WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Nabiev Ravshan

Case No. D2021-2061

1. The Parties

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

The Respondent is Nabiev Ravshan, Russian Federation.

2. The Domain Names and Registrar

The disputed domain names

<lego-harrypotter.site>
<legoharrypotter.site>
<legoharrypotter.space>
<lego-harrypotter.website>
<legoharrypotter.website>
<lego-hogwarts.online>
<legohogwarts.site>
<legohogwarts.space>
<legohogwarts.website>

are registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2021. On June 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 6, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On July 6, 2021, the Center also sent an email communication regarding the language of the proceeding in both Russian and English. The Complainant filed an amended Complaint on July 8, 2021 and requested to proceed in English.

The Respondent did not submit any comments regarding the language of the proceedings.

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 in both Russian and English, and the proceedings commenced on July 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default both in Russian and English on August 5, 2021.

The Center appointed Kateryna Oliinyk as the sole panelist in this matter on August 10, 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 headquarters in Denmark and holds the extensive worldwide portfolio of trademark registrations of a LEGO series used for construction toys and other LEGO branded products.

The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the Russian Federation. The Complainant is the owner of close to 5,000 domain names containing the term LEGO.

The Complainant prominently depicts the LEGO Trademark on all products, packaging, displays, advertising, and promotional materials. The Complainant has a range of products under the LEGO Trademark, together with third party trademarks HARRY POTTER and HOGWARTS.

Various WIPO UDRP panels have recognized the well-known status of the LEGO Trademark (including LEGO Trademark No.474693 registered on November 14, 2012, in the Russian Federation).

For instance, the following WIPO UDRP panels have held that the LEGO trademark is well-known, famous and distinctive: LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009‑0680; and LEGO Juris A/S v. Level 5 Corp, WIPO Case No. D2008-1692.

Also, the LEGO Trademark has been conferred with various awards, honors and titles. For instance, in the official list of Top 10 Consumer Superbrands for 2019, provided by Superbrands UK, LEGO is shown as number 1 Consumer Superbrand and number 8 in the Consumer Relevancy Index. The Reputation Institute recognized the LEGO Group as number 1 on its list of the world’s Top 10 Most Reputable Global Companies of 2020, and applauded the LEGO Group’s strong reputation, having been on its top 10 list for 10 consecutive years. In 2014, Time also announced LEGO to be the Most Influential Toy of All Time.

The Complainant tried to contact the Respondent on February 25, 2021 by sending a cease and desist letter by email and requesting to voluntary transfer the disputed domain names. The Complainant also offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). In spite of the reminders sent by the Complainant, no response has been received from the Respondent.

The disputed domain names were registered on the following dates:

The disputed domain names do not resolve to active websites. The Respondent is apparently an individual resident in the Russian Federation.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that each of the nine disputed domain names are confusingly similar to its well-known LEGO Trademark, containing its LEGO trademark in its entirety.

The Complainant further contends that in spite of the disputed domain names being a combination of its LEGO Trademark and the third party's trademarks HARRY POTTER and HOGWARTS, it does not preclude recognizability of the Complainant’s LEGO Trademark in the disputed domain names.

The use of a hyphen in the disputed domain names <lego-harrypotter.site>, <lego-harrypotter.website> and <lego-hogwarts.online> and addition of the top-level domains “.site”, “.space”, “.website” and “.online” do not have any impact on the overall impression created by the disputed domain names and are irrelevant to determine the confusing similarity between the LEGO Trademark and the disputed domain names.

The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain names, in particular that, so far as the Respondent is not generally known by any of the disputed domain names, and the Complainant has never granted the Respondent license or any other permission to use its LEGO Trademark in connection with the domain names, or otherwise. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.

The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, as he passively holds the disputed domain names. The Respondent has not demonstrated any attempt to make legitimate use of the disputed domain names, which evidences a lack of rights or legitimate interests in the disputed domain names.

The Complainant alleges that the disputed domain names were registered in bad faith, and that they are being used in bad faith.

Due to the well-known status and goodwill associated with the LEGO Trademark, the Respondent knew or must have known of the Complainant’s rights in the LEGO Trademark when he registered the disputed domain names.

The cease and desist letter sent to the Respondent on February 25, 2021 remained unanswered. The failure by the Respondent to respond to the Complainant’s cease and desist letter shows bad faith by the Respondent.

The Complainant further contends that passive holding of the disputed domain names can constitute yet another factor in finding bad faith registration and use.

The number of disputed domain names registered by the Respondent demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is further evidence of bad faith registration and use.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain names is Russian. Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding. (see, e.g., Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 stating that “[o]ne important consideration of this issue is the fairness to both Parties in their abilities to prepare the necessary documents and protect their own interests”).

The Center has provided both parties with an opportunity to comment on the language of the proceedings by sending both parties a Language of Proceeding notification, as well as other communication in both Russian and English. The Complainant has provided submissions regarding the proper language of proceedings, while the Respondent did not raise any objection or reply thereto.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.

Considering that both parties have been given fair opportunities to present their cases and the Respondent has been given an opportunity to object to the proceedings being conducted in English but has not responded, the Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing the proceedings to be conducted in English in accordance with the Complainant’s request as the Complainant could suffer significant disadvantages if the proceedings are conducted in Russian. (see, e.g., Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191).

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2. Substantive Elements of the Policy

A. Identical or Confusingly Similar

The Complainant has provided sufficient evidence of its exclusive rights in the LEGO Trademark.

Once the Top-Level Domain (“TLD”) “.site”, “.space”, “.website” and “.online” are ignored as the standard registration requirement as reflected in section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the disputed domain names consist of the whole of the Complainant’s registered LEGO Trademark combined with the third party's trademarks HARRY POTTER and HOGWARTS.

Despite of the addition of the third party's trademarks HARRY POTTER and HOGWARTS, the LEGO Trademark which benefits from the well-known status remains recognizable in the disputed domain names. (see, e.g. LEGO Juris A/S v. Contact Privacy Inc. Customer 0152907274 / Maksym Zaremba, LegoAvengers, WIPO Case No. D2019-0324).

According to section 1.12. of the WIPO Overview 3.0 “Where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks (i.e., <mark1+mark2.tld>), is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element”.

The Panel further notes that the Complainant has a range of products under the LEGO Harry Potter name, including a LEGO Hogwarts Castle. Respectively, the addition of the third party's trademarks HARRY POTTER and HOGWARTS does not preclude establishing confusing similarity between the Complainant’s LEGO Trademark and the disputed domain names. (see, e.g., LEGO Juris A/S v. Whoisguard Protected, Whoisguard, Inc. / Gordon Johnston, WIPO Case No. D2016-1472).

Also, the use of a hyphen in the disputed domain names <lego-harrypotter.site>, <lego-harrypotter.website> and <lego-hogwarts.online> is irrelevant in a finding of confusing similarity (see, e.g., Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630 stating that “It is well established in decisions under the UDRP that the presence or absence of characters (e.g., hyphens, dots) in a domain name […] are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name”).

Therefore, the Panel finds that the disputed domain names are confusingly similar to the LEGO Trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

The Panel established based on uncontested contentions of the Complainant that the Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain names or to use LEGO Trademark. The Complainant has provided sufficient evidence of its exclusive rights in the LEGO Trademark which precede the Respondent’s registration of the disputed domain names. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. There is no evidence that the Respondent is commonly known by the disputed domain names.

The Panel finds that the Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain names.

Insofar as the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests to the disputed domain names (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden to Respondent to show evidence that it has rights or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

However, in this case, the Respondent, having a chance to invoke any circumstances for demonstration of his rights or legitimate interests in the disputed domain names, did not submit any response to the cease-and-desist letter, sent by the Complainant prior to initiation of this administrative proceeding, and to the Complaint and consequently did not rebut the Complainant’s prima facie case. Thus, the Complainant’s facts, without contrary evidence from the Respondent, are sufficient to permit a finding in the Complainant’s favor on this issue. See, e.g., Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.

Passive holding of the disputed domain names does not count on the legitimate noncommercial or fair use of the disputed domain name, or bone fide offering of goods or services (see, e.g., Philip Morris USA Inc. v. Gabriel Hall, WIPO Case No. D2015-1779 stating that “Passively holding a domain name does not constitute a bona fide offering of goods or services.”)

Furthermore, in light of the fact that the disputed domain names incorporate in its entirety the Complainant's well-known LEGO Trademark and, in fact, the disputed domain names reflect the names of the Complainant's products under the “LEGOHarry Potter name, including a LEGO HogwartsCastle, the Panel holds an opinion that the disputed domain names create the false impression of affiliation with the Complainant for commercial gain. Such registration and use cannot be considered “fair” in the meaning of the paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0 at section 2.5 “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry” and at section 2.5.1 “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”.

Applying those principles here the Panel does not consider the Respondent establishes bona fide registration and use of the disputed domain names.

The Panel therefore holds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name’s registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) The Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

It is generally accepted under the Policy that, for a bad faith registration, (i) the Respondent must have been aware of the Complainant or its trademarks when it registered a disputed domain name, and (ii) the registration must in some way have been targeted at the Complainant or its trademark, for example by seeking to capitalize on it (see, e.g.,The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743 and Mediaset S.p.A. v. Didier Madiba, Fenicius LLC, WIPO Case No. D2011-1954).

Furthermore, UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). While UDRP panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include e.g.: the degree of distinctiveness or reputation of Complainant’s mark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the disputed domain name may be put.

The Complainant contends, and the Respondent has not challenged this contention, that its LEGO Trademark ranks among the most well-known and most valuable trademarks worldwide, given that it has been widely used for decades with trademark registrations in many countries worldwide.

Accordingly, there is little, if no room for any plausible use of the disputed domain names, which would not take unfair advantage by profiting from the undisputed reputation, which Complainant’s well-known LEGO Trademark enjoys. Against this background, the passive holding of the disputed domain names since their registration dates by the Respondent evidences on registration and use of the disputed domain names in bad faith within the larger meaning of paragraph 4(b) of the Policy.

Moreover, and in respect of the bad faith at the moment of the registration, the Complainant has established that its LEGO Trademark has been used extensively throughout the world and that the Complainant's LEGO Trademark is famous and valuable. Yet the more, the disputed domain names, in fact, reflect the names of the Complainant's products under the LEGO Harry Potter name, including a LEGO Hogwarts Castle. Respectively, in the Panel's opinion the Respondent has knew or must have known on the Complainant's LEGO Trademark at the moment of registration.

The Panel therefore finds that, taking into consideration that the Complainant’s well-known LEGO Trademark is incorporated in the disputed domain names in its entirety, the Respondent has obviously registered and has used the disputed domain names for the only purpose of attracting the Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s LEGO trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. (see, e.g., Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003)

The lack of the Respondent's response to the cease and desist letter is also among the factors evidencing bad faith registration and use. The previous WIPO UDRP panels established that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith (see, e.g., News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460).

Finally, the number of disputed domain names registered by the Respondent demonstrates that the Respondent is engaged in a pattern of cybersquatting, which is further evidence of bad faith registration and use.

Section 3.1.2. of WIPO Overview 3.0 records states that: “UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration.

This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner.

A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners…”

As the Respondent has been already involved in the UDRP proceeding and was ordered to transfer the domain name to the complainant, and based on the fact that the Respondent has registered nine disputed domain names infringing the Complainant's trademark rights, the Panel accepts the inference of cybersquatting set forth in the Complaint.

Respectively, the Panel finds that the Complainant has provided sufficient evidence to show a pattern of conduct in registering domain names in order to prevent trademark holder from reflecting its LEGO Trademark in corresponding domain names and potentially using them in connection with fraudulent activities.

Therefore, the Panel concludes that the Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).

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 names, <lego-harrypotter.site>, <legoharrypotter.site>, <legoharrypotter.space>, <lego-harrypotter.website>, <legoharrypotter.website>, <lego-hogwarts.online>, <legohogwarts.site>, <legohogwarts.space> and <legohogwarts.website>, be transferred to the Complainant.

Kateryna Oliinyk
Sole Panelist
Date: August 24, 2021