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WIPO Arbitration and Mediation Center


LEGO Juris A/S v. Privacy Protect, LLC (PrivacyProtect.org) / Aleksandr V. Shumilov

Case No. D2021-2245

1. The Parties

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

The Respondent is Privacy Protect, LLC (PrivacyProtect.org), United States of America / Aleksandr V. Shumilov, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <legobricks.fun> is registered with Beget LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2021. On July 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 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 14, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The same day the Center sent an email regarding the Language of proceedings. The Complainant filed an amended Complaint on July 14, 2021 with arguments regarding the language of the proceedings. The Respondent did not reply to the language of the proceedings email.

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 English and Russian, and the proceedings commenced on July 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default in both English and Russian on August 23, 2021.

The Center appointed Clark W. Lackert as the sole panelist in this matter on September 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 owns numerous registrations on the trademark LEGO globally, including Denmark Registration No. VA195302454 registered October 30, 1953, United States Registration No. 1018875 registered August 26, 1975, European Union Registration No. 39800 registered May 10, 1998, and Russian Federation Registration No. 280003 registered December 10, 2004. In addition, the LEGO trademark is used in commerce actively in more than 130 countries including selling its “bricks” toys and the Complainant owns more than 5,000 domain names incorporating its trademark LEGO. The disputed domain name was registered on January 8, 2021. Several UDRP decisions have held that LEGO is a well-known trademark.

The disputed domain name resolves to the registrar-hosting website.

5. Parties’ Contentions

A. Complainant

1. Language

The Complainant contends that it has properly submitted the Complaint in English based on the following factors: the Complainant is unable to communicate in Russian and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter; The disputed domain name is comprised of Latin characters; The term “lego”, which is the dominant portion of the disputed domain name, does not carry any specific meaning in the Russian language; the Complainant previously sent a cease-and-desist letter to the Respondent, as provided in the Complaint, and the Respondent had ample time and opportunity to respond to such letter and request that communications continue in Russian. The Respondent neither issued such a request nor responded to the Complainant in any matter whatsoever. Naturally, if a respondent did not understand and were in good faith he would reply to any of the communications. Even in instances where a registration agreement was in a language other than English, past UDRP panels have made the decision to allow a case to proceed in English based on the totality of circumstances in that case. See Immobilière Dassault SA, Groupe Industriel Marcel Dassault v. DuanZuoChun, WIPO Case No. D2011-2106. See also Dama S.p.A. v. Duan Zuochun, WIPO Case No. D2012-1015.

2. On the substance

The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The dominant part of the disputed domain name comprises the name LEGO, identical to the registered trademarks LEGO registered by the Complainant as trademarks and domain names in numerous countries all over the world. The fame of the trademarks has been confirmed in numerous previous UDRP decisions LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692, “The Panel finds that the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive”; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715, “The Panel finds, as numerous UDRP panels have found before, that the Complainant has established that LEGO is a well-known trademark and that the trademark is distinctive and famous” and LEGO Juris A/S v. Reginald Hastings Jr; WIPO Case No. D2009-0680, “LEGO is a mark enjoying high reputation as construction toys popular with children”.

In UDRP decision Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, it was stated that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. In this case, the suffix “bricks” does not detract from the overall impression. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Original Edition (“WIPO Overview 3.0”) at section1.8: “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.”

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Further, the Complainant has not found anything that would suggest that the Respondent has been using LEGO in any other way that would provide legitimate rights in any of the disputed domain name. The Registrar’s WhoIs verification confirmed the Respondent as “Aleksandr V. Shumilov”.

No license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the UDRP panel stated that: “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. This was stated by the UDRP panel as a factor in the finding of non-legitimate interest with the Respondent in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.

The disputed domain name was registered and is being used in bad faith.

The trademark LEGO in respect of toys belonging to the Complainant has the status of a well-known trademark with a substantial and widespread goodwill throughout the world. The number of third party domain name registrations comprising the trademark LEGO in combination with other words has always been attractive to domain name infringers (as an indication, in numerous UDRP cases filed in 2020 alone). The considerable value and goodwill associated with the LEGO mark is proportionate to the amount of infringement it is subject to, and most certainly what motivated the Respondent to register the disputed domain name here.

The Respondent registered the disputed domain name on January 8, 2021. This date is subsequent to when the Complainant registered the trademark LEGO in the Russian Federation, where the Respondent appears to reside, and elsewhere, by decades. It is obvious that it is the fame of the trademark that has motivated the Respondent to register the disputed domain name. That is, the Respondent cannot claim to have been using the trademark LEGO, without being aware of the Complainant’s rights to it.

The panel in Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 stated that, “[t]he incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”. See also, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568.

As mentioned above, the disputed domain name currently resolves to the registrar’s parked page and is not being used. Past UDRP panels have noted that the word bad faith “use” in the context of Policy, paragraph 4(a)(iii) does not require a positive act on the part of the respondent, and passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy, paragraph 4(a)(iii). In Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel stated that “it is possible, in certain circumstances, for inactivity by the respondent to amount to the domain name being used in bad faith”. Further, in Alitalia-Linee Aeree Italiane S.p.A. v. Colour Digital, WIPO Case No. D2000-1260, the panel found bad faith where the respondent made no use of the domain name in question and there were no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose. In this case, the disputed domain name is confusingly similar to Complainant’s trademark, and the Respondent has made no use of the disputed domain name, factors which should be duly considered in assessing bad faith registration and use. The panel in LEGO Juris A/S v. Oleg Vasilyev, WIPO Case No. D2020-1694, concluded that the respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy.

B. Respondent

The Respondent has not replied to this Complaint.

6. Discussion and Findings

A. Language of the proceeding

According to paragraph 11(a) of the Rules “unless otherwise agreed by the Parties, 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 this case, the Registrar has confirmed that the language of the Registration Agreement for the disputed domain name is Russian. The Panel also notes that the Respondent is located in the Russian Federation.

As indicated above under section 5 the Complainant filed the Complaint in English and requested English to be the language of this proceeding.

In previous similar cases, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement (see section 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

While applying the provision on the language of the proceeding the Panel considers that it should be also ensured that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition.

The Center duly notified the Respondent in English and in Russian on the request of the Complainant to use English as the language of the proceeding. The Respondent was also provided with an opportunity to object and request the proceeding to not be carried in English.

Furthermore, the Panel notes that the Center sent the notification of the Complaint and commencement of the proceeding to the Parties in both languages (English and Russian), accepting the Complaint filed in English, and giving equal opportunities to the Parties to participate in the proceeding. In addition, the Panel notes that the Respondent did not submit a formal Response, and did not use an opportunity to argue his case.

Based on the foregoing, the Panel agrees with the decision to use English as the language of this proceeding.

B. Identical or Confusingly Similar

The disputed domain name consists of the famous mark LEGO (as decided by a number of UDRP decisions) with the dictionary term (as described by the Complainant) “bricks”. The addition of such term to a trademark does not diminish the ability of a domain name to be identical or confusingly similar. WIPO Overview 3.0 at section 1.8.

The Panel finds in favor of the Complainant on this element.

C. Rights or Legitimate Interests

The Respondent has not replied to this Complaint and there is nothing in the record, which indicates any rights or legitimate interests owned by the Respondent.

The Panel finds in favor of the Complainant on this element.

D. Registered and Used in Bad Faith

The disputed domain name is a clear case of passive holding within Policy paragraph 4(a)(iii). WIPO Overview 3.0 at section 3.3, states: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine 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.” Here, the well-known trademark LEGO (with a descriptive term) is being held, with no proof of good faith use, within a privacy service, and no plausible reason why this person would be able to use this domain name in good faith. See also another LEGO decision, LEGO Juris A/S v. Oleg Vasilyev, WIPO Case No. D2020-1694 for this same conclusion (citing Chanel, Inc. v. Estco Enterprises Ltd., Estco Technology Group, WIPO Case No. D2000-0413.

The Panel finds in favor of the Complainant on this element.

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 <legobricks.fun> be transferred to the Complainant.

Clark W. Lackert
Sole Panelist
Date: September 24, 2021