Westmore · UDRP DecisionLegomask.com
The Panel ordered transfer of <legomask.com>. It found the domain confusingly similar to the Complainant’s LEGO trademark because it incorporated LEGO with the descriptive term “mask.” The Respondent lacked rights or legitimate interests because the domain was used for competing commercial activity without authorization, and the Respondent supplied no evidence establishing rights or a bona fide offering. Bad faith was established because the well-known LEGO mark predated the domain by decades and the associated website offered resembling products in a manner intended to attract consumers for commercial gain by creating an impression of affiliation.
The timeline behind legomask.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind legomask.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates a straightforward paragraph 4(b)(iv) fact pattern involving a well-known mark incorporated into a retail-oriented domain and used for competing commercial activity. It also shows the importance of distinguishing an allegation that goods are counterfeit from the narrower Panel finding that the site offered competing or resembling products.
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. Shahin Masoum Case No. D2019-2262 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services AB, Sweden. The Respondent is Shahin Masoum, Iran (Islamic Republic of). 2. The Domain Name and Registrar The disputed domain name <legomask.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2019. On September 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 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 the same day, 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 September 23, 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 September 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2019. In response to the latter notification, the Center received an email communication from the Respondent on the same day. The Center appointed Nayiri Boghossian as the sole panelist in this matter on October 18, 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 LEGO branded products are sold in more than 130 countries. The Complainant has registered the trademark LEGO in a number of countries including Iran (Islamic Republic of) under trademark registration no. 25637 dated April 27, 1964. The Complainant owns close to 5,000 domain names containing the trademark LEGO. The LEGO trademark is well-known and has been used over decades. The disputed domain name was registered on July 1, 2019 and it resolves to what appears to be an online shop in Persian purportedly offering products similar to the Complainant’s LEGO products. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The disputed domain name includes the trademark LEGO. The trademark LEGO is well-known. The addition of the generic term “mask” does not affect the overall impression. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not have an impact either on the overall impression. The use of the famous trademark of the Complainant would create the impression that the disputed domain name is associated with the Complainant and would also dilute the trademark. The disputed domain name resolves to a website which sells counterfeit LEGO products. This confirms the confusing similarity. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not seem to have any registered trademarks or tradenames corresponding to the domain name nor has been using LEGO in any way that would give him legitimate rights. The Respondent is not commonly known by the disputed domain name. No license or authorization has been given by the Complainant to the Respondent to use its trademark. No business relation exists between the Complainant and the Respondent. LEGO being a famous mark, its use in the domain name violates the rights of the Complainant. The Respondent is trying to benefit from the repute of the trademark LEGO and is not using the disputed domain name with a bona fide offering of goods or services. On the contrary, the Respondent is attempting to generate Internet traffic to its website in order to sell counterfeit LEGO products. The Respondent may be attempting to phish personal information from the Complainant’s customers. The requirements outlined in Oki Data Americas, Inc. v. ASD, Inc. , WIPO Case No. D2001-0903 are not met in the current case. The Complainant contends that the disputed domain name was registered and is being used in bad faith. LEGO is a well-known trademark. The Respondent registered the disputed domain name decades after the Complainant had registered its trademark. The Complainant has sent a cease and desist letter to the Respondent but no reply was received. Furthermore, the incorporation of a well-known trademark into a domain name is an indication of bad faith. The Respondent is attempting to attract Internet users to its website which sells counterfeit products by creating an impression of being associated with the Complainant. This is clear from the use of the colors of the Complainant’s logo in a logo designed and used by the Respondent. The Respondent is attempting to attract consumers for commercial gain. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant owns trademark registrations for the trademark LEGO in many jurisdictions, including Iran (Islamic Republic of). The Panel is satisfied that the Complainant has established its ownership of the trademark LEGO. The disputed domain name comprises the Complainant’s trademark LEGO combined with the descriptive term “mask”, which does not prevent a finding of confusing similarity between the Complainant’s trademark LEGO and the disputed domain name. The gTLD “.com” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions. Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name which is used for competing commercial activity. The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. In particular, the Panel notes that the Respondent is offering products competing with the Complainant’s products under the same trademark. The Panel does not find this to be a bona fide offering of goods and services within the meaning of the Policy. Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The element of bad faith is evidenced by the fact that the trademark LEGO is well-known and has been in use for decades before the disputed domain name was registered. Furthermore, the website to which the disputed domain name resolves offers products resembling the Complainant’s products. Hence, it must be that the Respondent was fully aware of the Complainant and its trademark and has registered and used the disputed domain name comprising the Complainant’s mark with the aim of attracting consumers to its website and with the intent of commercial gain, by creating the impression of being affiliated with the Complainant. The fact that the Respondent has not responded to the cease and desist letter sent by the Complainant is a further indication of bad faith. Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied 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 <legomask.com> be transferred to the Complainant. Nayiri Boghossian Sole Panelist Date: October 27, 2019
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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