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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. jacy fone

Case No. D2021-1641

1. The Parties

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

The Respondent is jacy fone, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <lego-official.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2021. On May 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 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 May 27, 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 May 28, 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 June 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2021.

The Center appointed George R. F. Souter as the sole panelist in this matter on July 5, 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 has provided the Panel with details of a considerable number of registrations world-wide of its LEGO trademark in connection with its business of manufacture and sale of construction toys, including United States Registration No 73032292, registered on December 9, 1975, and European Union Registration No 000039800, registered on October 5, 1998.

The Complainant has drawn the attention of the Panel to a large number of cases under the UDRP involving its LEGO trademark, including LEGO Juris A/S v. Level 5 Corp, WIPO Case No. D2008-1692, in which UDRP panels have consistently held the LEGO trademark to be well known.

The disputed domain name was registered on September 8, 2020, and currently resolves to an inactive site, and is not in use. The Complainant has provided evidence that the disputed domain name previously resolved to an unauthorized web store offering the Complainant’s products at discounted prices.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain is confusingly similar to its LEGO trademark, containing its LEGO trademark in its entirety, with the mere addition of a descriptive or non-distinctive element, namely the word “official”.

The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that, so far as the Complainant is aware, the Respondent is not generally known by the disputed domain name, and it has never granted the Respondent permission to use its LEGO trademark in connection with the registration of a domain name, or otherwise.

The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:

(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 Panel recognizes the Complainant’s LEGO trademark to be well known.

It is well established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the gTLD “.com” to be irrelevant in the circumstances of the present case, and so finds.

It is well established in prior decisions under the Policy that the mere addition of a descriptive or non-distinctive element to a clearly recognizable trademark is insufficient to avoid a finding of confusing similarity. In the circumstances of the present case, the Complainant’s LEGO trademark is instantly recognizable in the disputed domain name, and the mere addition of a hyphen and the word “official”, in the Panel's opinion, does not prevent a finding of confusing similarity, and the Panel so finds. Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.

The Complainant has provided evidence that the disputed domain name previously resolved to a website offering the Complainant’s products, using the Complainant’s trademark and logo, and incorporating a copyright notice citing the Complainant’s trademark. The Complainant has argued that the Respondent is not an authorized reseller. When applying the principles established under Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the Panel finds that the Respondent’s services are not bona fide. The Respondent fails to disclose its relationship with the Complainant; rather, the website conveys the false impression that the Respondent is authorized to use the Complainant’s trademark and sell its products. This impression of affiliation is reinforced considering the construction of the disputed domain name (i.e., pairing the Complainant’s trademark with the term “official”).

The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.

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

C. Registered and Used in Bad Faith

The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel regards it as self-evident that the Complainant’s LEGO trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds.

As mentioned above, the disputed domain name previously resolved to an unauthorized website offering Complainant’s products for discounted prices. Accordingly, the Panel finds that the Respondent used the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.

Since the decision in Telstra Corporation v. Nuclear Marshmallows, WIPO Case D2000-0003, it has become well established in prior decisions under the Policy that the mere lack of present use of a domain name found to have been registered in bad faith does not avoid a finding of bad faith use of a disputed domain name. In the circumstances of the present case, the Panel considers that any use of the disputed domain name would be likely to imply an unjustifiable connection with the Complainant, and that the Complainant has a legitimate concern in this regard. This is reinforced given the prior use of the disputed domain name. Furthermore, the change in content also indicates that the Respondent does not have a credible good faith explanation for having registered the disputed domain name that did not seek to trade off of the Complainant’s mark. Accordingly, the Panel finds that the disputed domain name is being used in bad faith.

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, <lego-official.com>, be transferred to the Complainant.

George R. F. Souter
Sole Panelist
Date: July 19, 2021

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