DECISION

 

LEGO Juris A/S v. Nabiev Ravshan

Claim Number: FA2108001959898

 

PARTIES

Complainant is LEGO Juris A/S (“Complainant”), represented by Joe Viviani of CSC Digital Brand Services AB, Sweden. Respondent is Nabiev Ravshan (“Respondent”), Russia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <legohogwarts.ru.com>, registered with Registrar of Domain Names REG.RU LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant certifies that the mandatory CentralNic Mediation process was conducted between the parties and has concluded or been terminated without resolving the present dispute.

 

Complainant submitted a Complaint to the Forum electronically on August 17, 2021; the Forum received payment on August 17, 2021.

 

On August 18, 2021, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <legohogwarts.ru.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name.  Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with CentralNic Dispute Resolution Policy (the “CDRP Policy”)

 

On August 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@legohogwarts.ru.com.  Also on August 20, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On September 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the CDRP Dispute Resolution Policy (“Rules”).  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, LEGO Juris A/S, uses the trademark LEGO in connection with construction toys and other products. The LEGO mark is globally famous and Complainant has rights therein based on registration with multiple trademark organizations, including the United States Patent and Trademark Office (“USPTO”), the European Intellectual Property Office (“EUIPO”)., and the Patent and Trademark Office of the Russian Federation (“ROSPATENT”), the earliest of which dates to 1975. Respondent’s <legohogwarts.ru.com> domain name, registered on February 4, 2021, is confusingly similar to Complainant’s LEGO mark because it incorporates the mark in its entirety, simply adding the third party trademark “Hogwarts” and the “.ru.com” domain.

 

Respondent does not have rights or legitimate interests in the <legohogwarts.ru.com> domain name. Respondent is not commonly known by the name and is not authorized or licensed to use the LEGO mark. Further, Respondent fails to use the disputed domain name for any bona fide offering of goods or services and it does not make any legitimate noncommercial or fair use thereof. Instead, Respondent passively holds the domain name.

 

Respondent registered and used the <legohogwarts.ru.com> domain name in bad faith. Respondent has shown a pattern of cybersquatting based on other domain names it has registered and its being named as the Respondent in at least two adverse UDRP decisions. Respondent also inactively holds the domain name in bad faith. Further, Respondent must have had actual knowledge of Complainant’s rights in the LEGO mark based upon the mark’s notoriety.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;

 

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

 

(3)  the disputed domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered or is being used in bad faith.

 

The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.

                                                                                 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations and evidence pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable and supported allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the LEGO mark based on registration with multiple trademark organizations, including the USPTO, the EUIPO and ROSPATENT. Registration of a mark with such trademark authorities is sufficient to establish rights in that mark per Policy ¶ 4(a)(i). See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (“Complainant has shown rights in the mark RACKSPACE by virtue of its registrations in the US, Europe, Mexico, Turkey, as well as in Australia, Respondent’s country of origin. All of the trademark registrations predate the registration of the disputed domain name by the Respondent and are sufficient evidence for Complainant’s rights under Policy ¶ 4(a)(i).”). Complainant provides evidence of its trademark registrations in the form of screenshots from the above-mentioned registration offices. Based on this evidence, the Panel finds that Complainant has rights in the LEGO mark under Policy ¶ 4(a)(i).

 

Next, Complainant argues that Respondent’s <legohogwarts.ru.com> domain name is confusingly similar to the LEGO mark because it incorporates the mark in its entirety, simply adding the third party trademark “Hogwarts” and the “.ru.com” top-level domain. The combination of a complainant’s mark with another mark most often does not reduce confusing similarity. See G.D. Searle & Co. v. Mahony, FA 112559 (Forum June 12, 2002) (holding the domain name to be confusingly similar where <e-viagra-xenical-celebrex-propecia.com> merely includes the addition of related industry-specific words, namely, the marks of the complainant’s competitors). Further, addition of one or more top level domains is insufficient to negate confusing similarity. See Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017) (“the Panel finds Respondent’s <hudabeauty.ru.com> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i)“ despite adding the “.ru” ccTLD and the “.com” gTLD). As the LEGO mark makes up a highly prominent part of the <legohogwarts.ru.com>  domain name, the Panel finds that this domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant first argues that Respondent does not have rights or legitimate interests in the <legohogwarts.ru.com> domain name since Respondent is not commonly known by the name and is not authorized or licensed to use the LEGO mark. In considering this issue, WHOIS information may be used to show that a respondent is or is not commonly known by the domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Also, lack of authorization to use a mark may show that the respondent is not commonly known by that name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the registrant of the disputed domain name as “Nabiev Ravshan” and Complainant claims that Respondent has never been licensed or authorized to use the LEGO mark. Respondent has filed no Response or made any other submission in this case. Upon the evidence presented here, the panel finds no ground upon which to conclude that Respondent is commonly known by the domain name under Policy ¶ 4(c)(ii).

 

Further, Complainant argues that Respondent fails to use the <legohogwarts.ru.com> domain name for any bona fide offering of goods or services and that it makes no legitimate noncommercial or fair use thereof because Respondent passively holds the domain name. Failure to make active use of a disputed domain name can support a finding that it is not being used in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the blank webpage resolving at the disputed domain name. Respondent has not participated in this case and so it provides no explanation for its actions. As Complainant has made a prima facie case that has not be rebutted by Respondent, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not making a legitimate noncommercial or fair use thereof under Policy ¶ 4(c)(iii).

 

Registration or Use in Bad Faith

Complainant argues that Respondent had knowledge of Complainant’s rights in the LEGO mark based upon the mark’s global notoriety. Actual knowledge of a complainant’s rights in a mark is a sufficient foundation upon which to build a finding of bad faith under Policy ¶ 4(a)(iii) and may be inferred by the fame of a mark or the use a respondent makes of it. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant argues that it’s mark is well-known throughout the world and, in support, it submits copies of articles and statistics in which Complainant is ranked as number one in a list of “The Most Reputable Global Companies”, its LEGO mark earns the title of “Superbrand”, and the LEGO building blocks are described as the “Most Influential Toy Of All Time”. It further provides images of its LEGO toys that are associated with the name “Hogwarts” as used in the well-known Harry Potter stories (i.e., “LEGO® Harry PotterTM HogwartsTM castle”). The global fame of the LEGO mark, combined with Respondent’s use of the LEGO mark in connection with the third-party “Hogwarts” mark, strongly indicates that it had actual knowledge of the mark at the time it registered the disputed domain name.

 

Complainant next argues that Respondent registered and used the <legohogwarts.ru.com> domain name in bad faith based upon Respondent’s history of cybersquatting. Bad faith may be found under Policy ¶ 4(b)(ii) where a respondent has a history of UDRP decisions against it or the respondent has registered multiple other domain names incorporating famous marks. See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondent’s previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites). Here, Complainant provides evidence of Respondent’s registration of other domain names incorporating the LEGO mark, registration of domain names incorporating the famous marks of other companies, and at least two previous UDRP decisions that were decided against Respondent. This evidence leads the Panel to find bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(ii) as Respondent has prevented Complainant from reflecting its LEGO mark in a domain name that corresponds to the disputed domain name and has engaged in a pattern of such conduct with respect to the LEGO and other well-known marks.

 

Complainant also argues that Respondent inactively holds the <legohogwarts.ru.com> domain name in bad faith. Failure to make active use of a domain name can support a finding of bad faith per Policy ¶ 4(a)(iii). See Leidos, Inc. v. Ramona Mason, FA 1959354 (Forum Sept. 13, 2021) (“Respondent’s failure to actively use the at-issue domain name shows bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii).”) This is particularly so when the asserted trademark is very well-known. WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0) (“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”). Complainant provides a screenshot of the webpage that resolves from the disputed domain and this displays a message “This site can’t be reached”. Based upon the fame of the LEGO mark and the lack of any content at the <legohogwarts.ru.com> site, the Panel finds that the disputed domain name has been registered and used in bad faith under Policy ¶ 4(a)(iii).

 

Complainant further submits copies of a demand letter it sent to Respondent on February 26, 2021 and, a follow-up letter it sent on March 5, 2021. It states that it has received no reply to either of these attempts at communicating with Respondent. A respondent’s failure to engage with a dispute can, after taking into account all the circumstances of a case, lend support to a claim of bad faith. See Bloomberg Finance L.P. v. Usman Ik / Divers Marine Contracting LLC, FA 1820452 (Forum Jan. 10, 2019) (“Respondent did not reply or respond in any way to this [demand letter] communication.  In light of the nonexclusive nature of Policy ¶ 4(b), failure to respond to a cease and desist notice has been held to support a finding of bad faith.”), citing Fareportal, Inc. v. Arun Meelyan, FA 1736954 (Forum Aug. 17, 2017) and Seiko Epson Corporation v. Asish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a demand letter has been found to constitute bad faith). In view of all of the circumstances of the present case, including Respondent’s lack of engagement therewith, the Panel finds that Respondent’s failure to respond to Complainant’s two demand letters further supports the conclusion that it acted in bad faith when registering and passively holding the <legohogwarts.ru.com> domain name.

 

DECISION

Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <legohogwarts.ru.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Steven M. Levy, Esq., Panelist

Dated:  September 16, 2021

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page