ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. burak yildirim Case No. D2023-1942 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. The Respondent is burak yildirim, Türkiye. 2. The Domain Name and Registrar The disputed domain name is registered with Dynadot, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 28, 2023. On May 1, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 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, Dynadot Privacy Service") and contact information in the Complaint. The Center sent an email communication to the Complainant on May 15, 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 May 17, 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 May 24, 2023. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 16, 2023. page 2 The Center appointed Marilena Comanescu as the sole panelist in this matter on July 17, 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. 4. Factual Background The Complainant is LEGO Juris A/S, a worldwide known toymaker. LEGO branded products are marketed and sold for decades in more than 130 countries worldwide, through authorized licensees. The Complainant expanded its use of the LEGO mark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant holds numerous trademark registrations for LEGO, such as the following: - the Türkiye trademark registration No. 119057, filed on April 28, 1964 and registered on August 2, 1990for goods in the Nice classes 9, 16, 20, 24, 25, 28; and - the United States of America trademark No. 1018875 filed on September 17, 1974 and registered on August 26, 1975 for goods in the Nice class 28. The LEGO trademark is among the best known trademarks in the world, its well-known status being acknowledged by numerous tops and rankings, such as the Consumer Superbrands 2019 listing LEGO to various category winners; the Reputation Institute listing the Complainant as the number one brand of the list of world's Top 10 Most Reputable Global Companies of 2020 and applauded the Complainant's strong reputation having been on its top 10 list for 10 consecutive years; as well as by numerous previous UDRP proceedings involving the Complainant. The Complainant owns close to 5,000 domain names incorporating the mark LEGO, the main one being . The disputed domain name was registered on January 15, 2023 and, at the time of filing the Complaint, it resolved to a blank page which lacks content. According to Annex 8 to Complaint, the disputed domain name was previously used in connection with a website which was a copy of a third-party website and was requesting visitors accesing this website confidential information, such as details of their cards. 5. Parties' Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark LEGO, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. page 3 6. Discussion and Findings In view of the absence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met: (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 the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar The Panel finds that the Complainant holds rights in the LEGO trademark. The disputed domain name incorporates the Complainant's trademark LEGO with an additional suffix, "store". However, such addition does not prevent a finding of confusing similarity as the Complainant's trademark is clearly recognizable within the disputed domain name. Numerous UDRP panels have considered that the addition of other terms (wheter descriptive pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Further, it is well established in decisions under the UDRP that the Top-Level Domain ("TLD") (e.g.,".com", "lol", "net") may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11.1 of the WIPO Overview 3.0. Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark LEGO, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark LEGO, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services. In line with the case law, "where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element". See section 2.1 of the WIPO Overview 3.0. The Complainant has put forward a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent has not replied to the Complainant's contentions and has not come forward with relevant evidence to rebut the Complainant's prima facie case. page 4 There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name. At the time of filing the Complaint, the disputed domain name was kept inactive and this, together with all the circumstances in this case, does not amount to a bona fide or legitimate use. According to the evidence provided in the Complaint, the disputed domain name was fraudulently used to copy a third party's commercial website and to request confidential information from the Internet users. In this regard, UDRP panels have categorically held that the use of a domain name for illegal activity (such as swindle, fraud, identity theft, phishing and impersonation/passing off) can never confer rights or legitimate interests in a respondent. See section 2.13 of the WIPO Overview 3.0. In addition, and without prejudice to the above, the nature of the disputed domain name, comprising the Complainant's well-known trademark in its entirety in combination with other terms, carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Complainant holds trademark rights for LEGO since at least 1964. Due to its extensive use and marketing, the LEGO trademark has become highly distinctive and among the best known trademarks in the world. The disputed domain name was created in 2023 and incorporates the Complainant's mark with an additional suffix "store", a term for the Complainant's industry. From the above, the Panel finds that the Respondent was aware of the Complainant, its business, and trademark at the time of registration of the disputed domain name. At the time of filing the Complaint, the disputed domain name resolved to an inactive page. From the inception of the UDRP, panels have found that the non-use of a domain name (including a blank or "coming soon" or other similar inactive page) would not prevent a finding of bad faith under the doctrine of passive holding. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be relevant circumstances found to be indicative of bad faith include the degree of distinctiveness or reputation of the complainant's mark and the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use. See section 3.3 of the WIPO Overview 3.0. As previously mentioned, the disputed domain name incorporates the Complainant's trademark with an additional dictionary term; the LEGO trademark is famous worldwide and there is no plausible or logic for the Respondent to choose and register such name other than to create confusion or association with the Complainant and its mark. The Respondent has not participated in the present proceeding and provided inaccurate contact information in the WhoIs. Such facts, together with all the other elements in this case, supports, in the eyes of this Panel, a further finding of bad faith behavior. Furthermore, it has been consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party's well-known trademark by an unaffiliated entity can by itself create a presumption of bad faith for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0. page 5 For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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. /Marilena Comanescu/ Marilena Comanescu Sole Panelist Date: July 26, 2023
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