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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. JH Kang

Case No. DCO2021-0060

1. The Parties

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

The Respondent is JH Kang, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <legohouse.co> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2021. On July 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 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 27, 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 a first amended Complaint on July 30, 2021 and a second amended Complaint on August 6, 2021.

The Center verified that the Complaint together with the amended Complaints 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 amended Complaints, and the proceedings commenced on August 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2021.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on September 8, 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 is a multinational toy company headquartered in Denmark. The Complainant has a network of licensees which are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in South Korea and elsewhere. Over the years, the Complainant’s business of making and selling LEGO-branded toys has grown remarkably. The Complainant currently has subsidiaries and branches throughout the world, and LEGO-branded products are currently sold in more than 130 countries, including in South Korea. The Complainant provides evidence that its LEGO brand has received an array of awards and prizes, including recognition as the “number 1 Consumer Superbrand” by Superbrands UK in 2019. The Complainant also provides evidence that LEGO was recognized as a well-known trademark by panels in various prior UDRP cases, such as LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715 and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680.

The Complainant provides evidence that it owns a large trademark portfolio for LEGO (word and logo marks), including, but not limited to, South Korean trademark registration number 4000666770000 for the LEGO word mark, registered on January 21, 1980, and South Korean trademark registration number 4000666760000 for the LEGO logo mark registered on January 21, 1980. The Complainant also owns a large portfolio of approximately 5,000 official domain names, including, <lego.com>, registered on August 21, 1995, and <legohouse.com>, registered on April 25, 2008.

The disputed domain name was registered on November 28, 2020, and is therefore of a later date than the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain name directs to an active webpage, containing pay-per-click hyperlinks to a number of LEGO-related websites, including a website purporting to be the LEGO Australia head office website and a purported web shop for “Me LEGO” products. Moreover, the Complainant also provides evidence that the disputed domain name is offered for sale for the amount of USD 200 on websites such as “www.godaddy.com” and “www.afternic.com”.

The Complainant also provides evidence that it sent cease-and-desist letters to the Respondent via the Registrar on January 20 and 27, 2021, but it received no response to these letters.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for LEGO, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademarks are distinctive and well-known, and submits company and marketing information as well as a number of prior UDRP decisions which have recognized that the Complainant’s trademark for LEGO is well-known, see for instance LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715 and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680. The Complainant particularly contends that that the Respondent was using the disputed domain name to direct Internet users to a website offering pay-per-click hyperlinks to LEGO-related websites and that it is attempting to sell the disputed domain name for an amount in excess of the Respondent’s out-of-pocket costs. The Complainant also contends that there are no justifications for the use of its trademarks in the disputed domain name and claims that the use of its trademarks in the disputed domain name linked to a website listing pay-per-click hyperlinks does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes use in bad faith. Finally, the Complainant also contends that the Respondent has engaged in a pattern of bad faith cybersquatting.

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

B. Respondent

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

6. Discussion and Findings

The Policy requires the Complainant to prove three elements:

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

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the LEGO mark, based on its intensive use and trademark registrations in a large number of jurisdictions.

Moreover, as to confusing similarity, the disputed domain name consists of the combination of the Complainant’s registered trademark for LEGO followed by the descriptive term “house” and the country code top-level domain (ccTLD) “.co”. The Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, “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 Panel concludes that the disputed domain name contains the entirety of the Complainant’s LEGO trademark, which remains easily recognizable as its only distinctive feature, and that the addition of the term “house” therefore does not prevent a finding of confusing similarity. Moreover, the addition of the applicable ccTLD (“.co” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee, or distributor of the Complainant; is not a bona fide provider of goods or services under the disputed domain name; and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent.

Moreover, upon review of the facts and evidence submitted, the Panel notes that the disputed domain name directs to an active webpage containing pay-per-click hyperlinks to LEGO-related websites, including a website purporting to be the LEGO Australia head office website and a purported web shop for “Me LEGO” products. In the Panel’s view, this shows that the Respondent’s intention was not to make use of the disputed domain name as a bona fide provider of goods or services, or to make legitimate noncommercial use or fair use of the Complainant’s trademarks in the disputed domain name. Instead, it shows the Respondent’s clear intention to divert Internet users for commercial gain to such third party websites, by taking unfair advantage of the goodwill and reputation of the Complainant’ trademarks for LEGO (see also previous UDRP decisions in this sense such as Maker Studios, Inc. v. ORM LTD / Contact Privacy Inc. Customer 0137258808, WIPO Case No. D2014-0918, and Comerica Incorporated v. Balticsea LLC / Contact Privacy Inc. Customer 0131519121, WIPO Case No. D2013-0932).

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The registration of the disputed domain name, which incorporates the Complainant’s famous LEGO trademark in its entirety, is clearly intended to mislead and divert consumers away from the Complainant’s official websites to the website linked to the disputed domain name. Given the Respondent’s clearly intentional targeting of the Complainant’s internationally well-known mark, the Panel finds that the registration of the disputed domain name was obtained in bad faith. This finding is reinforced by the particular choice of the word “house” which was combined with the trademark LEGO to form the disputed domain name, since the Complainant operates a LEGO experience centre with the identical name “LEGO House” located in Billund, Denmark, where the Complainant is headquartered, and provides information about this at the website linked to the Complainant’s nearly identical official domain name <legohouse.com>. It is therefore clear that by registering the disputed domain name, the Respondent was trying to mislead Internet users and pass its website off as an official website about the Complainant’s “LEGO House” experience centre. In the Panel’s view, the preceding elements clearly indicate the bad faith of Respondent, and the Panel therefore finds that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.

As to use of the disputed domain name in bad faith, the website linked to the disputed domain name currently displays pay-per-click hyperlinks to various third party providers of goods and services, including a website purporting to be the LEGO Australia head office website and a purported web shop for “Me LEGO” products, which shows that the Respondent is misleading and diverting consumers for commercial gain to the websites of such third parties. Moreover, the disputed domain name is also offered for sale for the amount of USD 200 on websites such as “www.godaddy.com” and “www.afternic.com”. This leads the Panel to conclude that the Respondent is also using the disputed domain name to offer it for sale in excess of the documented out-of-pocket costs related to the disputed domain name. In this regard, paragraph 4(b) of the Policy states that such use constitutes direct evidence of bad faith.

Finally, the Panel also finds that the Complainant sufficiently proves that the Respondent has been engaged in a pattern of trademark abusive domain name registrations. In this regard, the Panel refers to a number of prior UDRP decisions involving the Respondent, including Gilead Sciences, Inc. v. JH Kang, WIPO Case No. DCO2021-0010 and Medtronic, Inc. v. JH Kang, WIPO Case No. DCO2020-0040, and to reverse WhoIs records provided by the Complainant, from which it appears that the Respondent has registered a large number of domain names incorporating a number of famous third party brands. Based on the aforementioned elements, the Panel concludes that it has been demonstrated that the Respondent is using the disputed domain name in bad faith.

Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third element under the Policy.

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 <legohouse.co> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: September 20, 2021

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