ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. rebvar abbasi Case No. D2023-0610 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. The Respondent is rebvar abbasi, Türkiye. 2. The Domain Name and Registrar The disputed domain name is registered with 1API GmbH (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 9, 2023. On February 10, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 10, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 13, 2023, 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 February 14, 2023. 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 February 15, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 8, 2023. The Center appointed Kaya Köklü as the sole panelist in this matter on March 13, 2023. 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. page 2 4. Factual Background The Complainant is the owner of the LEGO trademark commonly known in relation to construction toys. The Complainant has subsidiaries and branches throughout the world and its products are sold in more than 130 countries, including in Türkiye and (Islamic Republic of) Iran. The Complainant owns a large number of word and figurative LEGO trademark registrations around the globe. According to the Complaint, the Complainant is, among others, the registered owner of the Turkish Trademark Registration No. 119057 (registered on August 2, 1990) and the Iranian Trademark Registration No. 25637 (registered on July 11, 1964), both for LEGO and inter alia covering protection for toys or printed material (Annex 3 to the Complaint). The Complainant additionally owns almost 5,000 domain names comprising the trademark LEGO (Annex 5 to the Complaint). The disputed domain name was created on June 8, 2022. The Respondent is reportedly from Türkiye, whereas its true identity remains unclear due to seemingly false or incomplete contact information. The screenshots, as provided by the Complainant, show that the disputed domain name resolves to a website in Persian language, which is used for purportedly offering various construction toys of the Complainant (Annex 8 to the Complaint). On this website, the LEGO trademark and various of the Complainant's official product images are used without any visible disclaimer describing the (lack of) relationship between the Parties. 5. Parties' Contentions A. Complainant The Complainant is of the opinion that the disputed domain name is confusingly similar to its LEGO trademark. Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link between the Complainant and the Respondent. Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and page 3 (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. Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant's contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228. However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). For the evaluation of this case, the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views stated therein. A. Identical or Confusingly Similar The Panel finds that the Complainant has registered trademark rights in the mark LEGO by virtue of various trademark registrations, including in Türkiye, where the Respondent is reportedly located at (Annex 3 to the Complaint). The Panel further finds that the disputed domain name is confusingly similar to the Complainant's registered LEGO trademark, as it fully incorporates the trademark. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. The mere addition of a hyphen and the country indication "Iran" does not, in view of the Panel, serve to prevent a finding of confusing similarity between the disputed domain name and the Complainant's LEGO trademark. Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name. While the burden of proof on this element remains with the Complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c). In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant's trademark LEGO in a confusingly similar way within the disputed domain name. There is also no indication in the current record that the Respondent is commonly known by the just recently registered disputed domain name. In the absence of a response, the Respondent has particularly failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the page 4 Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name. In this regard, the Panel particularly finds that the Respondent cannot be assessed as a legitimate dealer for the Complainant's products in light of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("Oki Data") and thus is not entitled to use the disputed domain name accordingly. The criteria as set forth in Oki Data are apparently not fulfilled in the present case. The Panel notes that the website, which is linked to the disputed domain name does not accurately and prominently disclose the relationship, or rather the lack thereof, between the Respondent and the Complainant, thus creating the false impression that the website associated to the disputed domain name is operated by the Complainant or at least with its authorization. This assessment is supported by the nature of the disputed domain name, which in view of the Panel carries a risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0. The Panel is even convinced that the Respondent intended such implied affiliation in order to mislead customers with regard to the origin of the products offered on the website associated to the inherently misleading disputed domain name. In view of the Panel, this results in an illicit use that per se cannot confer rights or legitimate interests upon the Respondent. WIPO Overview 3.0, section 2.13. The Panel finds that all this takes the Respondent out of the Oki Data safe harbour for purposes of the second element. As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In the Panel's view, the Respondent has registered and is using the disputed domain name in bad faith. The Panel is convinced that the Respondent must have had the Complainant's trademark in mind when registering the disputed domain name. In view of the Panel, the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant and its construction toys. After having reviewed the screenshots of the website associated to the disputed domain name (Annex 8 to the Complaint), the Panel is convinced that the Respondent has intentionally registered the disputed domain name in order to generate traffic to its own website. The Panel particularly notes that the Respondent has not published a visible disclaimer on its website to explain that there is no existing relationship between the Respondent and the Complainant. Rather, the prominent use of the Complainant's LEGO trademark and the official product images of the Complainant as well as the inherently misleading nature of the disputed domain name is, in view of the Panel, sufficient evidence that the Respondent intentionally tries to attract, for illegitimate commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of its website. Also, the Panel accepts the failure of the Respondent to submit a response to the Complainant's contentions as an additional affirmation of the Panel's finding of bad faith. Finally, the Respondent has seemingly provided false or at least incomplete contact information when registering the disputed domain name, particularly since the couriers sent by the Center have been undeliverable. The Panel does not see any reason in hiding the Respondent's identity and contact information except to make it difficult for the Complainant to protect its trademark rights. The Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy. page 5 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 be transferred to the Complainant. /Kaya Köklü/ Kaya Köklü Sole Panelist Date: March 27, 2023
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