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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / anjana banadara, ezydo

Case No. D2021-2602

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / anjana banadara, ezydo, Sri Lanka.

2. The Domain Name and Registrar

The disputed domain name <ezylego.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2021. On August 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 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 August 13, 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 August 16, 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 August 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2021. The Complainant requested a suspension of the proceeding on August 25, 2021. The proceeding was suspended until September 24, 2021. On September 22, 2021, the Complainant sought to have the proceeding reinstituted. Further to the Complainant’s request, the proceeding was reinstituted as of September 23, 2021. The Response due date was October 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2021.

The Center appointed Lynda M. Braun as the sole panelist in this matter on October 26, 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

Based in Denmark, the Complainant is the owner of the famous LEGO brand of construction toys and other branded products. Over the years, the manufacture and sale of its branded toys has increased significantly. In addition, the Complainant has expanded the use of its trademark to, inter alia, computer hardware and software, books, videos, and computer-controlled robotic construction sets.

The Complainant has subsidiaries and branches throughout the world, and its products are sold in more than 130 countries, including in Sri Lanka, where the Respondent purportedly resides, and the Respondent’s online store is purportedly located.

The Complainant owns hundreds of trademarks in dozens of jurisdictions worldwide. For example, in Sri Lanka, the Complainant owns LEGO, Sri Lankan Trademark Registration No. 41762, registered on August 20, 1980, in International Class 28. The Complainant’s rights in the LEGO mark date back to 1954 (Danish Trademark VR 1954 00604, registered on May 1, 1954). The aforementioned trademarks will hereinafter collectively be referred to as the “LEGO Mark”.

The LEGO Mark is among the best-known trademarks in the world, due in part to decades of extensive advertising, in which the Complainant prominently displays its LEGO Mark on its products, packaging, displays, advertising, and promotional materials. Moreover, the fame of the Complainant’s LEGO Mark has been confirmed in numerous UDRP decisions. See, e.g., 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”.).

The Complainant owns the domain name <lego.com>, which resolves to its official website at “www.lego.com”. The Complainant also owns approximately 5,000 additional domain names incorporating the term “lego”. It is the Complainant’s policy that all domain names that take an unfair commercial advantage of its LEGO Mark should be recovered by the Complainant.

The Disputed Domain Name was registered on January 11, 2021, decades after the Complainant first used and registered the LEGO Mark, and resolves to a website that sells electronics, toys, and clothes. The Complainant’s counsel sent the Respondent a cease-and-desist letter via email on February 17. 2021. Subsequent reminders were sent on February 24, 2021 and March 3, 2021. The Respondent did not reply to those communications.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s LEGO Mark.

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- the Disputed Domain Name was registered and is being used in bad faith.

- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the LEGO Mark.

It is uncontroverted that the Complainant has established rights in the LEGO Mark based on its decades of use as well as its registered trademarks for the LEGO Mark in numerous jurisdictions worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the LEGO Mark.

The Disputed Domain Name consists of the LEGO Mark in its entirety preceded by the letters “ezy” (which might be used as an abbreviation for the dictionary term “easy”) and followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a term. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “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”. For example, numerous UDRP decisions have reiterated that the addition of a term to a trademark – or an abbreviation thereof – does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s LEGO Mark.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its LEGO Mark. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. Based on the use made of the Disputed Domain Name to resolve to an online store allegedly selling toys, electronics, and clothes the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Respondent has intentionally chosen a domain name based on a well-known registered trademark in order to generate traffic and income through a commercial website.

Finally, the composition of the Disputed Domain Name, comprising the entirety of the LEGO Mark, carries a risk of implied affiliation and cannot constitute fair use here, as it effectively suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s LEGO Mark for commercial gain.

Second, the Panel concludes that the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s LEGO Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name’s resolving webpage. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its LEGO Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”).

Third, the Complainant has promoted and sold its goods using the LEGO Mark since the 1960s, which is decades before the Respondent’s registration of the Disputed Domain Name. Based on the widespread use of the LEGO Mark, it strains credulity to believe that the Respondent had not known of the Complainant or its LEGO Mark when registering the Disputed Domain Name. Thus, the Panel finds that the Respondent had actual knowledge of the LEGO Mark and targeted the Complainant when it registered the Disputed Domain Name, demonstrating the Respondent’s bad faith.

Finally, the lack of response by the Respondent to the cease-and-desist letters sent by the Complainant’s counsel supports a finding of bad faith. Past UDRP panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330.

Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <ezylego.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: November 3, 2021

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