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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Domain Administrator, See PrivacyGuardian.org / Larry Dawley

Case No. D2021-2104

1. The Parties

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

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Larry Dawley, United States.

2. The Domain Name and Registrar

The disputed domain name <legonew.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 July 1, 2021. On July 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 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 July 6, 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 July 8, 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 July 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2021.

The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on August 12, 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 LEGO Juris A/S, a limited company incorporated in Denmark, which is internationally well-known for its construction toys and other products labelled under the LEGO trademark. The Complainant has licensees worldwide, which are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights.

Over the years, the business of making and selling LEGO branded toys has grown remarkably. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries.

The Complainant has officially been trading under the trademark LEGO for decades and owns exclusive rights over this sign. LEGO has become a highly reputed mark, recognized as identifying the Complainant’s business all over the globe.

The Complainant owns several registrations and applications for the LEGO trademark, covering over 130 countries, as states Annex 3 of the Complaint. These registrations include, for example, registrations obtained in the United States, registration no. 1018875, registered on August 26, 1975, listed in Annex 3.2.

The Complainant holds over 5000 domain name registrations, all of them formed by its mark LEGO. It is important to note that among these domains there are some formed by the mark LEGO comprising several different top level domains. Proof of these registrations are given in Annex 5 of the Complaint.

The disputed domain name was registered on February 26, 2021 and at the of the filing the Complaint, it resolved to a website that lacked content, as shown by Annex 8.2 of the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <legonew.com> contains its worldwide known trademark LEGO.

The Complainant has obtained registrations for the trademark LEGO throughout the world, as well as over 5000 domain names formed by this mark, as stated above.

The Complainant claims never having licensed or authorized the Respondent to use its mark or to apply for any kind of domain name.

Besides, the expression chosen by the Respondent to compose the disputed domain name together with “LEGO” is “new”, which plays no role in attempting to diverse the attention from the mark LEGO registered by the Complainant. This descriptive term does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark – on the contrary, it has a natural connection with the Complainant’s mark.

The Complainant also states that the Respondent is not making a legitimate use of the disputed domain name. Initially the disputed domain name led to a page offering for sale products from the competitors of the Complainant. Later the Respondent altered the direction, and the disputed domain name leads to a generic page that lacks content (see Annex 8).

Before starting this proceeding, the Complainant tried to contact the Respondent through a cease-and-desist letter, in an attempt to obtain the voluntary transfer of the disputed domain name to its name. No response was ever received to this letter, so reminders were sent, which also remained unanswered (Annexes 9 and 10 of the Complaint).

B. Respondent

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

6. Discussion and Findings

The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:

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 to 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

Regarding the first of the elements, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the mark LEGO, which is registered in several countries and clearly used regularly throughout the world in over 130 countries. Proof of ownership of over 5000 domain names formed by the mark LEGO were also produced.

Further, the Panel finds that disputed domain name is confusingly similar to the trademark belonging to the Complainant, since this mark is entirely reproduced in the disputed domain name registered by the Respondent with the addition of the term “new”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Further, it is well established that “.com”, as a generic Top-Level Domain, may be disregarded in the assessment of the confusing similarity between the disputed domain name and the Complainant’s mark (section 1.11.1 of the WIPO Overview 3.0).

Hence, the Panel concludes that the first element of the Policy has been satisfied by the Complainant in this dispute.

B. Rights or Legitimate Interests

The Panel understands that the mark LEGO is undoubtedly linked to the Complainant, since it is not only registered as a mark in the Complainant’s name, but also it is used to identify the Complainant’s business worldwide, being present in over 130 countries under this mark.

The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s contentions.

Besides, the Complainant provided enough evidence of the renown of the mark worldwide, as shown in Annex 6. Hence, the Panel understands that the Respondent should have been aware of the mark and its direct relation to the Complainant.

It has also been shown that the Respondent is not making any direct use of the disputed domain name, but merely directing to an empty page.

Thus, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

It is clear to the Panel that the Respondent has in all probability registered the disputed domain name with the purpose of taking advantage of the Complainant’s mark.

The Panel finds that the disputed domain name was likely registered to mislead consumers – hence the addition of the term “new”. Further, the additional term plays no role in distancing the disputed domain name from the Complainant, a fact from which the Respondent may well profit by giving Internet users the impression that the disputed domain name belongs to the Complainant.

The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant, and the Panel accepts that the disputed domain name may be intended for illegitimate purposes.

The Panel notes that initially the disputed domain name led to a page offering for sale products from the competitors of the Complainant. Later the Respondent altered the direction, and the disputed domain name leads to a generic page that lacks content (see Annex 8). With regards to the use of the disputed domain name in bad faith, UDRP panels have found that the apparent lack of so-called active use of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Based on that evidence, the Panel finds that the Respondent registered and is using the disputed domain name with the intention of illegally obtaining benefits and harming the Complainant’s reputation in the market.

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 <legonew.com> be transferred to the Complainant.

Alvaro Loureiro Oliveira
Sole Panelist
Date: August 26, 2021

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