WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Registration Private, Domains by Proxy, LLC / Leonel Andaya

Case No. D2021-0563

1. The Parties

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

The Respondent is Registration Private, Domains by Proxy, LLC, United States of America (“United States”) / Leonel Andaya, United States.

2. The Domain Name and Registrar

The disputed domain name <legosenthusiast.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2021. On February 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 25, 2021, 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 February 26, 2021, 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 March 2, 2021.

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 March 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2021.

The Center appointed Nicholas Weston as the sole panelist in this matter on April 7, 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 operates a business selling toys in more than 130 countries. The Complainant holds registrations for the LEGO trademark and variations of it in numerous countries including the United States, which it uses to designate toy building blocks and connecting links. The United States trademark registration no. 1018875, LEGO, has been in effect since 1974.

The Complainant conducts business on the Internet using numerous domain names containing the word “lego”, including <lego.com>, with a toy business website resolving from these domains. The Complainant also owns more than 5,000 domain names comprising or containing the word “lego”.

The Respondent registered the Disputed Domain Name <legosenthusiast.com> on September 2, 2020, which resolves to an inactive Shopify web page.

5. Parties’ Contentions

A. Complainant

The Complainant cites its trademark registrations of the trademark LEGO in various countries as prima facie evidence of ownership.

The Complainant submits that the mark LEGO is well known (citing 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; and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680). The Complainant submits that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the LEGO trademark (citing Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488) and that the similarity is not removed by the addition of the letter “s” or the word “enthusiast”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademark (citing Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055). The Complainant also contends that the Respondent “has not demonstrated any attempt to make legitimate use of the Domain Name and website, which evinces a lack of rights or legitimate interests in the Domain Name” (citing Philip Morris USA Inc. v. Muhammad Faisal, WIPO Case No. D2016-0621, “[a]s the Respondent is not actively using the Domain Names, the Panel is of the view that the Respondent is not making a legitimate noncommercial or fair use of the Domain Names”).

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, citing the fame of its trademark, the incorporation of that well known trademark into the Disputed Domain Name, the passive use of the Disputed Domain Name to resolve to an inactive Shopify website, the employment of a privacy service, and the Respondent’s failure to reply to its cease and desist communications, as evidence indicative of the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark LEGO in numerous countries, e.g., pursuant to United States Trademark No. 1018875 registered in 1975. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). This Panel is so satisfied.

The Panel also finds that the mark LEGO is well known: see LEGO Juris A/S v. Rampe Purda /Privacy--Protect.org, WIPO Case No. D2010-0840 (“LEGO is clearly a well-known mark”); LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260 (“In the present case, the disputed Domain Names incorporate the Complainant’s well-known registered trademark LEGO”); and LEGO Juris A/S v. Reginald Hastings Jr, supra (“LEGO is a mark enjoying high reputation as construction toys popular with children”).

Turning to whether the Disputed Domain Name is identical or confusingly similar to the LEGO trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) the Complainant’s trademark LEGO; (b) followed by the letter “s”; (c) followed by the word “enthusiast”; (d) followed by the generic Top-Level Domain (“gTLD”) “.com”.

It is well established that the gTLD used as part of a domain name is normally disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; and Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The relevant comparison to be made is with the second level portion of the Disputed Domain Name: “legosenthusiast”.

It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).

In this case, the Disputed Domain Name is comprised of the Complainant’s trademark LEGO combined with the letter “s” and the word “enthusiast” which, in line with numerous previous UDRP decisions, does not prevent a finding of confusing similarity (see Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554; Dr. Ing. h.c. F. Porsche AG v. “Porsche AG”, WIPO Case No. D2002-0103; and Bayerische Motoren Werke Aktiengesellschaft, Rolls-Royce Motor Cars Limited v. Mr David Redshaw, Auto Crowd, Auto Crowd Group / MEDIAGROUP24/ WhoisGuard Protected / WhoisGuard, Inc., WIPO Case No. D2015-0589).

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).

The Complainant contends, prima facie, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “No license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO [and] the Respondent has intentionally chosen a domain name based on a registered trademark in order to redirect Internet users to an inactive Shopify website that lacks content”. The Complainant contends that, in doing so, “it is quite clear that the Respondent is simply trying to benefit from the Complainant’s world famous trademark”.

On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data, supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.

This Panel finds that the use of the Disputed Domain Name to resolve to a landing page for an inactive Shopify webpage does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the substantial reputation and goodwill of the Complainant’s mark or capacity to otherwise mislead Internet users.

The Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.

The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.

On the issue of registration, the trademark LEGO is such a famous mark for toy building blocks and connecting links that it would be inconceivable that the Respondent might have registered the Disputed Domain Name unaware of it.

Further, a gap of years between registration of a complainant’s trademark and a respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name 45 years after the Complainant established registered trademark rights in the LEGO mark in the United States.

On the issue of use, the evidence is that the Disputed Domain Name resolves to an inactive Shopify webpage unconnected with any bona fide supply of goods or services by the Respondent. WIPO Overview 3.0, section 3.3 sets out a non-exhaustive list of factors that have been considered by previous UDRP panels as relevant – having regard to the totality of the circumstances in each case – in determining whether the non-use of a domain name may prevent a finding of bad faith include: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” All of these factors are present in this case also. In the absence of a response, the inference is there to find – and the Panel does find – that the conduct amounts to bad faith.

The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).

In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s well known trademark LEGO and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization to disrupt the business of the Complainant contrary to paragraph 4(b)(iii) of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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, <legosenthusiast.com> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Date: April 12, 2021