WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Djuradj Caranovic

Case No. D2021-2641

1. The Parties

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

Respondent is Djuradj Caranovic, Serbia.

2. The Domain Name and Registrar

The disputed domain name <legogroup.org> is registered with FastDomain, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2021. On August 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on August 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 14, 2021.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on September 20, 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

Complainant is a company organized under the laws of Denmark that is the worldwide well-known producer of LEGO branded construction toys and related LEGO products.

Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to its company name and brand “LEGO”, inter alia, the following:

- Word mark LEGO, European Union Intellectual Property Office (“EUIPO”), registration number: 000039800, registration date: October 5, 1998, status: active;
- Word mark LEGO, United States Patent and Trademark Office (“USPTO”), registration number: 1018875, registration date: August 26, 1975, status: active;
- Word mark LEGO, The Intellectual Property Office of the Republic of Serbia, registration number: 19.437, registration date: April 24, 1972, status: active.

Moreover, Complainant has evidenced to own a vast number of domain names relating to its LEGO trademark, inter alia, the domain name <lego.com> which resolves to Complainant’s official website at “www.lego.com”, used to promote Complainant’s LEGO products and related services worldwide.

Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of the Republic of Serbia who registered the disputed domain name on April 5, 2021. By the time of the rendering of this decision, the disputed domain name does not redirect to any valid content on the Internet and, according to the case file, has never done so in the past.

Complainant requests that the disputed domain name be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that its LEGO trademark is among the best-known trademarks in the world, due in part to decades of extensive advertising.

Complainant submits that the disputed domain name is confusingly similar to Complainant’s LEGO trademark, as the dominant part of the disputed domain name comprises the latter, and the addition of the term “group” does not diminish the confusing similarity of Complainant’s LEGO trademark and the disputed domain name. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) no license or authorization of any other kind has been given by Complainant to Respondent to use the LEGO trademark, (2) it is highly unlikely that Respondent did not know of Complainant’s LEGO trademark rights, but that it was this very fame that has motivated Respondent to register the disputed domain name, and (3) Respondent has failed to make any use of the disputed domain name and, therefore, has not demonstrated either at least to attempt to make a legitimate use thereof. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since (1) Complainant’s LEGO trademark is well-known and enjoys a substantial and widespread reputation throughout the world, (2) it is clear that Respondent was aware of Complainant’s rights in the valuable LEGO trademark at the point of the registration of the disputed domain name, (3) Complainant’s registered LEGO trademark predates the registration of the disputed domain name by decades, (4) Complainant never received a reply from Respondent to Complainant’s cease-and-desist letter of April 30, 2021, and (5) the disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name and, thus, the latter must be considered as having been registered and used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.

Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <legogroup.org> is confusingly similar to the LEGO trademark in which Complainant has rights.

The disputed domain name incorporates the LEGO trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of other terms (whether e.g. descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the descriptive term “group” does not dispel the confusing similarity arising from the incorporation of Complainant’s LEGO trademark in the disputed domain name.

Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.

Respondent has neither been granted a license nor has it been otherwise authorized by Complainant to use its LEGO trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “LEGO” on its own. Finally, it appears that by the time of the rendering of this decision, the disputed domain name does not resolve to any active content on the Internet – and that it never has done so in the past. UDRP panels, however, have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.1).

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden.

The Panel, therefore, finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.

As a general rule, Panelists 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 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 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 domain name may be put.

Complainant contends, and Respondent has not challenged this contention, that its LEGO trademark is among the best-known trademarks in the world, which is why it is highly unlikely that Respondent was not aware of Complainant’s LEGO trademark rights by the time of the registration of the disputed domain name. In any case, Respondent has failed to submit any explanation as to why it needed to rely exactly on the term “LEGO” when it registered the disputed domain name. Accordingly, there is little, if no room for any plausible use of the disputed domain name which would not take unfair advantage by profiting from the undisputed reputation which Complainant’s LEGO trademark enjoys worldwide. Against this background, the passive holding of the disputed domain name by Respondent is not in contrast to hold that Respondent has still registered and is using the disputed domain name in bad faith within the larger meaning of paragraph 4(b) of the Policy.

In connection with this finding, it also carries weight in the eyes of the Panel that Respondent obviously provided false or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of Complaint dated August 19, 2021, could not be delivered. This fact at least throws a light on Respondent’s behavior which as well supports the Panel’s bad faith finding.

Accordingly, the Panel concludes that 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 name <legogroup.org> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: September 29, 2021