LEGO Juris A/S v white coffee
WIPO Case No. D2024-1643
•31-07-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. white coffee; calvin christoforus; Master Vicory; and
Team DKI, playland88.news
Case No. D2024-1643
1. The Parties
The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB,
Sweden.
The First Respondent is white coffee, Indonesia.
The Second Respondent is calvin christoforus, Indonesia.
The Third Respondent is Master Vicory, Indonesia.
The Fourth Respondent is Team DKI, playland88.news, Indonesia.
2. The Domain Names and Registrars
|
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| <lego33game.com> | Name.com, Inc. |
| <lego33hoki.com> | Name.com, Inc. |
| <lego33hoki.xyz> | Name.com, Inc. |
| <lego33jepe.xyz> | Name.com, Inc. |
| <lego33menang.online> | Name.com, Inc. |
| <lego-33.site> | Name.com, Inc. |
| <lego33.site> | Name.com, Inc. |
| <lego33-spin.live> | Name.com, Inc. |
| <lego33-star.com> | Name.com, Inc. |
| <lego33turbo.com> | Name.com, Inc. |
| <lego33wede.xyz> | Name.com, Inc. |
| <mainlegoterus.com> | Name.com, Inc. |
| <lego-jitu.site> | NameCheap, Inc. (the “Fourth Registrar”) |
| <lego-wp.site> | NameCheap, Inc. |
| <lego33rtp.site> | NameCheap, Inc. |
| <lego33-tip.site> | NameCheap, Inc. |
| <tips-lego33.fun> | NameCheap, Inc. |
| <tokolego33.site> | NameCheap, Inc. |
| <wxlego.site> | NameCheap, Inc. |
| <xylego33.site> | NameCheap, Inc. |
The registrars listed above are collectively referred to as the “Registrars”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2024. amended Complaint including the disclosed information. On June 7, the Complainant submitted a third amended Complaint withdrawing one domain name.
On April 18, 2024, the Center transmitted by email to the Registrars the requests for registrar verification in
connection with the disputed domain names. On April 19, 2024, the Second, Third, and Fourth Registrars
transmitted by email to the Center its verification response disclosing registrant and contact information for
the disputed domain names which differed from the named Respondent (Domain Protection Services, Inc.,
Domains By Proxy, LLC, DomainsByProxy.com, and REDACTED FOR PRIVACY, playland88news) and
contact information in the Complaint. On April 22, 2024, the First Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain names
which differed from the named Respondent (Domain Protection Services, Inc., Domains By Proxy, LLC,
DomainsByProxy.com, and REDACTED FOR PRIVACY, playland88news) and contact information in the
Complaint. The Center sent an email communication to the Complainant on April 24, 2024 with the
registrant and contact information of nominally multiple underlying registrants revealed by the Registrars,
requesting the Complainant to either file separate complaints for the disputed domain names associated with
different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the
same entity and/or that all the disputed domain names are under common control. The Complainant filed an
amended Complaint on April 25, 2024. On April 25, 2024, the Complainant requested the addition of two
disputed domain names. On April 25, 2024, the Center transmitted by email to the Second Registrar a
request for registrar verification in connection with the additional disputed domain names. On April 25, 2024,
the Second Registrar transmitted by email to the Center its verification response disclosing registrant and
contact information for the additional disputed domain names. On April 26, 2024, the Center notified the
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”).
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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the
Complaint, and the proceedings commenced on June 10, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was June 30, 2024. The Respondents did not submit any response.
Accordingly, the Center notified the Respondents’ default on July 5, 2024.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on July 16, 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
The Complainant is a toy company. It is particularly focused on production of plastic construction toys.
Currently, the Complainant’s products are sold in more than 130 countries.
The Complainant is the owner of numerous LEGO trademark registrations, including:
| - | the International Trademark Registration for LEGO, No. 287932, registered on August 27, 1964; |
| - | the United States of America Trademark Registration for LEGO, No. 1018875, registered on |
August 26, 1975; and
| - | the Indonesian Trademark Registration for LEGO, No. IDM000024774, registered on |
December 27, 2004.
The Complainant also operates numerous domain names incorporating its LEGO trademark, including the domain name <lego.com>.
The disputed domain name <lego-baru.com> was registered on February 4, 2024.
The disputed domain name <lego-bos.com> was registered on December 21, 2023.
The disputed domain name <lego-jitu.site> was registered on January 10, 2024.
The disputed domain name <lego-kilat.com> was registered on April 22, 2024.
The disputed domain name <lego-king.com> was registered on March 6, 2024.
The disputed domain name <lego-mega.com> was registered on December 24, 2023.
The disputed domain name <lego-senang.com> was registered on December 18, 2023.
The disputed domain name <lego-super.com> was registered on December 16, 2023.
The disputed domain name <legosupercuan.com> was registered on August 2, 2023.
The disputed domain name <lego-ultra.com> was registered on December 16, 2023.
The disputed domain name <lego-wp.site> was registered on January 8, 2024.
The disputed domain name <lego33.asia> was registered on December 12, 2023.
The disputed domain name <lego33c.com> was registered on May 28, 2023.
The disputed domain name <lego-33.com> was registered on October 24, 2023.
The disputed domain name <lego33emas.com> was registered on February 25, 2024.
The disputed domain name <lego33gacor.xyz> was registered on March 17, 2024.
The disputed domain name <lego33game.com> was registered on February 14, 2024.
The disputed domain name <lego33hoki.com> was registered on February 15, 2024.
The disputed domain name <lego33hoki.xyz> was registered on March 17, 2024.
The disputed domain name <lego33jepe.xyz> was registered on March 17, 2024.
The disputed domain name <lego33menang.online> was registered on September 20, 2023.
The disputed domain name <lego33-pusat.info> was registered on April 1, 2023.
The disputed domain name <lego33rtp.site> was registered on October 15, 2023.
The disputed domain name <lego-33.site> was registered on February 3, 2024.
The disputed domain name <lego33.site> was registered on February 3, 2024.
The disputed domain name <lego33-spin.live> was registered on September 22, 2023.
The disputed domain name <lego33-star.com> was registered on March 20, 2024.
The disputed domain name <lego33-tip.site> was registered on December 27, 2023.
The disputed domain name <lego33turbo.com> was registered on March 18, 2024.
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The disputed domain name <lego33wede.xyz> was registered on March 17, 2024.
The disputed domain name <linklego33.com> was registered on July 29, 2022.
The disputed domain name <mainlegoterus.com> was registered on April 17, 2024.
The disputed domain name <tips-lego33.fun> was registered on October 12, 2023.
The disputed domain name <tokolego33.site> was registered on January 23, 2024.
The disputed domain name <wxlego.site> was registered on January 16, 2024.
The disputed domain name <xylego33.site> was registered on January 12, 2024.
As of the date of this decision, as well as at the time of submitting the Complaint, the disputed domain names have resolved either to the online gambling websites, inactive websites or the website featuring commercial and pay-per-click (“PPC”) links of the third parties.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.
First, the Complainant submits that the disputed domain names are confusingly similar to the LEGO trademark in which the Complainant has rights.
Second, the Complainant argues that the Respondents have neither rights nor legitimate interests in the disputed domain names.
Third, the Complainant contends that the disputed domain names were registered and are being used in bad faith.
Moreover, the Complainant contends the disputed domain names are under common control and requests consolidation of the disputed domain names in the present case.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Matters - Consolidation of Multiple Respondents
The amended Complaint was filed in relation to nominally different disputed domain name registrants. The each other, or under common control.
In this regard, the Complainant notes that most of the disputed domain names resolve to identical-looking gambling websites. Next, according to the Complainant, many of the disputed domain names are accessible through the links displayed on the websites connected to other disputed domain names. Furthermore, the Complainant contends that the registrants “Calvin Christoforus” and “white coffee” used the same email address for the disputed domain name registrations. Finally, the Complainant notes that all the registrants are located in Indonesia. In sum, the Complainant requests the consolidation of the Complaint against the multiple registrants pursuant to paragraph 10(e) of the Rules.
The disputed domain name registrants did not comment on the Complainant’s request.
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Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP
Questions, Third Edition (“WIPO Overview 3.0”).
As regards common control, the Panel notes the following:
First, most of the disputed domain names were registered in close proximity in time, i.e., between April 1,
2023 and April 22, 2024. Only one disputed domain name <linklego33.com> was registered earlier, i.e., on
July 29, 2022.
Second, all the disputed domain names follow similar naming patterns. They consist of the Complainant’s
LEGO trademark and an additional term.
Third, the contact details for most of the disputed domain names are identical.
Fourth, as of the date of this decision, as well as at the time of submitting the Complaint, the disputed domain names have resolved to websites displaying similar or identical content. They have resolved either to online gambling websites or inactive websites. Only one disputed domain name <lego33.site> has resolved to a website featuring PPC links of the third parties.
Lastly, the Respondents have not denied that the disputed domain names are under a common control.
As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.
Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.
6.2. Substantive Matters - Three Elements
A. Identical or Confusingly Similar
Under the first requirement, the Complainant must establish that the disputed domain names are identical or confusingly similar to the trademark in which the Complainant has rights.
The Complainant holds valid LEGO trademark registrations. The disputed domain names incorporate this trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to that trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No.
D2003-0696).
The addition of other terms or numbers such as “-baru”, “-bos”, “-jitu”, “-kilat”, “-king”, “-mega”, “-senang”, “- super”, “supercuan”, “-ultra”, “-wp”, “33”, “33c”, “-33”, “33emas”, “33gacor”, “33game”, “33hoki”, “33jepe”, “33menang”, “33-pusat”, “33rtp”, “33-spin”, “33-star”, “33-tip”, “33turbo”, “33wede”, “link”, “main”, “terus”, “tips-“, “took”, “wx”, or “xy” in the disputed domain names does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s LEGO trademark. Panels have consistently held that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0.
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The Top-Level domains (“TLDs”) “.com”, “.site”, “.asia”, “.xyz”, “.online”, “.info”, “.live”, and “.fun” in the disputed domain names are viewed as a standard registration requirement and as such are typically disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain names are confusingly similar to the
Complainant’s LEGO trademark. Thus, the Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Under the second requirement, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain names.
The respondent may establish a right or legitimate interest in the domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(ii) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(iii) that it is making a legitimate, noncommercial, or fair use of the domain name without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark.
Based on the records, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimated interests in the disputed domain names, and the burden of production of evidence shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0. Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.
On the contrary, it results from the evidence on record that the registration of the Complainant’s LEGO trademark predates the Respondent’s registration of the disputed domain names. There is no evidence in the case record that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to register the disputed domain names incorporating the trademark. There is also no evidence to suggest that the Respondent has been commonly known by the disputed domain names.
Moreover, it results from the evidence on record that the Respondent does not make use of the disputed domain names in connection with a bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use of the disputed domain names. On the contrary, as of the date of this decision, as
well as at the time of submitting the Complaint, the disputed domain names have resolved either to the
online gambling websites, inactive websites, or a website featuring PPC links. Such use of the disputed
domain names in this case does not confer rights or legitimate interests on the Respondent.
Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See section 2.9, WIPO Overview 3.0. As indicated above, the disputed domain name <lego33.site> resolves to the website featuring PPC links, including competing links such as “building toys”. These links allow the Respondent to profit from the attracted web traffic and collect click-through revenue from advertising links. Such use demonstrates that the Respondent has used the disputed domain names to capitalize on the reputation and goodwill of the Complainant’s trademark for its own commercial benefit.
In sum, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain names. Thus, there is no evidence in the case file that refutes the Complainant’s prima facie case. The Panel
concludes that the second element of the Policy has been established.
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C. Registered and Used in Bad Faith
Under the third element, the Complainant must prove that the disputed domain names have been registered and are being used in bad faith.
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See section 3.1 of the WIPO Overview 3.0.
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use includes without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a
trademark from reflecting the mark in a corresponding domain name, provided that the respondent has
engaged in a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for
commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion
with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a
product or service on a website or location.
As indicated above, the Complainant’s rights in the LEGO trademark predate the registration of the disputed domain names. The Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration. Moreover, it has been proven to the Panel’s satisfaction that the
Complainant’s LEGO trademark is well known and unique to the Complainant. Thus, the Respondent could not ignore the reputation of goods and services under this trademark. In sum, the Respondent in all likelihood registered the disputed domain names with the expectation of taking advantage of the reputation of the Complainant’s LEGO trademark.
Furthermore, the Respondent shows a pattern of cybersquatting, as it registered 36 disputed domain names that include the Complainant’s LEGO trademark.
Next, the disputed domain names have been used by the Respondent in bad faith. As noted above, as of the date of this decision, as well as at the time of submitting the Complaint, most of the disputed domain names have resolved to the online gambling websites. By reproducing the LEGO trademark in the disputed domain names, as well as by displaying the images of the Complainant’s products on the corresponding websites, the Respondent suggests at least the association with the Complainant. There is thus little doubt that the Respondents intended to earn profit from the confusion created with Internet users. In consequence, the Panel finds that the Respondent registered and used the disputed domain names deliberately in order to take advantage of the Complainant’s reputation and to give credibility to their operations.
Moreover, as of the date of this decision, as well as at the time of submitting the Complaint, some of the disputed domain names have not resolved to any active websites. Considering the overall circumstances of this case, the Panel finds that the Respondent’s passive holding of the disputed domain names does not prevent a finding of bad faith. As numerous UDRP panels have held, passive holding, under the totality of circumstances of the case, would not prevent a finding of bad faith under the Policy. See section 3.3 of the WIPO Overview 3.0. Here, given the well-known nature of the Complainant’s LEGO trademark, the failure of
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the Respondent to submit a response, and the implausible good faith use to which the disputed domain
names may be intrinsically put, the Panel agrees with the above.
Furthermore, the disputed domain name <lego33.site> has resolved to the website displaying competing
PPC links of the third parties. Noting the nature of the disputed domain name including the LEGO trademark
in its entirety, the Panel finds that the Respondent registered this disputed domain name in the knowledge of
the LEGO trademark and business with the intention of taking unfair advantage of the Complainant’s
goodwill attaching to this trademark. Additionally, the Panel finds that the Respondent most likely has used
this disputed domain name in order to create confusion in the minds of Internet users for the purpose of
attracting Internet traffic for commercial gain.
With respect to “automatically” generated PPC links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its disputed domain name. Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith. See section 3.5 of the WIPO Overview 3.0.
Finally, the Respondent’s use of privacy services that concealed registrant information for a number of the disputed domain names further supports a finding of bad faith.
For the reasons discussed above, the Panel finds that the third element of the Policy has been established.
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 <lego-baru.com>, <lego-bos.com>, <lego-jitu.site>, <lego-kilat.com>,
<lego-king.com>, <lego-mega.com>, <lego-senang.com>, <lego-super.com>, <legosupercuan.com>,
<lego-ultra.com>, <lego-wp.site>, <lego33.asia>, <lego33c.com>, <lego-33.com>, <lego33emas.com>,
<lego33gacor.xyz>, <lego33game.com>, <lego33hoki.com>, <lego33hoki.xyz>, <lego33jepe.xyz>,
<lego33menang.online>, <lego33-pusat.info>, <lego33rtp.site>, <lego-33.site>, <lego33.site>,
<lego33-spin.live>, <lego33-star.com>, <lego33-tip.site>, <lego33turbo.com>, <lego33wede.xyz>,
<linklego33.com>, <mainlegoterus.com>, <tips-lego33.fun>, <tokolego33.site>, <wxlego.site>,
<xylego33.site> be transferred to the Complainant.
/Piotr Nowaczyk/ Piotr Nowaczyk Sole Panelist
Date: July 31, 2024
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