ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Plamena Stamatova Case No. D2023-1288 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. The Respondent is Plamena Stamatova, Bulgaria. 2. The Domain Name and Registrar The Disputed Domain Name is registered with eNom, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 28, 2023. On March 29, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 29, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 3, 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 April 6, 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 April 13, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 4, 2023. The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on May 15, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and page 2 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 Danish company, which is in the business of making and selling construction toys and other products and services branded under the trademark LEGO. The Complainant has expanded its use of the LEGO mark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. Per the Complaint, the Complainant has subsidiaries and branches throughout the world, and its products are sold in more than 130 countries (including Bulgaria and the European Union). The Complainant has provided details of multiple trademark registrations for LEGO, which provide protection in many jurisdictions including Bulgaria (where the Respondent is apparently located according to the Registrar verification) and the European Union. In these jurisdictions, the Complainant owns, among other trademark registrations, Bulgarian Trademark Registration No. 00013969, ЛЕГО LEGO1 (word), registered on June 28, 1983, in class 28; and European Trademark Registration No. 000039800, LEGO (word), registered on October 5, 1998, in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, and 42. Prior decisions under the Policy have recognized the reputation of the trademark LEGO.2 The Complainant further owns numerous domain names comprising its trademark LEGO, including (registered on August 22, 1995), which is linked to its corporate website for the goods and services related to this brand. The Disputed Domain Name was registered on September 7, 2022, and it resolves to a website, in Bulgarian language, that promotes rapid construction concrete blocks, under the heading "Лего Бетонови Блокове", which can be translated as "Lego Concrete Blocks". This site displays at its heading a representation of a LEGO brick piece bearing the LEGO mark and the Bulgarian words "Бетонови Блокове", which can be translated as "Concrete Blocks". The owner of this website identifies itself in the site as "Lego Concrete Blocks" providing no further information about the owner of the site or that of the Disputed Domain Name. This website does not contain any information about its lack of relationship with the Complainant. On November 8, 2022, the Complainant sent a cease and desist letter to the Respondent through the privacy service portal, with no reply. 5. Parties' Contentions A. Complainant The Complainant asserts that the Disputed Domain Name is confusingly similar to its LEGO mark, for which it claims well-known character and reputation. The Disputed Domain Name incorporates the LEGO mark, followed by the term "betoni" and the generic Top-Level Domains ("gTLD") ".com", which does not diminish the confusing similarity between the Disputed Domain Name and the Complainant's reputed trademark. The Complainant further asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has no registered trademarks corresponding to the Disputed Domain Name, and nothing suggests that the Respondent is commonly known by the Disputed Domain Name. The Respondent has no license or authorization to use the trademark LEGO; it is not an authorized dealer of the 1 The word "лего" is the Bulgarian translation for "lego". 2 With reference to the well-known character of the trademark LEGO, see inter alia: LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-06800; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; LEGO Juris A/S v. Kim S J, WIPO Case No. D2014-0884; and LEGO Juris A/S v. Moshe Cohen / Funtasia Trade Ltd, WIPO Case No. D2019-2478. page 3 Complainant's products and has never had a business relationship with the Complainant. Given the worldwide reputation of the LEGO brand, any use of such trademark in a domain name would likely violate the Complainant's rights. Further, the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent registered and uses the Disputed Domain Name in bad faith, in an attempt to mislead Internet users and exploit the Complainant's well-known trademark for commercial gain, in order to generate traffic and income through a commercial website that promotes the Respondent's concrete construction bricks fashioned after LEGO bricks. The Responded registered the Disputed Domain Name decades after the registration and first use of the LEGO brand in Bulgaria, the European Union and elsewhere, when the LEGO mark was already famous. The Respondent's website includes no disclaimer. The Complainant has cited previous decisions under the Policy, as well as various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0") that it considers supportive of its position, and requests the transfer of the Disputed Domain Name. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules. A. Identical or Confusingly Similar The Complainant indisputably has rights in the registered trademark LEGO, both by virtue of its numerous trademark registrations, and as a result of its continuous use of this brand in the market. The Disputed Domain Name incorporates this trademark in its entirety adding the term "betoni". The LEGO mark is recognizable in the Disputed Domain Name, and the gTLD ".com" is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8, and 1.11, WIPO Overview 3.0. Accordingly, this Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests The Complainant's above-noted assertions and evidence in this case effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the Disputed Domain Name (providing the circumstances of paragraph 4(c) of the Policy, without limitation), in order to rebut the Complainant's prima facie case. See section 2.1, WIPO Overview 3.0. However, the Respondent has not replied to the Complainant's contentions, not providing any explanation or evidence of rights or legitimate interests in the Disputed Domain Name. The applicable standard of proof in UDRP cases is the "balance of probabilities" or "preponderance of the evidence", being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0. page 4 The Panel considers that the Complainant has constructed a strong prima facie case evidencing that the Respondent has not been authorized to use the Complainant's trademark LEGO, there is no relationship between the Parties, and the Disputed Domain Name has not been used in connection to a bona fide offering of goods or services. The Panel notes that the Respondent's name revealed by the Registrar verification shares no similarity with the Disputed Domain Name. The Panel, under its general powers articulated, inter alia, in paragraph 10 of the Rules, has further verified through a search in the public Global Brand Database that the Respondent owns no trademark rights over the terms included in the Disputed Domain Name. The Panel further notes that the Disputed Domain Name generates an affiliation with the Complainant's famous trademark. The fact that the Disputed Domain Name incorporates the LEGO mark, adding a Bulgarian term ("betoni") that may be translated as "concrete" in English, may generate an implied affiliation that suggests that the Disputed Domain Name is owned or sponsored by the Complainant. It is possible to perceive that the Disputed Domain Name is related to a Complainant's new line of products related to concrete or to construction. Additionally, the Panel notes that other circumstances of this case enhance this implied affiliation impeding to consider that the Disputed Domain Name is used for a bona fide offering of goods or services. In this respect, the Panel has corroborated that the Disputed Domain Name is used in connection to a website that prominently displays the Complainant's trademark LEGO within the representation of a LEGO brick piece, and announces itself as "Лего Бетонови Блокове", which can be translated as "Lego Concrete Blocks". This website further omits any information about its owner or that of the Disputed Domain Name, and its/their lack of relationship with the Complainant. These circumstances generate a false affiliation with the Complainant and its trademark, and impede to consider that the Disputed Domain Name is used in connection with a bona fide offering of goods or services under the Policy. It is further remarkable that the Respondent has chosen not to reply to the Complaint, not providing any evidence of any rights or legitimate interests in the Disputed Domain Name. Therefore, the circumstances of this case lead the Panel to conclude that nothing in the case file gives any reason to believe that the Respondent has any rights or legitimate interests in respect of the Disputed Domain Name, and the second element of the Policy under paragraph 4(a)(ii) has been established. C. Registered and Used in Bad Faith The Policy, paragraph 4(a)(iii), requires that the Complainant establishes that the Disputed Domain Name has been registered and is being used in bad faith. The applicable standard of proof is, likewise, the "balance of probabilities" or "preponderance of the evidence", being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0. The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the Disputed Domain Name: (i) the LEGO mark is famous worldwide (including in Bulgaria and the European Union), and extensively used over the Internet; (ii) the Disputed Domain Name incorporates the LEGO mark, adding a Bulgarian term meaning "concrete", that denotes a risk of confusion or implied association, and may create the impression that the Disputed Domain Name is owned or sponsored by the Complainant; page 5 (iii) the Disputed Domain Name is linked to a website that prominently displays the famous LEGO mark within a representation of a LEGO brick piece, and includes expressions that may lead to consider that it is owned or sponsored by the Complainant (such as "Лего Бетонови Блокове", which can be translated as "Lego Concrete Blocks"); (iv) the Respondent's website does not include information about the owner of the site or that of the Disputed Domain Name identifying itself as "Лего Бетонови Блокове" ("Lego Concrete Blocks"), and it does not inform about the lack of relationship of this website with the Complainant and its LEGO brand; and (v) the Respondent has not offered any explanation of any rights or legitimate interests in the Disputed Domain Name, and has not come forward to deny the Complainant's assertions of bad faith, choosing not to reply to the Complaint. Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the Disputed Domain Name was registered and has been used targeting the Complainant's famous trademark LEGO in bad faith, in an effort to take unfair advantage of its reputation by creating a false affiliation to this brand for a commercial gain. The Panel finds that the Respondent is using the Disputed Domain Name to intentionally attempt to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website, which constitutes bad faith under the Policy. All of the above-mentioned circumstances lead the Panel to conclude that the Disputed Domain Name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the Disputed Domain Name in bad faith under the third 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 Name be transferred to the Complainant. /Reyes Campello Estebaranz/ Reyes Campello Estebaranz Sole Panelist Date: May 29, 2023
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