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 / Jimmy Gil, SELLANDSHIP LLC

Case No. D2021-2675

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Jimmy Gil, SELLANDSHIP LLC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <legohub.store> 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 16, 2021. On August 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 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 18, 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 20, 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 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2021. The Center received an email communication from an apparent third party on August 19, 2021, which stated that the domain name was never used and will not be renewed. The Center requested from the third party to clarify his/her relationship (if any) to the Respondent. No further communication was received from this third party. Accordingly, on September 17, 2021, the Center informed the Parties that it will proceed to panel appointment.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on October 1, 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, LEGO Juris A/S, a limited company incorporated in Denmark, is the owner of the LEGO trademark and of all other trademarks used in connection with the LEGO branded construction toys and other LEGO branded products.

The Complainant is the owner of a very large number of trademarks, amongst which:

- The United States trademark LEGO with registration No. 73032295 filed September 17, 1974 and registered August 26, 1975, covering “toy building blocks and connecting links for the same, sold separately and as kits for construction of toy houses, buildings, household furnishings, robots, doll figures and vehicular toys” in International Class 28;

- The European Union trademark LEGO with registration No. 000039800 filed April 1, 1996 and registered October 5, 1998, covering a large variety of goods and services, amongst which “games and playthings” in International Class 28.

The LEGO and LEGOLAND trademarks are very well-known. The Complainant has extensively used the trademarks for several decades; it has also invested very important resources in advertising. LEGO has been recognized Number 1 Consumer Superbrand by Superbrands UK and Number 1 of the world’s Top 10 Most Reputable Global Companies of 2020 (annexes 6.1 and 6.2. of the Complaint).

The Complainant has over time expanded its use of the LEGO trademark, amongst others, to computer hardware and software, books, videos and computer controlled robotic construction sets.

The Complainant is the owner of close to 5000 domain names containing the term LEGO and maintains an extensive website under the domain name <lego.com> (annex 5 of the Complaint).

The disputed domain name <legohub.store> was registered on October 8, 2020. According to the evidence provided by the Complainant, the disputed domain name is used to redirect Internet users to an inactive website without content.

5. Parties’ Contentions

A. Complainant

On the merits, the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

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

The Complainant contends that the dominant part of the disputed domain name comprises the distinctive sign LEGO, identical to the registered trademarks and domain names LEGO owned by the Complainant and which are internationally known.

The Complainant maintains that the similarity is not altered by the suffix “hub”. On the contrary, as this generic word is directly linked to the Complainant’s business and brand, this addition would increase the confusing similarity. The addition of the generic Top-Level Domain (“gTLD”) “.store” would be viewed as a standard registration requirement, irrelevant to determine the confusing similarity.

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that nothing indicates that the Respondent has been using LEGO in any way that would provide legitimate rights in the domain name. The Respondent has no rights of common usage of the name LEGO and has never been given any license or authorization of any other kind by the Complainant.

The Complainant further asserts that it is highly unlikely that the Respondent did not know of Complainant’s longstanding legal rights in the name LEGO at the time of the registration.

The Respondent was not and is not using the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is used to redirect Internet users to an inactive website without content.

Finally, the Complainant argues that the combination of the LEGO trademark, the word “hub” and the TLD “.store” carries a high risk of implied affiliation with the Complainant.

The Complainant asserts that due to the well-known and reputable character of the LEGO trademark, domain name registrations comprising that trademark in combination with other words have always been attractive to infringers.

Furthermore, absence of use, the passive holding of a domain name, would also be an indication of a bad faith registration.

The fact for the Respondent to not have answered to the cease and desist letters sent by the Complainant prior to these proceedings, would serve as further evidence of bad faith registration and use.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark.

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to LEGO, which precede by several decades the disputed domain names. This Panel agrees with the previous UDRP decisions cited by the Complainant and confirming the well-recognized and world famous character of the LEGO trademark(s) (see LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692; 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).

Secondly, this Panel finds that the disputed domain name is confusingly similar to the earlier LEGO trademarks, for the following reasons:

- the disputed domain name incorporates the entirety of the LEGO trademark. On that basis, they shall be considered confusingly similar to them for purposes of UDRP standing (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”));

- the addition of the suffix “hub” does not avoid a finding of confusing similarity. See section 1.8, WIPO Overview 3.0.;

- the relevant comparison is made between the second level portion of the disputed domain name and the Complainant’s trademark (see Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565; Bank Nagelmackers N.V. v. WhoisGuard, Inc / Paulo Giardini, WIPO Case No. D2016-0819);

- the TLD (here “.store”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test (see section 1.11 of the WIPO Overview 3.0).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

It is a well-established view of past UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (see Aguas de Cabreiroa, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

This Panel retains notably the following considerations:

- There is no evidence that Respondent has been commonly known by the disputed domain name;

- The Respondent has not been granted a license or authorization of any kind by the Complainant (see Guerlain S.A. v.Peikang, WIPO Case No. D2000-0055) and has never had a business relationship with the Complainant (see Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312);

- The Respondent is using the disputed domain name to redirect Internet users to an inactive website without content. The Respondent has failed to make use of the disputed domain name and has not demonstrated any attempt to make legitimate use of it; the Respondent passively holds it (see Washington Mutual, Inc. v. Ashley Khong, WIPO Case No. D2005-0740).

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“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 you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

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

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Each one of the four circumstances in paragraph 4(b) of the Policy, if found, would individually be an instance of “registration and use of a domain name in bad faith”.

A registration in bad faith occurs, inter alia, where the respondent knew or should have known of the registration and use of the trademark(s) prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain name several decades after the Complainant started using and registered the LEGO trademark. As the Complainant rightly states, the awareness of the trademark LEGO is considered, in the community in general, to be significant and substantial. In those circumstances, it is very unlikely that the Respondent was unaware that the registration of the disputed domain name would violate the Complainant’s rights. The considerable value and goodwill associated with the LEGO trademark make it very attractive to third party infringers as demonstrate the numerous cases cited by the Complainant. It is very likely that the Respondent also attempted to capitalize on the goodwill attached to the LEGO trademark and to disrupt the Complainant’s business, according to Policy, paragraphs 4(b) (iii) and (iv).

This finding is confirmed by the following facts:

- The Respondent has not responded to the cease and desist letters sent by the Complainant prior to the proceedings (see News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623);

- The disputed domain name has never been used, but has only been passively held (see Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, WIPO Case No. D2000-1228; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003);

- The combination of the LEGO trademark, the suffix “hub” and the TLD “.store” conceptually carries a high risk of implied affiliation with the Complainant.

In light of the undisputed evidence provided by the Complainant, the Panel is satisfied that the disputed domain name is registered and used in bad faith.

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 <legohub.store> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: October 15, 2021