website for commercial gain. While visitors to the Respondent’s website will immediately realize that the website is not a website of or authorized by the Complainant, it is the view of the Panel that many of them will have visited the website in the erroneous belief that it is such a website. Having arrived at the website they are faced with a variety of advertising links providing the Respondent with an opportunity to receive pay-per-click and/or other forms of advertising revenue. In the view of the Panel, the Respondent hoped and anticipated that visitors to her website would explore the links to be found there. It is not for the Panel to assume that she failed in her endeavour.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <axlego.com>, be transferred to the Complainant.
Date: January 18, 2021