WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Cuong Nguyen Viet

Case No. D2018-0097

1. The Parties

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

The Respondent is Cuong Nguyen Viet of Hanoi, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <legolepin.com> 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 January 18, 2018. On January 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2018.

The Center appointed J. Nelson Landry as the sole panelist in this matter on February 19, 2018. 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 the owner of the LEGO trademarks (hereinafter the “LEGO Trademarks”). The Complainant has been using its LEGO Trademarks in commerce as early as 1954 in connection with the construction toys and other LEGO branded products, and has obtained registrations for such Trademarks, first in Denmark and then in more than 130 countries including in Viet Nam where the Respondent is located. The Complainant is also the registered owner of a logo design trademark for the term LEGO, the design consisting of the four letters in white with a black linear surrounding and yellow contour of the word against a rectangular in light red color, registered in Denmark on March 14, 2005 (hereinafter the “LEGO design Trademark”).

The Complainant has granted to business corporation licenses whereby such licensees are authorized to exploit the Complainant’s intellectual property rights, including its LEGO Trademarks rights in the United States of America and other countries and thus formed the Lego Group. As a result, the Complainant has subsidiaries and branches through the world and the LEGO products are sold in more than 130 countries, including in Viet Nam where the Respondent is located.

The Lego Group is the owner of more than 5,000 domain names containing the Trademark LEGO and the Complainant has a strict policy of recovering domain names registered by third parties and taking unfair commercial advantages of its LEGO Trademarks. The Complainant and its licensees also maintain an extensive website under the domain name <lego.com>.

The disputed domain name <legolepin.com> was registered by the Respondent on July 22, 2017. The Respondent is not a licensee of the Complainant’s LEGO Trademarks and has not otherwise obtained authorization or license from the Complainant to use the Complainant’s LEGO Trademarks or to register the disputed domain name.

The Respondent was initially using the disputed domain name to resolve to a website that copied the color scheme of the Complainant’s LEGO Trademarks, to market and sell LEGO toys as well as toys manufactured by Lepin, a competitor of the Complainant.

On November 27, 2017, the Complainant sent a cease and desist letter by email to the Respondent asking for the transfer of the disputed domain name who answered and engaged the same day in an exchange of email communications. Initially the Respondent asked a sum of $3,000 to cancel the domain name which request he finally reduced to $450, upon realizing that the cost of aUDRP Complaint would be more expensive for the Complainant. Pursuant to a 2 week period granted by the Complainant he still refused to transfer the disputed domain name without financial compensation on the basis of the expenses he had engaged to develop his website associated with the disputed domain name including modifications thereto pursuant to the reception of the initial cease and desist letter from the Complainant.

Currently the disputed domain name, pursuant to modification pursuant to the reception of the above cease and desist letter resolves to a website displaying pay per click links to Lepin website and toys.

5. Parties’ Contentions

A. Complainant

The Complainant represents that it has made extensive use and promotion of its LEGO Trademarks including its over 5,000 domain names containing the term “lego”. Pursuant to decades of expanding sales and extensive advertising prominently showing the LEGO Trademarks on all products, packaging and promotional material, the Complainant represents that the LEGO Trademarks have been recognized as being famous such as their presence in the list of official top 500 Superbrands for 2017 wherein the LEGO products are winner in the category “Child Products-Toys and Education”. Furthermore, the Reputation Institute nominated the LEGO Group as number 2 on their list of “the World’s Most Reputable Company” and in 2014, TIME announced LEGO to be the “Most Influential Toy of All Time”.

The Complainant represents that the disputed domain name comprises the term “lego” identical to the LEGO Trademarks and within its domain names in numerous countries all over the world including in Viet Nam.

The Complainant quotes earlier UDRP decisions wherein the LEGO Trademark was considered well recognized as world famous and distinctive trademark. See LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692 and Juris A/S v. Michael Longo, WIPO Case No. D2008-1715.

The Complainant further represents that the addition of the suffix “lepin” will not have any impact on the overall impression of the dominant part of the name, LEGO, recognizable as a world famous trademark and cites WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.8 wherein it is stated that “the addition of other terms, descriptive, geographical, pejorative, meaningless or otherwise would not prevent a finding of confusing similarity whether under the first element”. The Complainant refers to a similar situation in L’OREAL v. Larry Huston, WIPO Case No. D2014-1249 wherein the disputed domain name <legolandwaterpark.com> was found confusingly similar to the Complainant’s registered LEGO and LEGOLAND Trademarks, the addition of the term “waterpark” not serving to distinguish the disputed domain name but rather suggesting the type of services or products provided.

The Complainant represents another base of confusing similarity in representing that the Respondent uses a website that copied the color scheme of Complainant’s LEGO Trademark logo to market and sell LEGO toys as well as toys manufactured by the Complainant’s competitor Lepin associated with a highly similar LEPIN logo which suggests the confusing similarity intended by the Respondent.

The Complainant concludes its representation of confusing similarity in submitting that the addition of the Top-Level Domain (“TLD”) (“.com”) does not impact on the overall impression of confusing similarity.

In respect of lack of rights or legitimate interests in the disputed domain name, the Complainant has not found that the Respondent identified as an individual in the pertinent WhoIs information has any registered trademarks or tradenames corresponding to the disputed domain name and further states that the Respondent has not been using the term “lego” in any other way that would give the Respondent any legitimate rights in the disputed domain name and consequently may not claim any rights thereon established by common usage.

The Complainant states that it has never granted any license or authorization to the Respondent to use the LEGO Trademarks or to register the disputed domain name and further adds that the Respondent is not an authorized dealer of the Complainant’s products and never had any business relationship with the Complainant.

Adducing evidence of the fame associated with its LEGO Trademarks, the Complainant submits that it is highly unlikely that the Respondent did not know of the Complainant’s legal rights in the LEGO Trademarks or name when the disputed domain name was registered in November 2017.

The Complainant further represents that the Respondent is not using the disputed domain name with a bona fide offering of goods or services when the disputed domain name has been registered with the incorporation therein of wildly known registered LEGO Trademarks to generate traffic and income through the Respondent’s website which offers and tries to sell the Complainant’s products and those of Lepin, one of Complainant’s competitors. The Complainant further represents that the disputed domain name website is also featuring the red, yellow, black and white color scheme and logo font which the Complainant represents as confusingly similar to its LEGO logo design. The Complainant concludes its representations in observing that subsequent to the reception of its cease and desist letter, the Respondent modified his website simply to inform visitors about the new location of his commercial website on which the Respondent is still offering for sale and selling competing products representing the similar Lepin logo and concludes in stating that the Respondent is thus not making a legitimate use of the disputed domain name.

The Complainant submits that it has represented and established the status of its well-known and reputed LEGO Trademarks with substantial reputation throughout the world and that such status of its LEGO Trademarks in combination with other words in third parties domain names has been considered and determined in at least 20 domain names disputes wherein confusing domain names with the LEGO Trademarks were under consideration and wherein the value and goodwill associated with the LEGO Trademarks that induced the Respondent to register the disputed domain name. The Complainant concludes that the Respondent should be considered to have known the existence of the Complainant’s LEGO Trademarks when the disputed domain name was registered and thus misappropriating its LEGO Trademarks as a mean to redirect Internet users to his website to see offers of competing products and concludes that the Respondent has registered the disputed domain name in bad faith.

The Complainant contends that the Respondent’s use of the disputed domain name and promotion of Lepin products constitutes a disruption of the Complainant’s business and amounts to use in bad faith by reason of the offers for sale of toy products in competition with those of the Complainant.

On November 27, 2017, the Complainant through its cease and desist letter by email advised the Respondent of his violation of its trademark rights and requested a voluntary transfer of the disputed domain name. The Respondent’s reply included a statement that his store would be closed the following week and asked $3,000 to sell the disputed domain name and lowered its offer to $450 pursuant to the Complainant’s rejection of the initial offer and the Respondent continued to use delay tactics such as claiming not knowing how to transfer the disputed domain name and then became silent. However the Respondent changed his website to feature information about his new website “www.lepinworld.com” where the Respondent was offering a 20% discount coupon for the sale of Lepin toy products in competition with the Complainant’s business. The Complainant concludes that upon considering the value of its LEGO Trademarks at the time of registration, absence of connections between the Respondent and the Complainant and the absence of a legitimate noncommercial or fair use of the disputed domain name, the Respondent was using in bad faith the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has well established it owns registration rights in respect of its LEGO Trademarks since 1954 in more than 130 countries subsequent to the initial registration in Denmark in 1954 in association with construction toys and over 5,000 domains names containing the term “lego”. The Complainant has also adduced evidence demonstrating that its LEGO Trademarks have been recognized as famous within the first in the list of the 500 Super Brands for 2017 and ranking second in the list of nominations by the Reputation Institute of “The World’s Most Reputable Company”. The disputed domain name incorporates the famous LEGO Trademark as the first element followed by the term “lepin” which is the name of another toy manufacturer, competitor of the Complainant.

The Panel considers on the basis of facts and representations that the disputed domain name incorporating the famous LEGO Trademark and the term “lepin” associated with the name of a company also involved in toy manufacturing and distribution is confusingly similar to the Complainant’s LEGO trademarks. It is well established that the addition of the TLD suffix “.com” does not diminish in any way the confusing similarity.

The Panel, therefore, determines that the disputed domain name is confusingly similar to the above mentioned famous LEGO Trademark.

The first criterion has been met.

B. Rights or Legitimate Interests

The Complainant has discharged its burden of prima facie evidence showing that the Respondent has no rights or legitimate interests in the disputed domain name. It has proven that there was no affiliation or business relationship with the Respondent nor any authorization or license to the Respondent to register the disputed domain name and that the Respondent was not known by the name LEGO or other names incorporating same. The burden of production then shifts to the Respondent who did not respond nor show that he had such rights. Finally the Complainant has shown that the Respondent in his use of the website associated at the address of the disputed domain name is offering for sale toys manufactured and marketed by the Lepin toy manufacture, thereby establishing that the Respondent’s domain name is used in commercial activities.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The second criterion has been met.

C. Registered and Used in Bad Faith

In considering the extensive use of the LEGO Trademarks by the Complainant and its licensees forming the LEGO Group and their intense advertising and commercial activities in promoting and selling LEGO toys in more than 130 countries and the possibility of locating these LEGO Trademarks in conducting a Google search, the absence of awareness of the LEGO Trademarks by the Respondent is inconceivable to this Panel and this view is comforted by the evidence of the Respondent’s behavior in promoting on his website associated with the disputed domain name the promotion and offer for sale of Lepin products in direct competition with the LEGO toys of the Complainant and using the Lepin logo confusingly similar to the LEGO logo of the Complainant. The Panel concludes and determines that the registration and use of the disputed domain name was in bad faith.

This bad faith behavior of the Respondent is confirmed by the behavior of the latter in his email negotiations with the Complainant first requesting financial compensation of the disputed domain name and the Respondent’s subsequent modifications of its website content which was then used to redirect Internet visitors to another website where the change is explained and Lepin competitive products with the Lepin similar logo are offered at a reduced price to compensate for the inconvenience created by the change.

The Panel adopts the contention that the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and amounts to a use of said domain name in bad faith upon considering the offers for sale of competitive toy products. This further use in bad faith is confirmed by the absence of a legitimate noncommercial or fair use of the disputed domain name.

The Panel therefore determines that the disputed domain name has been registered and used in bad faith.

The third criterion has been met.

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, <legolepin.com> be transferred to the Complainant.

J. Nelson Landry
Sole Panelist
Date: March 2, 2018