WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Contact Privacy Inc. Customer 0161312442 / Name Redacted, Contact Privacy Inc. Customer 0161313097 / Edwards William, Lego Sale and Contact Privacy Inc. Customer 0161311979 / Name Redacted
Case No. D2021-3817
1. The Parties
The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent are Contact Privacy Inc. Contact Privacy Inc. Customer 0161312442, Canada / Name Redacted, Customer 0161313097, Canada / Edwards William, Lego Sale, United States of America (“United States” and Contact Privacy Inc. Customer 0161311979, Canada / Name Redacted1 .
2. The Domain Names and Registrar
The disputed domain names <legoonlines.com>, <saleslego.com>, and <uslego.store> are registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2021. On November 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 17, 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 November 19, 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 December 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2022. The Center received e-mail messages on December 31, 2021 and January 3, 2022 from the individuals that had been named as Respondents in connection with the disputed domain names <uslego.store> and <legoonlines.com>, respectively.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 8, 2022. 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 uses the LEGO trademark to identify inter alia construction toys, computer hardware and software, books, videos and computer controlled robotic construction sets.
The Complainant is the owner of dozens of trademark registrations for LEGO around the world (Annex 3 to the Amended Complaint) amongst which the Canadian trademark registration No. 0236250 for the word mark LEGO, filed on June 14, 1956, registered on April 26, 1957 and subsequently renewed (Annex 3.2 to the Amended Complaint).
The disputed domain names were registered April 2, 2021 and are being used in connection websites that attempt to infect Internet users’ computers with viruses or malware.
5. Parties’ Contentions
According to the Complainant, the disputed domain names are under common control given that all three disputed domain names (i) were registered on the same day (April 2, 2021), through the same registrar and using privacy protection services; (ii) resolve to the same error webpage; (iii) have a similar naming pattern, all of them consisting of the reproduction of the Complainant’s trademark with the addition of a dictionary or geographic term such as “sales”, “us” or “onlines”; (iv) the named Respondents are all based in the United States and in the same Federal State, California; and (v) the named Registrant organizations for the three named Respondents are formed in a similar way where the Complainant’s LEGO trademark and additional terms are incorporated (“LEGO.CN”, “Lego Sale” and “LEGO.CW”).
The Complainant asserts to own one of the best-known trademarks in the world, having been ranked number 1 at the top 20 Consumer Superbrands for 2019 by Superbrands United Kingdom in the category “Child Products – Toys and Education” (Annex 6.1 to the Amended Complaint), as well as having been announced by Time as the “Most Influential Toy of All Time” (Annex 6.3 to the Amended Complaint). The Complainant further asserts that its group sells LEGO products in more than 130 countries, having the LEGO trademark acquired substantial inherent distinctiveness, deserving the special protection awarded to well-known trademarks foreseen in the Paris Convention and the TRIPs Agreement.
According to the Complainant, the dominant part of the disputed domain names comprises the registered and very well-known trademark LEGO, the addition of the dictionary terms “sales” and “onlines” or the geographical term “us” not detracting it from the overall impression, thus being the disputed domain names confusingly similar to the Complainant’s trademark.
As to the absence of rights or legitimate interests, the Complainant argues that:
(i) it has not found any trademarks or trade names registered by the Respondents corresponding to the disputed domain names, nor has it found anything that would suggest the Respondents’ legitimate interests or rights in the disputed domain names;
(ii) no license or authorization of any kind has been given by the Complainant to the Respondents to register the disputed domain names, not ever having the Respondents been in a business relationship with the Complainant; and
(iii) the Respondents are not using the disputed domain names in connection with a bona fide offering of goods or services given that the disputed domain names resolve to websites that attempt to infect Internet users’ computers with viruses or malware, what cannot be considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain names.
Moreover, the Complainant has attempted to solve the matter amicably by sending a warning letter and two reminders to the Respondents (Annexes 10 and 11 to the Amended Complaint) advising the Respondents of the unauthorized use of the LEGO trademark and requesting a voluntary transfer of the disputed domain names, also offering to compensate for the expenses of registration and transfer fees. No reply was received to these letters.
Lastly, the Complainant points out that given the well-known status of the LEGO trademark, the Respondents chose the disputed domain names to attract visitors to websites that attempt to infect Internet users’ computers with viruses or malware, which is evidence of bad faith use.
On December 31, 2021 the Center received an e-mail message from the individual that was named as Respondent for the <uslego.store> disputed domain name stating that she is a retired school teacher and is unrelated to the disputed domain name.
On January 3, 2022 the individual that was named as Respondent for <legoonlines.com> sent an informal e-mail message to the Center stating that she had no business with the disputed domain name and that the communication that had been sent mentioned a wrong address but had her name and telephone number associated with it.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain names transferred to it, according to paragraph 4(a) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondents do not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
Before turning to these questions, however, the Panel needs to address the issue of the consolidation of multiple Respondents.
A. Consolidation of Multiple Respondents
The Complainant requests that this Panel accept multiple Respondents in a single proceeding in view of the facts enumerated at the section 5.A. above.
Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the three disputed domain names dealt with at the same procedure, given that all disputed domain names: (a) were registered on the same date, through the same registrar and using privacy protection services; (b) share a similar naming pattern; (c) resolve to the same website that attempts to infect Internet users’ computers with viruses or malware; (iv) appear to have been registered using stolen personal information of individuals that are not related to the disputed domain names; and (e) no objection was made by the Respondents regarding consolidation.
This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties.
B. Identical or Confusingly Similar
The Complainant has established its rights in the trademark LEGO (Annexes 3.1 and 5 to the Amended Complaint). It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. (WIPO Overview 3.0, section 1.7).
The Complainant’s mark is entirely reproduced in the disputed domain names and the addition of the terms “sales”, “onlines” or geographical indicator for the United States of America “US”, in this Panel’s point of view, does not prevent a finding of confusing similarity between the disputed domain names and the trademark.
For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain names. These circumstances are:
(i) before any notice of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain names, even if they have acquired no trademark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As seen above, the disputed domain names appear to have been registered using stolen personal information and are being used in connection with websites that attempt to infect Internet users’ computers with viruses or malware. Such conduct cannot characterize a bona fide offering of goods or services.
In addition to that, the Complainant indeed states that no authorization, license, permission or consent was granted for the use of LEGO in the disputed domain names.
Furthermore, the absence of any trademarks registered by the Respondents corresponding to the disputed domain names corroborates with the indication of the absence of a right or legitimate interest.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.
D. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the Respondents have registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant who is the owner of a trademark relating to the disputed domain names or to a competitor of the Complainant, for valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the disputed domain names; or
(ii) the Respondents have registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondents have engaged in a pattern of such conduct; or
(iii) the Respondents have registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ website or other location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website or location or of a product or service on the Respondents’ website or location.
The registration and use of the disputed domain names in bad faith can be found in the present case in view of the following circumstances:
(i) the Respondents have provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names;
(ii) the well-known status of the Complainant’s trademark and the nature of the disputed domain names, along with the potential use in connection with fraudulent websites, suggests a rather clear indication of the Respondents’ registration and holding of the disputed domain names in bad faith, with the implausibility of any good faith use to which the disputed domain names may be put;
(iii) the choice to retain a privacy protection service to conceal the Respondents’ true identity;
(iv) the absence of any reply to the warning letter and respective reminders sent prior to this proceeding; and
(v) the indication of a false address in the WhoIs data and, consequently, the Center not being able to have communications fully delivered to the Respondents.
For the reasons stated above, the Panel finds that the disputed domain names were registered and are being used in bad faith.
The third element of the Policy has therefore been established.
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 names, <legoonlines.com>, <saleslego.com> and <uslego.store>, be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: February 18, 2022
1 The Respondent appears to have used the name of third parties when registering the disputed domain names. In light of the potential identity theft, the Panel orders that the individuals named as Respondents be redacted from this decision. The Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain names, which includes the named Respondents. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision should not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.