Westmore · UDRP DecisionLegos.shop
The Panel ordered transfer of <legos.shop>. It found the domain confusingly similar to the well-known LEGO mark because it incorporated LEGO in full and merely added the pluralizing letter “s”. The Respondent lacked rights or legitimate interests, and bad faith was established from the Respondent’s likely knowledge of the mark, pattern of registering domains containing third-party marks, passive holding, default, and inaccurate contact details.
The timeline behind legos.shop
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The decision illustrates how a famous mark combined with a simple plural suffix can readily satisfy confusing similarity, and how a panel may find bad faith from the combined force of a respondent’s pattern of trademark-targeting registrations, passive holding, default, and inaccurate contact details. It also shows the importance of separating historical website use from conduct attributable to the current registrant.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Wei Zhang Case No. D2019-0756 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services AB, Sweden. The Respondent is Wei Zhang, China. 2. The Domain Name and Registrar The disputed domain name <legos.shop> is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2019. On April 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2019, 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 April 15, 2019 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 April 15, 2019. 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 April 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2019. The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on May 16, 2019. 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 is the owner of the mark LEGO and of all trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products. The Complainant has subsidiaries and branches throughout the world and LEGO products are sold in more than 130 countries. The trademark LEGO has often been recognized as being among the best-known trademarks in the world. Among other registrations, the Complainant owns the following registrations for the mark LEGO: - European Union (“EU”) trademark registration LEGO no. 000039800 registered on October 5, 1998 in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, 42; - United States of America trademark registration LEGO no. 1018875 registered on August 26, 1975 in class 28. The Complainant is also the owner of close to 5,000 domain names containing the term “lego”. The Respondent registered or acquired the registration of the disputed domain name on January 11, 2019. On September 1, 2018, i.e. before the Respondent registered or acquired the registration of the disputed domain name, the disputed domain name resolved to a commercial website advertising and selling “discount Lego sets”. However, at the time of filing of the Complaint, the disputed domain name resolved to a blank page. The Complainant sent a warning letter to the Respondent on February 7, 2019, followed by one reminder. The Respondent did not answer this letter. The Respondent is or has been involved in at least three other UDRP proceedings concerning domain names registered by the Respondent and reproducing trademarks of others. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name is confusingly similar to its well-known LEGO trademark, as the addition of the letter “s” does not have any impact on the overall impression of the dominant part of the disputed domain name, i.e. “lego”. The Complainant has not found any indication that would suggest that the Respondent has any rights or legitimate interests in the disputed domain name. The Complainant did not grant any license or authorization of any kind to the Respondent to use the mark LEGO. The Complainant alleges that the Respondent did not attempt to make any legitimate use of the disputed domain name. This leads the Complainant to conclude that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, it is clear, in view of the substantial and widespread renown of the mark LEGO, that the Respondent was aware of the Complainant’s legal rights in the name “Lego”. The Complainant alleges that Respondent is passively holding the disputed domain name in bad faith. Finally, the Complainant contends that Respondent’s involvement in a number of UDRP cases shows that the Respondent is engaged in a bad faith pattern of cybersquatting, which is evidence of bad faith registration and use of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following: (i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name registered by the respondent has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant owns various trademark registrations for the word mark LEGO. The disputed domain name <legos.shop> reproduces the Complainant’s trademark in its entirety, with the addition of the letter “s”. As the term “legos” is not a dictionary word as such, consumers are likely to perceive it as the term “lego”, referring in turn to the Complainant’s well-known mark LEGO, in the plural form. Indeed, the letter “s” is an usual indication of the plural form in English. The trademark LEGO is thus the dominant element in the disputed domain name, and the overall impression produced by the disputed domain name is very similar to the one produced by the trademark LEGO. The disputed domain name is therefore confusingly similar to a trademark in which the Complainant has rights according to paragraph 4(a)(i) of the Policy. The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Based on the information submitted by the Complainant, the Respondent is not a licensee of the Complainant, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no indication that the disputed domain name corresponds to the Respondent’s name. The Respondent does not appear to have used the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolved at some time to a commercial website selling LEGO sets, but such use predates the registration – or the acquisition of the registration – of the disputed domain name by the Respondent. The Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel finds that the Respondent’s silence corroborates the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the Panel rules that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Given the well-known character of the LEGO trademark, the Panel accepts that the Respondent most probably knew of the Complainant’s trademark when it registered – or acquired the registration of – the disputed domain name. The Respondent was involved as respondent in at least three UDRP cases where the domain names in dispute included trademarks of others. This circumstance shows in the Panel’s view that the Respondent is engaged in a pattern of registering domain names in order to prevent the owners of trademarks from reflecting their mark in a corresponding domain name. Such a pattern amounts to registration and use of a domain name in bad faith according to paragraph 4(b)(ii) of the Policy. There is no indication that the Respondent made any use of the disputed domain name since its registration in January 2019. In certain circumstances, panelists have held that passive holding of a domain name could amount to use in bad faith. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put ( section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In the case at hand, the three first factors are present: the trademark LEGO is well-known, the Respondent failed to submit a Response or to allege any actual or contemplated use, and the Respondent did not provide accurate contact details. Indeed, the address in the WhoIs details proved to be a false address as the DHL shipment of the complaint could not be delivered. The fourth factor mentioned above, i.e. the implausibility of any good faith use, is more difficult to assess, as indeed the disputed domain name might – at least in theory – be used for the sale of genuine LEGO products in compliance with the conditions of the so-called “Oki Data test” (see Oki Data Americas, Inc. v. ASD, Inc. , WIPO Case No. D2001-0903 ). This question may however remain open, as in view of all circumstances of the case (including the pattern of cybersquatting mentioned above), the Panel finds it more likely than not that the Respondent targeted the Complainant’s trademark for the purpose of taking advantage of it in some manner. For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of 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 <legos.shop> be transferred to the Complainant. Anne-Virginie La Spada Sole Panelist Date: May 29, 2019
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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