LEGO Juris A/S v Perfect Privacy LLC / Rockefeller Productions

WIPO Case No. D2022-3068

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Perfect Privacy LLC / Rockefeller Productions

Case No. D2022-3068

1. The Parties

The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB,

Sweden.

The Respondent is Perfect Privacy LLC, United States of America (“United States”) / Rockefeller

Productions, United States.

2. The Domain Names and Registrar

The disputed domain names <brickmanlego.com>, <legoexhibition.com>, <legoexhibitions.com>, and

<legoisawesome.com> are registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2022. On August 19, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 23, 2022, the Registrar transmitted by email to the Center its verification response registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 30, 2022, 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 August 31, 2022.

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 1, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2022.

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The Center appointed Alistair Payne as the sole panelist in this matter on October 6, 2022. 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 Danish owner of the global LEGO construction toy business with products sold in more than 130 countries including the United States. The Complainant owns numerous trade mark registrations for its LEGO word mark including in particular United States registration No. 1018875 registered on August 26, 1975. It also owns close to 5,000 domain names containing the LEGO mark and operates an extensive website for its business at <lego.com>.

The disputed domain names were registered on either September 10 or September 11, 2021. They each resolve to a parking page featuring sponsored links.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights for its LEGO mark which it says is one of the best known marks in the world and which has been recognised as such by a number of organisations that review brands and corporate reputation. It notes that each of the disputed domain names wholly incorporates the LEGO mark. It says that this is sufficient to support a finding of confusing similarity for each of the disputed domain names and that the terms “exhibition”, “exhibitions”, “brickman”, or “is awesome” do not detract from the overall impression of the mark given by the incorporation of the LEGO mark and do not prevent a finding of confusing similarity.

The Complainant submits that it has given no licence or authorisation of any kind to the Complainant to use the LEGO trade mark and that the Respondent is not an authorised dealer of the Complainant’s products and has never had a business relationship with the Complainant. It says that the Respondent is not commonly known by any of the disputed domain names which are registered in the name of the privacy service “Perfect Privacy LLC” and that the verified registrant information identifies the registrant as “Rockefeller Productions / Rockefeller Productions” which has no resemblance to the disputed domain name. The Complainant says further that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and has failed to make any legitimate use of the website to which it resolves.

In terms of registration in bad faith the Complainant says that the Respondent registered the disputed
domain names on September 10 and 11, 2021 respectively, which is subsequent to the date on which the
Complainant registered the trade mark LEGO in the United States and elsewhere by many years. The
Complainant submits that it is obvious that it is the fame of the LEGO trade mark that has motivated the
Respondent to register the disputed domain names and that the Respondent must have been aware of the
Complainant’s rights in the LEGO trade mark when it registered each of the disputed domain names.

The Complainant asserts that the Respondent is using each of the disputed domain names in terms of paragraph 4(b)(iv) of the Policy, with no plausible excuse, to intentionally attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites. The Complainant notes that the parking pages to which each of the disputed domain names resolve feature sponsored links and are for commercial gain. It says that there is no connection between the Respondent and the Complainant and by using the disputed domain names containing the Complainant’s very well reputed LEGO mark the Respondent is not making a legitimate noncommercial or fair use but intends to misleadingly divert consumers for commercial gain.

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The Complainant submits further that the Respondent is currently or has in the past been engaged in a pattern of cybersquatting. It notes that the Respondent currently holds a variety of domain names that incorporate well reputed third party marks.

The Complainant notes that it first tried to contact the Respondent on January 19, 2022 by sending a cease and desist letter by email requesting a voluntary transfer of the disputed domain names and offering compensation for the Respondent’s out of pocket expenses. In spite of the reminders sent, no reply was ever received and as a consequence the Complainant says that it filed this Complaint.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights in various countries for its LEGO word mark including in particular United States registration No. 1018875 for LEGO registered on August 26, 1975.

Each of the disputed domain names wholly incorporates the LEGO word mark and the Panel therefore finds that they are each confusingly similar to the Complainant’s registered trade mark rights for LEGO. Neither the inclusion of the common English words “exhibition”, “exhibitions”, nor the expressions “brickman” or “isawesome” in the respective disputed domain names detracts from the overall impression of each disputed domain name as being connected with or associated with the LEGO mark or its owner and does not prevent a finding of confusing similarity.

As a result, the Panel finds that each of the disputed domain names is confusingly similar to the in relation to each disputed domain name.

B. Rights or Legitimate Interests

The Complainant has submitted that it has given no licence or authorisation of any kind to the Complainant to use the LEGO trade mark and that the Respondent is not an authorised dealer of the Complainant’s products and has never had a business relationship with the Complainant. It has asserted that the Respondent is not commonly known by the disputed domain name and has noted that the registrar verification identified the registrant as “Rockefeller Productions / Rockefeller Productions” which has no resemblance to the disputed domain name. The Complainant has submitted further that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and that use to resolve to a placekeeper website featuring sponsored links does not create a bona fide legitimate interest.

The Complainant’s LEGO mark is highly distinctive and a household name on a global basis and has enjoyed a very significant reputation for many years prior to the registration of any of the disputed domain names. There is no evidence that the Respondent is using any of the disputed domain names for noncommercial or legitimate purposes or has any other bona fide interest in using the LEGO mark.

In these circumstances the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in any of the disputed domain names. The Respondent has failed to respond to or to rebut the Complainant’s case and for these reasons and for the reasons set out under Part C below, the Panel finds that the Complaint also succeeds under this element of the Policy.

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C. Registered and Used in Bad Faith

The Respondent registered the disputed domain names on either September 10 or September 11, 2021, which is subsequent to the date on which the Complainant registered the trade mark LEGO in the United States (where the Respondent is based) by many years. The LEGO mark is highly distinctive and extremely

well reputed globally and it is implausible that the United States-based Respondent was not aware of the Complainant’s very well-known LEGO mark and business when it registered each of the disputed domain names.

Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use of the disputed domain name in bad faith where a Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website.

The Respondent’s blatant use of each of the disputed domain names incorporating the Complainant’s extremely well reputed and highly distinctive LEGO mark to attract and confuse Internet users and to divert them to a parking page that features sponsored links, including in relation to other toys which may be competitive with the Complainant’s products and which is obviously for the commercial benefit of the Respondent, fulfills the requirements of paragraph 4(b)(iv) of the Policy and amounts to evidence of registration and use of each of the disputed domain names in bad faith.

The Respondent has failed to explain its conduct in registering the disputed domain names and has replied neither to the Complainant’s agent’s pre-action cease and desist letter nor to the Complaint. The fact that the Respondent attempted to mask its identity in each case by using a privacy service and that it appears to have a history, based on the details submitted by the Complainant, of cybersquatting well reputed marks, only reinforces the Panel’s view of the Respondent’s bad faith in relation to each disputed domain name.

The Panel therefore finds that each of the disputed domain names has been both registered and used in bad faith and that the Complaint also succeeds under this element 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 names, <brickmanlego.com>, <legoexhibition.com>, <legoexhibitions.com>, and <legoisawesome.com>, be transferred to the Complainant.

/Alistair Payne/
Alistair Payne
Sole Panelist
Date: October 20, 2022