Legotoyswholesale.com

The timeline behind legotoyswholesale.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. AKOM HAPPINESS Case No. D2024-4791 1. The Parties 1.1 The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. 1.2 The Respondent is AKOM HAPPINESS, Cameroon. 2. The Domain Name and Registrar 2.1 The disputed domain name <legotoyswholesale.com> (the “Domain Name”) is registered with Hostinger Operations, UAB (the “Registrar”). 3. Procedural History 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2024. At that time, publicly available WhoIs details did not identify the registrant of the Domain Name. 3.2 On November 20, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 21, 2024, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant and contact information for the Domain Name. That underlying contact information identified the city of Yaoundé in the Republic of Cameroon, as the address of the Respondent, but did not provide a full geographical address. The email contact information provided also took the form of a Gmail address that also incorporated the text “legotoys” and “usa”. 3.3 The Center sent an email to the Complainant on November 21, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response and later that day the Center received an email from the contact email address disclosed by the Registrar. That email, although coming from the Respondent appeared to involve a request to amend the Complaint. 3.4 The Complainant filed an amended Complaint on November 26, 2024. page 2 3.5 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”). 3.6 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2024. The Center notified the Parties of the commencement of the panel appointment process on December 18, 2024. 3.7 The Center appointed Matthew S. Harris as the sole panelist in this matter on December 30, 2024. 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 4.1 The Complainant is a limited company incorporated in Denmark and is the owner of the LEGO brand for construction toys and other products. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Cameroon and the United States. The LEGO brand is very well known throughout the world. By way of example, in 2014 the publication TIME identified LEGO as the Most Influential Toy of All Time, and in 2019 Superbrands UK identified LEGO as the number 1 Consumer Superbrand. 4.2 The Complainant is the owner of numerous trade marks around the world that comprise or incorporate the term LEGO. They include: (i) United States registered trade mark No. 1018875 with a filing date of September 17, 1974 and a registration date of August 26, 1975 for LEGO as a word mark in class 28; and (ii) Cameroon registered trade mark No. 2021/126013 with a filing date of December 3, 2021 and a registration date of February 1, 2022 in class 28. 4.3 The Complainant operates a website from the domain name <lego.com> that it uses to promote its products and business and from which it is possible to purchase LEGO products. The Complainant also operates a “strict policy” that all domain names that it considers to take unfair commercial advantage of the LEGO trade mark should be “recovered”. As a consequence, it is the owner of approximately 5,000 domain names that contain the term LEGO. 4.4 The Domain Name was registered on October 11, 2024. It was used after registration for a website that purports to offer for sale the Complainant’s products, all at a discounted price. There are also aspects of this website that are very similar to the official website of the Complainant. These include: (i) the use of a logo form of the Complainant’s LEGO word mark that is similar to that used by the Complainant and which is placed in a position which is similar to where that logo is placed on the Complainant’s own website; and (ii) the use of a yellow coloured banner at the top of the home page of the website. 4.5 Other aspects of this website might suggest that this is not a website that is operated or authorised by the Complainant. These include: (a) language in the “About Us” section of the home page that makes reference to “wordpress”; and (b) the use of the words “Your address goes here” and a Gmail email address in the “Contact Us” section of the home page. However, this is only in small print at the bottom of that page. 4.6 By at least November 8, 2024, and as a result of the Complainant “requesting a takedown”, the website ceased to operate. There remains no website operating from the Domain Name as at the date of preparation of this decision. page 3 5. Parties’ Contentions A. Complainant 5.1 The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. 5.2 In this respect, it contends that the Respondent is not an authorised reseller of the Complainant’s products and that the website operation from the Domain Name does not satisfy the “Oki Data Test” in that it “does not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant, and does therefore convey the false impression that the Respondent is authorized to use the Complainant’s trademark”. 5.3 The Complainant further contends that the use made of the Domain Name creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website and as such falls within the scope of the example of circumstances indicating bad faith registration and use set out in the paragraph 4(b)(iv) of the Policy. 5.4 In support of its contentions as to bad faith, the Complainant also alleges: (a) that MX records have been set for the Domain Name that indicate that the Domain Name “may” be used for email purposes and that “it is likely that the Domain Name may be actively used to facilitate fraudulent actively such as phishing, impersonating or passing off as the Complainant”; (b) that the Respondent has used a privacy service to hide its identity; and (c) that the physical address provided by the Registrar in respect of the Domain Name “does not point to a reachable location”. B. Respondent 5.5 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar 6.1 It is generally accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trade mark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. 6.2 The Panel finds the Complainant has clearly shown rights in registered trade mark for the term “LEGO”. WIPO Overview 3.0, section 1.2.1. 6.3 The Panel also accepts that the Domain Name can only be sensibly understood as the term “LEGO” in combination with the words “toys” and “wholesale” and the “.com” generic Top-Level Domain (“gTLD”). 6.4 Accordingly, the entirety of the Complainant’s mark is clearly reproduced in its entirely and is recognisable within the Domain Name and the Panel accepts that the Domain Name is confusingly similar to the Complainant’s mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.9. 6.5 Although the addition of other terms (in this case “toys” and “wholesale”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. 6.6 The Panel, therefore, finds the first element of the Policy has been established. page 4 B. Rights or Legitimate Interests 6.7 Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. 6.8 In the present case the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name. 6.9 However, dealing with the issue more directly, and for reasons that are set out in the context of its assessment of bad faith, the Panel is satisfied that the Domain Name inherently and deliberately impersonates the Complainant, in that it was registered and held with knowledge of the Complainant’s marks and business and with the intention that it would be most likely understood by Internet users as controlled or authorised by the Complainant, when it is not. There is no right or legitimate interest in holding a domain name which takes such a form and is being held for such a purpose (see, for example, WIPO Overview 3.0, section 2.5.1) and the Panel is of the view that such impersonation and such activity provides positive evidence that no rights or legitimate interests exists. 6.10 Further, and in any event, and leaving aside the issues of impersonation, the Panel agrees with the Complainant’s contention that in order to have a right or legitimate interest in the Domain Name as an unauthorised dealer in the Complainant’s products, the Respondent would need at least to satisfy the conditions commonly referred to as the “Oki Data” requirements (as set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and section 2.8.2 of the WIPO Overview 3.0) and that one of these requirements is that the domain name holder “must accurately and prominently disclose the registrant’s relationship with the trademark holder”. This the Respondent has failed to do. The fact that on a close examination of the website operating from the Domain Name there are clues that this may not be an official website controlled or authorised by the Complainant, is insufficient to satisfy that requirement. This text is unlikely to be noticed by most Internet users and the Panel is persuaded that the Respondent intended this to be the case. Further and in any event, the Panel is of the view that the degree of disclosure required includes full disclosure of the individual or commercial entity that is operating the relevant website. None of the material that the Panel has seen amounts to that level of disclosure. 6.11 In the circumstances, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith 6.12 The Panel is satisfied that the Domain Name inherently impersonates the Complainant, and that this impersonation was deliberate, in that the Domain Name was registered with actual knowledge of the Complainant’s marks and business, and with the knowledge and deliberate intention that it would be most likely understood by Internet users as controlled or authorised by the Complainant. 6.13 The only sensible reading of the Domain Name is as the Complainant’s mark combined with the words “toys”, and “wholesale”. “Toys” obviously describes the produces in respect of which the Complainant mark is most famous and the word “wholesale” suggests that this is a domain name that is being used in respect of the offering of large quantities of products at lower than retail prices most likely for onward sale by retailers. As such it is most likely to be understood by internet users as being a domain name owned or controlled and used by the Complainant in connection with wholesale sales by the Complainant. 6.14 Further, and in any event, the way in which the Domain Name has been used makes it clear that the Domain Name was registered and held by the Respondent with the intention that this is how the Domain Name would be understood by Internet users. In this respect, the Panel accepts that the Complainant’s contention that the Domain Name has been used for a website, that deliberately emulates aspects of the Complainant’s own website operating from the <lego.com> domain name and takes a form that means that many Internet users are likely to conclude that it is either operated or authorised by the Complainant. There page 5 are aspects of this website that might signal to very attentive Internet users that this is not the case, but this is to be found in small print that is likely to go unnoticed by most visitors to the site. 6.15 It also follows that this website use also falls within the scope of the example of circumstances evidencing bad faith registration and use set out within paragraph 4(b)(iv) of the Policy. 6.16 The Panel is less convinced by the Complainant’s contentions that there has been use of a privacy shield and that this is another indicator of bad faith in this case. There is nothing before the Panel that suggests that the reason why the Respondent’s contact details were not initially publicly available, was anything other than as a consequence of the Registrar’s implementation of ICANN’s Temporary Specification for gTLD Registration Data and/or ICANN’s Registration Data Policy. However, the Panel does accept that the underlying registration details for the Domain Name provided by the Registrar, do not disclose a full geographical address that might be used to contact the Respondent, and this is something that to some degree supports a finding of bad faith registration and use. 6.17 Accordingly, the Panel finds that the Domain Name was both registered and is being used in bad faith and that the third element of the Policy has been established. 6.18 Given this, it not necessary to consider further the Complainant’s contentions based upon the setting of MX records. 6.19 Finally, the Panel notes (even though this does not form part of the Complainant’s contentions in this case) that the Gmail address used by the Respondent, takes a form that appears to inherently misrepresent that it comes from the Complainant in the United States, and that the Respondent also appears to have used that email address in an email to the Center dated November 21, 2024, in which the Respondent actively impersonated the Complainant in these proceedings. However, the Panel has not needed to take this into account, when coming to its findings in this case. 7. Decision 7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <legotoyswholesale.com> be transferred to the Complainant. /Matthew S. Harris/ Matthew S. Harris Sole Panelist Date: January 13, 2025

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.