WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-1813

1. The Parties

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

The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <legolqnd.com> 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 June 9, 2021. On June 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 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 June 15, 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 June 17, 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 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2021.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on July 27, 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 a Danish company, which is in the business of making and selling construction toys and other products and services branded under the trademarks LEGO and LEGOLAND. The Complainant has expanded its use of the LEGO mark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets, and its LEGOLAND mark is used regarding, inter alia, theme parks, hotels, entertainment, sporting and cultural activities. Per Complaint, the Complainant has subsidiaries and branches throughout the world, its products are sold in more than 130 countries (including Panama), and its LEGOLAND theme parks have about 1.4 million visitors per year.

The Complainant has provided details of multiple trademark registrations for LEGO and for LEGOLAND, which provide protection in many jurisdictions including Panama (where the Respondent is apparently located according to the Registrar verification). In this country, the Complainant owns Panama Trademark Registration No. 28138, LEGOLAND (word) registered on March 2, 1982, in Class 28; and Panama Trademark Registration No. 23438, LEGO (word) registered on June 11, 1979, in Class 28.

Prior decisions under the Policy have recognized the reputation of the Complainant’s trademarks LEGO and LEGOLAND.¹

The Complainant further owns numerous domain names comprising its trademarks LEGO and LEGOLAND, including <lego.com> (registered on August 22, 1995) and <legoland.com> (registered on August 4, 1998), which are linked to its respective corporate websites for the goods and services related to these marks.

The disputed domain name was registered on February 11, 2021, and it is currently inactive resolving to a browser error message. According to the evidence provided by the Complainant, the disputed domain name was linked to a website featuring various links to third party websites or pay-per-click (“PPC”) links, including some related to companies in the toy industry.

The Complainant sent a cease and desist letter to the Respondent on March 4, 2021 (though the company providing privacy registration services for the registration of the disputed domain name), as well as several subsequent reminders. The Respondent did not reply to these communications.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

The trademarks LEGO and LEGOLAND are well-known worldwide.

The disputed domain name is confusingly similar to the Complainant’s trademarks, as it comprises LEGO and LEGOLAND, being a purposeful misspelling of the LEGOLAND trademark. The disputed domain name replaces the letter “a”, included in the middle of the trademark LEGOLAND with the letter “q”, which is adjacent and next to the letter “a” key on a standard computer keyboard. The disputed domain name therefore consist of an obvious misspelling of the Complaint’s trademark being a typical case of typosquatting. The generic Top-Level Domain (“gTLD”) “.com” is irrelevant to determine the confusing similarity between the Complainant’s trademarks and the disputed domain name.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been authorized to use the trademarks LEGO and LEGOLAND, due to the fame of these trademarks it cannot claim being unaware of the Complainant’s rights, and the disputed domain name is not used in connection with a bona fide offering of goods or services. The disputed domain name was intentionally chosen targeting the Complainant’s trademarks to mislead Internet users, generate traffic and income through a website containing PPC links. Further, the disputed domain name is listed at SEDO, being offered for sale for a price that exceeds its out-of-pocket registration expenses (for a minimum offer amounting to USD 899).

The disputed domain name was registered and is being used in bad faith. The Respondent did not reply to the cease and desist communications, and typosquatting itself is an evidence of bad faith, as the Respondent is attempting to capitalize on typing errors committed by the Complainant’s customers in trying to locate the Complainant on the Internet, generating traffic to a commercial website with sponsored ads. The disputed domain name is used to intentionally attempt to attract Internet users to the Respondent’s website for commercial gain, and it is further offered for sale for valuable consideration in excess of the Respondent’s out-of-pocket registration expenses. The Respondent holds registrations for several other domain names that misappropriate well-known trademarks,² and it is engaged in a bad faith pattern of “cybersquatting”, being involved in prior cases under the Policy and targeting the Complainant in three of these prior cases. ³ An additional circumstance that corroborates the Respondent’s bad faith is the use of a privacy service to hide its identity.

The Complainant has cited previous decisions under the Policy, as well as various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position, and requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.

A. Identical or Confusingly Similar

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 identical or confusingly similar to that mark for purposes of the Policy. Additionally, a domain name consisting of a common, obvious, or intentional misspelling of a trademark, containing sufficiently recognizable aspects of that mark, is considered confusingly similar to the relevant mark for the purposes of the first element, and employing a misspelling in this way normally signals an intention to confuse users seeking or expecting the complainant. Furthermore, the applicable gTLD in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, 1.9, and 1.11, WIPO Overview 3.0.

The Complainant indisputably has rights in the registered trademarks LEGO and LEGOLAND, both by virtue of its numerous trademark registrations around the world and as a result of the goodwill and reputation. The disputed domain name incorporates these trademarks in their entirety altering one of the letters included in the trademark LEGOLAND, substituting the letter “a” with a letter “q”, which may be considered a common misspelling that may easily go unnoticed not avoiding the direct perception of the trademark being reproduced in the disputed domain name. The Complainant’s trademarks LEGO and LEGOLAND are recognizable in the disputed domain name, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity.

Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.

The Complainant’s above-noted assertions and evidence in this case effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the disputed domain name.

The disputed domain name incorporates the Complainant’s trademarks LEGO (with no alteration) and LEGOLAND (with a sole common misspelling, substituting the letter “a” with the letter “q”). The altered letter used in the disputed domain name “q” is next and adjacent to the letter “a” in any standard Roman alphabet keyboard. Therefore, the Panel considers that such alteration may be a common misspelling, which points to an intention to confuse Internet users seeking for or expecting the Complainant.

The Panel further considers that the Complainant has made out a strong prima facie case that the Respondent could not have rights or legitimate interests in the disputed domain name, not being authorized to use the trademarks LEGO and LEGOLAND, and that the disputed domain name has been used in connection to a website displaying PPC links to third parties’ websites (including some in the toy industry that may compete with the Complainant), which cannot be considered a legitimate interest.

The Panel further notes that the Respondent’s name provided in the registration of the disputed domain name was concealed under a privacy registration service, and have no resemblance with “lego”, “legoland”, or the term corresponding to the disputed domain name “legolqnd”.

Furthermore, the Panel considers remarkable that the disputed domain name is inactive resolving to a page with an Internet browser error message, and that the Respondent has chosen not to reply to the cease and desist letter and subsequent reminders nor to the Complaint. These circumstances leads the Panel to consider that the Respondent’s reaction to this Complaint has been taken down the website that was linked to the disputed domain name.

All the above-mentioned circumstances lead the Panel to conclude that nothing in the case file gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.

The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.

The Panel notes the well-known character worldwide of the Complainant’s trademarks, which has been recognized by previous decisions under the Policy. ⁴

The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:

(i) the disputed domain name incorporates the Complainant’s trademarks in their entirety, with a sole common misspelling (substituting the letter “a” in the term “legoland” with a letter “q”, which is adjacent and next to the letter “a” in any standard Roman alphabet keyboard), which enhances the intrinsic likelihood of confusion and affiliation;

(ii) the Complainant’s trademarks are well-known worldwide and the Complainant operates internationally, including in Panama (where the Respondent is apparently located according to the Registrar verification);

(iii) according to the evidence provided by the Complainant, the disputed domain name has been linked to a website displaying PPC links to third parties’ websites (some of them competitors of the Complainant), and has been offered for sale at a starting price that seems to exceed its presumable out-of-pocket registration expenses (for a minimum offer amounting to USD 899);

(iv) the Respondent used a privacy registration service; and

(v) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name, and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint, and apparently taking down the website that was linked to the disputed domain name.

It is further remarkable that apparently, the same Respondent has been involved in numerous prior cases under the Policy, some of them related to the Complainant’s reputed trademarks, and many related to clear typosquatting cases.⁵ The Panel considers that these circumstances point to a pattern of bad faith registration and use of domain names, and, particularly, a pattern of typosquatting (incorporating reputed trademarks with common misspellings).

It is further to be noted that the current non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3, WIPO Overview 3.0.

In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel considers that the disputed domain name was registered and is being used targeting the trademarks LEGO and LEGOLAND in bad faith, with the intention of obtaining a free ride on the established reputation of the Complainant by intentionally misleading third parties, in order to generate traffic to a promotional PPC links website with a commercial purpose.

Furthermore, the Panel considers that the Respondent has been engaged in a bad faith pattern of conduct in registering various domain names incorporating the Complainant’s trademarks LEGO and LEGOLAND, targeting these marks for the same purpose in other cases, as well as in registering a large number of other domain names targeting reputed trademarks with no legitimate interest. See section 3.2.1, WIPO Overview 3.0.

Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain names have been registered and are being used in bad faith under 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, <legolqnd.com> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: August 3, 2021

¹ With reference to the well-known character of the LEGO trademark, see inter alia: LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680; LEGO Juris A/S v. M. Moench, WIPO Case No. DNL2009-0052; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; LEGO Juris A/S v. Kim S J, WIPO Case No. D2014-0884; and LEGO Juris A/S v. Moshe Cohen / Funtasia Trade Ltd, WIPO Case No. D2019-2478.
With reference to the well-known character of the LEGOLAND trademark, see inter alia: LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692; LEGO Juris A/S v. Domainproxyagent.com and Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0381; and LEGO Juris A/S v. PHU C.N.O. Justyna Niedzielska, WIPO Case No. DEU2021-0001.