Abject Stupidity: #LEGO is a generic word that cannot be monopolized

A fine example of “abject stupidity” is demonstrated by the Respondent in a UDRP case filed against the domain LEGOip.com.

The domain resolves to a web site offering intellectual property protection and its Egyptian registrant was hit with a UDRP in July.

Note: LEGO, the Complainant in this case, is the #1 UDRP filer in the world!

In the UDRP, the Respondent said:

The Respondent asserts that it is legally entitled to use the disputed domain name. It argues that it would be impossible for consumers to “fall into commercial fraud” because its products differ from those of the Complainant. The Respondent further argues that the word LEGO is a generic word that cannot be monopolized, but instead must be distinguished, and should be available for use within the disputed domain name. In sum, the Respondent asserts that it had “no intention of registering the domain name badly”.

Let’s put that statement in bold for your abject stupidity enjoyment:

[…] the word LEGO is a generic word that cannot be monopolized […]

Naturally, the sole WIPO panelist rolled his eyes and ordered the domain LEGOip.com to be transferred to the Complainant, who clearly stepped on a LEGO brick barefoot.

LEGO Juris A/S v. Kamal Mahmoud
Case No. D2021-2354

1. The Parties

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

The Respondent is Kamal Mahmoud, Egypt.

2. The Domain Name and Registrar

The disputed domain name <legoip.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 July 20, 2021. On July 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name(s) which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 29, 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 July 29, 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 August 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2021.

On July 30, 2021, the Center received an email from one Mohamed Elhawary, to which the sender attached a document providing basic argument against the Complainant’s assertions, together with printouts providing information concerning other Egyptian trademarks containing the word “lego” with other text and design elements. On August 27, 2021, the Complainant submitted a Supplemental Filing, addressing what the Complainant characterized as “unfounded arguments to which the Complainant could not possibly respond in its initial filing.”

The Center appointed Evan D. Brown as the sole panelist in this matter on September 13, 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.

The Panel finds it unnecessary to take into consideration the Complainant’s Supplemental Filing.

4. Factual Background

The Complainant and its affiliates own the LEGO trademark, which has registered in many countries, including Egypt (Registration Number 287932, registered on August 27, 1964), the home country of the Respondent. The Complainant has used the mark for many years on its construction toys and other LEGO branded products. According to the WhoIs records, the disputed domain name was registered on March 5, 2021. The Respondent has used the disputed domain name to publish a website concerning intellectual property legal services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent asserts that it is legally entitled to use the disputed domain name. It argues that it would be impossible for consumers to “fall into commercial fraud” because its products differ from those of the Complainant. The Respondent further argues that the word LEGO is a generic word that cannot be monopolized, but instead must be distinguished, and should be available for use within the disputed domain name. In sum, the Respondent asserts that it had “no intention of registering the domain name badly”.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

The Panel finds that all three of these elements have been met in this case.

A. Identical or Confusingly Similar

The Complainant clearly has rights in the mark LEGO, evidenced by the registration certificates for that mark. The disputed domain name, for purposes of this first element, is confusingly similar to the Complainant’s mark. The addition of “ip” within the disputed domain name does not prevent a finding of confusing similarity. Accordingly, the Complainant has succeeded under this first element of the Policy.

B. Rights or Legitimate Interests

A complainant succeeds under this element if it makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and that prima facie showing remains unrebutted by the Respondent.

The Complainant presents a number of arguments under this element. The Complainant has found no records or other indicators that would suggest the Respondent has been using the LEGO name in any official way what gives the Respondent legitimate rights in the disputed domain name. For example, the record is void of any registered trademarks, trade names or licensed businesses owned by the Respondent that correspond with the disputed domain name. The Panel notes that the record contains no other information that shows the Respondent is known by the disputed domain name. The Complainant further argues that it has given no license or authorization of any other kind to the Respondent to use the trademark LEGO. Given the notoriety of the LEGO mark, and despite Respondent’s claim it is a “generic word”, the Panel is in accord with the panel in the case of Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc., WIPO Case No. D2001-1314, in which it was determined that given the notoriety of the complainant’s mark therein, any use of that mark that the respondent would make in a domain name would likely violate the complainant’s exclusive trademark rights, and thereby show a lack of any legitimate rights or interests.

These assertions establish the Complainant’s prima facie case. The Respondent has not substantively addressed the Complainant’s arguments under this second Policy element. Seeing no other basis in the record to tilt the balance in the Respondent’s favor, the Panel finds that the Complainant has satisfied this second Policy element.

C. Registered and Used in Bad Faith

The Policy requires a complainant to establish that the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.

The Panel agrees with the Complainant’s assertion that the mark LEGO is so closely linked and associated with the Complainant that the Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith. Where a domain name is “obviously connected with such a well-known name and products…its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226 (WIPO May 17, 2000).

On these facts, the Panel finds that the Complainant has satisfied this third Policy element.

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 <legoip.com> be transferred to the Complainant.

Evan D. Brown
Sole Panelist
Date: October 4, 2021

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