Westmore · UDRP DecisionLegocon.com
The Panel ordered transfer of <legocon.com>. It found the domain confusingly similar to the Complainant’s LEGO trademark because it incorporated LEGO in its entirety with the suffix “con.” The Complainant established a prima facie case that the Respondent lacked rights or legitimate interests, which the Respondent did not rebut. The Panel also found bad-faith registration and use based on the renown and distinctive character of LEGO, the Respondent’s passive holding, the absence of a substantive response, and the Panel’s interpretation of the Respondent’s informal settlement communication.
The timeline behind legocon.com
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 domain that wholly incorporates a renowned and distinctive mark may satisfy all three UDRP elements even when it is not actively used. The Panel treated the suffix “con” as insufficient to avoid confusing similarity and assessed inactivity under the passive-holding doctrine, relying on the mark’s renown, the absence of a credible explanation, and the lack of a substantive response.
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. David Holm Case No. D2021-0738 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. The Respondent is David Holm, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name <legocon.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 March 11, 2021. On March 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 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 March 16, 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 March 18, 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 March 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2021. On March 19, 2021, the Respondent sent an informal email to the Center asking about the possibility of settlement. Although the Complainant tried to contact the Respondent to settle the case before Panel appointment, no settlement was reached. Moreover, the Respondent did not submit any formal response. Pursuant to paragraph 6 of the Rules, the Center sent an email communication to the Parties on April 15, 2021 indicating that it would proceed to Panel Appointment. The Center appointed Fabrizio Bedarida as the sole panelist in this matter on April 20, 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 in this proceeding, LEGO Juris A/S of Billund, Denmark, is the owner of the world-renowned LEGO trademark used in connection with the famous LEGO 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, including in the US. The Complainant owns the LEGO mark, which enjoys thorough protection through many registrations thereof worldwide, United States included. The LEGO trademark is among the best-known trademarks in the world. The Complainant is, inter alia , the owner of the United States trademark registration number 1018875 for the LEGO mark, granted in August 26, 1975. Moreover, the Complainant is also the owner of thousands of domain name registrations corresponding to and/or containing the LEGO mark. The disputed domain name was registered on August 5, 2020. The disputed domain name resolves to an inactive site. The Complainant’s trademark registrations predate the registration of the disputed domain name. 5. Parties’ Contentions A. Complainant The Complainant claims that the dominant part of the disputed domain name comprises the term “lego”, identical to the registered trademark LEGO, and that the addition of the suffix “con” does not detract from the overall impression. The Complainant thus concludes that the disputed domain name is confusingly similar to the LEGO trademark. To this end, the Complainant quotes several UDRP decisions in which it is established that confusing similarity is generally recognized when well-known trademarks are paired with different kinds of generic prefixes and suffixes. The Complainant further states that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name. In fact, the Complainant claims that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, and that it has not found anything else that would suggest that the Respondent has been using the terms “lego” in any other way that would give it any legitimate rights in the name. No license, or authorization of any other kind, has been given by the Complainant to the Respondent to use the LEGO trademark. Moreover, the Complainant asserts that LEGO is a world-famous trademark (including in the US where the Respondent resides). It is clear that the Respondent was aware of the rights the Complainant has in the trademark LEGO, and of the value of said trademark, at the time of the registration. The Complainant then claims that, due to the fame of the Complainant’s trademark the Respondent should be considered to have known of the existence of the Complainant’s trademark. There is no connection between the Respondent and the Complainant. The disputed domain name has been registered and is used in bad faith. B. Respondent On March 19, 2021, the Respondent sent a very short and informal email to the Center asking if there was a simpler way to resolve the matter at issue. In response, the Center sent an email informing the parties of the possibility of a settlement between the parties. Following this communication the Complainant tried to contact the Respondent to settle the case before the Panel appointment, but the Respondent did not co-operate (namely he did not respond at all to the Complainant’s request to settle and transfer the disputed domain name). Consequently, no settlement was reached. Moreover, the Respondent did not submit any formal (or informal) response to claim any rights and/or legitimate interests in the disputed domain name or to deny the Complainant’s claims of bad faith use and registration of the disputed domain name. 6. Discussion and Findings In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that: (i) The disputed domain name 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 disputed domain name; and (iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has established rights in the LEGO trademark. The disputed domain name <legocon.com> contains the Complainant’s LEGO with the addition of the suffix “con” and the generic Top-Level Domain “.com”. The addition in the disputed domain name of the suffix “con” does obviously not prevent confusing similarity with the renowned LEGO trademark. This Panel agrees with previous UDRP decisions affirming that confusing similarity is generally established when the domain name incorporates the Complainant’s trademark in its entirety, and that the addition of generic prefixes and suffixes does not avoid confusing similarity. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale , WIPO Case No. D2000-0662 and section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Therefore, the Panel finds the disputed domain name to be confusingly similar to the LEGO trademark in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name (see section 2.1 of the WIPO Overview 3.0 ). The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name. Thus, this Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the LEGO mark when it registered the disputed domain name. In fact, the Complainant’s LEGO trademark is a fanciful name with no meaning aside from referring to the Complainant’s goods. It has been registered and used for many decades and is a renowned trademark worldwide. Moreover the Panel notes the following: The Respondent’s passive holding of the disputed domain name constitutes here bad faith use and registration (see section 3.3 of the WIPO Overview 3.0 ) as well as a disruption of the Complainant’s business under the paragraph 4(b)(iii) of the Policy. Further inference of bad faith registration and use of the disputed domain name is based on the fact that the Respondent did not submit a substantive reply to the Complainant’s communications sent before and during the proceeding. Indeed, owing to the fact that the Respondent has not denied the assertions of bad faith made by the Complainant in the pre-action communications and in this proceeding, it is reasonable to infer that if the Respondent had legitimate purposes for registering and using the disputed domain names he would have responded to them. Finally, the Panel notes that the Respondent, in his brief informal communication, appears to have in fact expressed his willingness to settle and transfer the disputed domain name to the Complainant. This Panel considers that this could be seen as an acknowledgment of the Complainant’s previous rights in the LEGO mark. Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith. Therefore, 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 <legocon.com> be transferred to the Complainant. Fabrizio Bedarida Sole Panelist Date: April 29, 2021
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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