WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Oscar Hampton, Cpa Agc
Case No. D2020-3415
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 / Oscar Hampton, Cpa Agc, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <legomovie.xyz> is registered with NameCheap, Inc. (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 disputed domain names. On December 15, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details / 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 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 18, 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 January 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2021.
The Center appointed Nels T. Lippert as the sole panelist in this matter on February 23, 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.
4. Factual Background
The Complainant is based in Denmark and is the owner of the LEGO trademark and other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products. The Complainant has registrations of the LEGO trademark in numerous countries around the world, including specifically, United States Registration No. 1018875 issued August 26, 1975; European Union Trademark Registration No. 000038800, issued May 10, 1998; and Indonesia Registration No. IDM000208750, issued June 26, 2009 (Annex 3.1 to Complaint).
The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including the Unites States and Europe.
The Complainant has several cinematic features associated with the LEGO brand and trademark including: The LEGO Movie; The LEGO Movie 2; The LEGO Batman Movie; and The LEGO Ninjago Movie. The Complainant has furthermore expanded use of the LEGO trademark to, inter alia, computer hardware and software, books, videos, and computer controlled robotic construction sets.
The disputed domain name was registered by the Respondent on August 13, 2020. The disputed domain name resolves to a website that apparently offers streaming and download of movies and TV shows that are not related to the Complainant.
5. Parties’ Contentions
The Complainant contends the disputed domain name is confusingly similar to the Complainant’s LEGO trademark because it includes the LEGO mark in its entirety and the addition of the term “movie” does not impact on the LEGO formative which is a world-famous trademark. The Complainant, points to prior decisions of UDRP panelists for the proposition that the LEGO trademark has achieved a high degree of fame.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent is not in any way associated with the Complainant and has not received authorization or license to use the LEGO trademark from the Complainant. Further, the Complainant notes 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 additionally asserts that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen the disputed domain name in order to generate traffic and income through what is asserted to be a pirated content website, offering streaming and download of movies and TV shows that are not related to the Complainant.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith because the Respondent registered the disputed domain name subsequent to when the Complainant registered the LEGO trademarks in major jurisdictions and, therefore, must have been aware of the prior rights of the Complainant to the LEGO trademark. Also, the Respondent’s use of the disputed domain name to resolve to a website offering streaming and download of movies and TV shows, not related to the Complainant is an intentional attempt to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complaint’s trademark.
Finally, the Complainant asserts the Respondent’s failure to respond to a cease and desist letter and use of a privacy service to hide his identity are further evidence of bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
In this case, the disputed domain name incorporates the Complainant’s LEGO trademark in its entirety with the addition of the descriptive term “movie”. As noted in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other descriptive terms would not prevent a finding of a confusing similarity under the first element. Here the addition of the descriptive term “movie” does not operate to prevent a finding of confusing similarity, as the LEGO trademark is incorporated in full in the disputed domain name.
Furthermore, the addition of the applicable Top-Level Domain is viewed as a standard registration requirement and, as such, is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11. Therefore, the disputed domain name is confusingly similar to the Complainant’s LEGO trademark.
The Panel finds the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s mark in the disputed domain name. The Complainant contends that none of the circumstances under paragraph 4(c) of the Policy would apply in this case. The Respondent has not advanced rights or legitimate interests to rebut the Complainant’s prima facie case, and none are evident from the record or the use of the disputed domain name. To the contrary, according to the unrebutted allegations of the Complainant (supported by evidence) the Respondent has used the disputed domain name to redirect traffic to its website; this unequivocally shows lack of rights or legitimate interests on the Respondent’s part.
The Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In this case, the Complainant has submitted compelling evidence that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered by the Respondent many years after the Complainant’s LEGO mark was registered and used in many counties including in the United States, Europe, and Indonesia. Given the distinctive and global significance of the Complainant’s LEGO trademark, it is difficult to conclude that the Respondent was not aware of the Complainant’s trademark prior to registering the disputed domain name.
As noted in WIPO Overview 3.0, section 3.1.4, “[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” That is the case here. It is clear that the Respondent registered and, at least at the time of the Complaint, used the disputed domain name to misleadingly divert Internet users to its website which offers competing products and/or services that are not related to Complainant.
Finally, the Panel agrees with the Complainant that the failure to respond to the cease and desist letter is further evidence of bad faith.
Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith and the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 disputed domain names, <legomovie.xyz> be transferred to the Complainant.
Nels T. Lippert
Date: March 9, 2021