ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Name Redacted1 Case No. D2024-1523 1. The Parties Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB , Sweden. Respondent is Name Redacted. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2024. On April 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2024, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on April 15, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2024. Respondent did not submit any formal response. The Center, 1 The Panel has determined that the disputed domain name was most likely registered by a third party without the involvement of Respondent. Accordingly, Respondent’s name has been redacted. However, the Panel has also attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding and has indicated that Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
page 2 however, received online communications through the Center’s website from a third party on April 27, 2024, and May 1, 2024, disclosing that it received the Written Notice of the proceeding, but that the registration of the disputed domain name has been made without its knowledge or authorization by a third party using its contact details. The Center notified the Commencement of Panel Appointment Process on May 2, 2024. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on May 15, 2024. 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 Complainant is a company organized under the laws of Denmark that is the worldwide well-known producer of LEGO branded construction toys and related LEGO products. Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to its company name and brand LEGO, inter alia, but not limited to, the following: - word mark LEGO, United Kingdom Intellectual Property Office (IPO), registration number: UK00000754628, registration date: June 11, 1956, status: active; - word mark LEGO, United Kingdom IPO, registration number: UK00000844309, registration date: January 25, 1963, status: active; - word mark LEGO, United Kingdom IPO, registration number: UK00001131019, registration date: March 26, 1980, status: active. Moreover, Complainant has evidenced to own a vast number of domain names relating to its LEGO trademark, inter alia, the domain name which resolves to Complainant’s official website at “www.lego.com”, used to promote Complainant’s LEGO products and related services worldwide, while other domain names also include the term “minecraft”, such as since 2022 the domain name . Respondent, according to the WhoIs information for the disputed domain name, is located in the United Kingdom. However, on April 27, 2024, as well as on May 1, 2024, the Center received online communications from a third party indicating that it had nothing to do with the disputed domain, allowing the Panel to conclude that this third party was a victim to an identity theft. The disputed domain name was registered on March 1, 2024. By the time of rendering this Decision, the disputed domain name resolves to a website at “www.legominecraft.org”, the access to which has been technically blocked because of a danger that Internet users may be tricked into installing malicious software or revealing personal information like passwords etc. Complainant, however, has demonstrated that at some point before the filing of the Complaint, this website to which the disputed domain name resolves, offered Complainant’s LEGO products with no authorization to do so, thereby prominently displaying Complainant’s LEGO trademark and official logo and stating in the website footer: “©www.legominecraft.com. All rights reserved.” Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, Complainant contends that its LEGO trademark is among the best-known
page 3 trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO trademark on all products, packaging, displays, advertising, and promotional materials. Complainant submits that the disputed domain name is confusingly similar to Complainant’s LEGO trademark, as it comprises the latter identically, and the suffix “minecraft” does not diminish such confusing similarity. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name, since (1) no license or authorization of any other kind has been given by Complainant to Respondent to use the LEGO trademark, (2) Respondent apparently has no own rights in the term “lego”, but is simply trying to benefit from Complainant’s world famous LEGO trademark, and (3) Respondent does not meet the requirements under the Oki Data Test, as the website under the disputed domain name does not contain any visible disclaimer stating that such website is not endorsed or sponsored by Complainant. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith, because (1) Complainant’s LEGO trademark in respect of toys has a status of a well-known and reputable trademark with a substantial and widespread goodwill throughout the world, and it is obvious that such fame has motivated Respondent to register the disputed domain name, and (2) by prominently displaying Complainant’s LEGO trademark and logo, Respondent was using the disputed domain name to intentionally attempt to attract Internet users to its website for commercial gain. B. Respondent Respondent did not formally reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Respondent’s formal default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar First, it is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of its LEGO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of this trademark is reproduced within the disputed domain name, added by the term “minecraft”. Accordingly, the disputed domain name is confusingly similar to Complainant’s LEGO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, the term “minecraft”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s LEGO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
page 4 The Panel, therefore, finds the first element of the Policy has been established. B. Rights or Legitimate Interests Second, paragraph 4(c) of the Policy provides a list of circumstances in which the respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. In particular, Respondent has not been authorized to use Complainant’s LEGO trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the terms “lego” and/or “minecraft” on its own. To the contrary, the disputed domain name at some point resolves to a website at “www.legominecraft.org”, which offered Complainant’s LEGO products with no authorization to do so, thereby prominently displaying Complainant’s LEGO trademark and official logo and stating in the website footer: “©www.legominecraft.com. All rights reserved”. Such making use of the disputed domain name neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of the Policy (not even so under the so-called “Oki Data” principles which would have required Respondent e.g. to accurately and prominently disclose on such website the nonexistent relationship between Respondent and Complainant as the LEGO trademark holder, which Respondent obviously and quite to the contrary did not, see WIPO Overview 3.0, section 2.8). The Panel, therefore, finds the second element of the Policy has been established, too. C. Registered and Used in Bad Faith Third, the Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances to this case leave no doubts that Respondent was fully aware of Complainant’s rights in the undisputedly famous LEGO trademark when registering the disputed domain name and that the latter is clearly directed thereto. Moreover, using the disputed domain name, which is confusingly similar to Complainant’s LEGO trademark, to run a website at “www.legominecraft.org”, which offered at some point Complainant’s LEGO products with no authorization to do so, thereby prominently displaying Complainant’s LEGO trademark and official logo and stating in the website footer: “©www.legominecraft.com. All rights reserved”, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s LEGO trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
page 5 In this context, the Panel also recognizes that Respondent seems to have used the name and contact information of a third party when registering the disputed domain name, thus has committed an identity theft, which at least supports the Panel’s finding of Respondent’s acting in bad faith. The Panel, therefore, finds that Complainant has established the third element of the Policy, too. 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 Complainant. /Stephanie G. Hartung/ Stephanie G. Hartung Sole Panelist Date: May 29, 2024
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