ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Muhamad Arifin, felicia angelina, SKYTEAM, fatur fatur, Kudeta Group4, IWAN KUSTIAWAN, Evania DuaEnam, Abdul Azis Case No. D2024-1985 1. The Parties Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. Respondents are Muhamad Arifin, Indonesia; felicia angelina, SKYTEAM, Indonesia; fatur fatur, Indonesia; Kudeta Group4, Indonesia; IWAN KUSTIAWAN, Indonesia; Evania DuaEnam, Cambodia; Abdul Azis, Cambodia. 2. The Domain Names and Registrars The following disputed domain names (“Domain Names”) are registered with the following registrars (“Registrars”) respectively: Domain Names Registrars 1
GoDaddy.com, LLC 2 GoDaddy.com, LLC 3 GoDaddy.com, LLC 4 GoDaddy.com, LLC 5 GoDaddy.com, LLC 6 GoDaddy.com, LLC 7 GoDaddy.com, LLC 8 GoDaddy.com, LLC 9 NameCheap, Inc. 10 GoDaddy.com, LLC 11 GoDaddy.com, LLC
page 2 12 GoDaddy.com, LLC 13 GoDaddy.com, LLC 14 GoDaddy.com, LLC 15 GoDaddy.com, LLC 16 NameCheap, Inc. 17 GoDaddy.com, LLC 18 GoDaddy.com, LLC 19 GoDaddy.com, LLC 20 GoDaddy.com, LLC 21 GoDaddy.com, LLC 22 GoDaddy.com, LLC 23 NameCheap, Inc. 24 NameCheap, Inc. 25 NameCheap, Inc. 26 GoDaddy.com, LLC 27 GoDaddy.com, LLC 28 GoDaddy.com, LLC 29 NameCheap, Inc. 30 Dynadot LLC 31 NameSilo, LLC 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2024 against 28 Domain Names. On May 14, 2024, the Center transmitted by email to the Registrars each a request for registrar verification in connection with the Domain Names. On May 14, 2024, the Registrars each transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondents (Registration Private, Domains By Proxy, LLC and Redacted for Privacy, Privacy service provided by Withheld for Privacy) and contact information in the Complaint. The Center sent an email to Complainant on May 17, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting that Complainant either file separate complaints for the Domain Names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all Domain Names are under common control. Complainant filed an amended Complaint on May 21, 2024 with three additional Domain Names. On May 22, 2024, the Center transmitted by email to the Registrars for the additional Domain Names each a request for registrar verification in connection with the additional Domain Names. On May 22, 2024, the Registrars each transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondents (Redacted for Privacy, Privacy service
page 3 provided by Withheld for Privacy; Redacted for Privacy, Super Privacy Service LTD c/o Dynadot; and, Redacted for Privacy, PrivacyGuardian.org llc) and contact information in the Complaint. The Center sent an email to Complainant on May 23, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting that Complainant either file separate complaints for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all Domain Names are under common control. Complainant filed another amended Complaint on May 28, 2024. The Center verified that the Complaint together with the amended Complaints 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 May 31, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2024. On June 19, 2024, the Center received an informal communication from Respondent Muhamad Arifin concerning 23 of the 31 Domain Names. No formal response was received. Accordingly, the Center notified the Parties on June 21, 2024 that it would proceed to Panel Appointment. The Center appointed Robert A. Badgley as the sole panelist in this matter on July 1, 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 alleges that it is a Denmark-based manufacturer of construction toys and related products. According to complainant, its LEGO trademark is registered in numerous jurisdictions and is widely recognized as a famous trademark. Annexed to the Complaint is a list of Complainant’s registered trademarks around the world, including Indonesian Reg. No. IDM000352087 for LEGO (and design), registered on April 2, 2012. Complainant asserts that its licensees “are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in Indonesia and elsewhere.” According to the Complaint: “Over the years, the business of making and selling LEGO branded toys has grown remarkably. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Indonesia. Moreover, the Complainant is the owner of more than 5,000 domain names containing the term LEGO (see Annex 5 for an overview of the reverse Whois record). It is the strict policy of the Complainant that all domain names taking an unfair commercial advantage of the LEGO trademark should be recovered by the Complainant. The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. With respect to the fame of the LEGO mark, Complainant annexes to the Complaint a list of “the official Top 10 Consumer Superbrands for 2019, provided by Superbrands UK, showing LEGO as number 1 Consumer Superbrand and number 8 in the Consumer Relevancy Index.” Moreover, Complainant asserts (and supports with annexes), the Reputation Institute “recognized the LEGO Group as number 1 on its list of the world’s Top 10 Most Reputable Global Companies of 2020.” In 2014, Complainant states, TIME “announced LEGO to be the Most Influential Toy of All Time.” (This assertion is also supported by evidence submitted
page 4 with the Complaint.) Complainant further asserts that the “LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.” Complainant’s main commercial website is located at “www.lego.com”. The Domain Names were registered at various points between October 3, 2023 and April 21, 2024. According to the Complaint, and as corroborated by screenshots annexed thereto: “Domain Name no. 1 is connected to a website that misappropriates the Complainant’s LEGO trademark in relation to the promotion of gambling services. Domain Names no. 2 – 12 redirect visitors to domain name no. 1. The Domain Names no. 13 and 14 feature the same content as domain name no. 1. Domain Names no. 20 , 21, and 28 also historically resolved to the same gambling content featured on the website connected to Domain Name no. 1. Domain Names no. 15 – 19 and 29 – 31 also resolve to websites which feature gambling services.” According to Complainant, “Respondent has intentionally chosen domain names based on registered trademarks in order to generate traffic and income through websites promoting gambling in Indonesia, where such services are prohibited by law. In doing so, the Respondent is using the Complainant’s trademark to mislead Internet users to its own commercial (and potentially unlawful) websites.” Complainant alleges that “Respondent is using Domain Names no. 20 – 25 to redirect internet users to websites that resolve to blank pages and that lack content,” and that “Respondent is using Domain Name no. 26 to redirect internet users to a website featuring links to third-party websites, some of which directly compete with Complainant's business.” According to Complainant, “Domain Names no. 27 and 28 occasionally redirect internet users to a third party website, which does not feature any content.” (Again, Complainant has annexed screenshots to the Complaint to support these allegations.) 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 names. With respect to its request to consolidate into a single UDRP proceeding 31 domain names nominally registered by several different persons or entities, Complainant asserts that all 31 Domain Names are under common control. Complainant argues as follows: “A complaint is allowed to proceed with multiple respondents when the domains or websites are under common control. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition [‘WIPO Overview 3.0’] at § 4.11.2 stated: ‘Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.’” “The Complainant believes that the Disputed Domain Names are under common control for the following reasons: 1. Domains 1-15, 20-23, and 26-28 are all registered to the same individual (Muhamed Arafin); 2. All of the registrants were employing a privacy service at the time of filing; 3. Domains 1-29 are all held by entities located in Indonesia and 30-31 are held by entities located in Cambodia;
page 5 4. All domains were created using a generic @gmail.com email address where most incorporate the string: term + number to create the email address; 5. The majority of the domains resolve or did resolve, to the same or similar content. That is all of the Domain Names were used to host gambling or gaming websites in the Indonesian language; 6. All of the Domain Names utilize a similar composition: term+LEGO+win and LEGO+win+77; 7. Domain Names 17-19, 24-25 and 29-31 were all created within two (2) months of Domain Names 1, 7, and 17, while all domain names were created within seven (7) months of one another; 8. While various registrars were used (likely as a way to avoid detection) a majority of the Domain Names are registered with GoDaddy.com or NameCheap; 9. Some of the contact information is likely false. Specifically, Whois information for domains 16-19 indicate registrant is in Indonesia but gives a Cambodian phone number (+855 country code). Whois information for domain name 29 and 30 use nearly the same address but list different countries (Indonesia and Cambodia). [Complainant annexed to the Complaint screenshots of the websites found at all 31 Domain Names.]” “With reference to the above, it is almost certain that the Domain Names are all registered to the same entity using multiple aliases as a way to avoid detection in proceedings such as this. Moreover, Complainant finds it difficult to believe that seven (7) different entities created 31 Domain Names, using a similar composition, across primarily the same registrars and all used for the same purpose. More specifically: Domain Names 1-15, 20-23 and 26-28 are under common control as all are registered to the same entity, Muhamed Arafin. These domains have cross-over and share Name Server and Registrar information with the others. All of the domain names share a similar composition, were registered using generic @gmail.com email addresses, to registrants in Indonesia and Cambodia, some of which use nearly the same address across the two countries (29 and 30) and some of which indicate registrant is in Indonesia but gives a Cambodian phone number (+855 country code) (16 – 19). At the same time, all were all used for the same purpose, hosting Indonesian language gaming websites and all were creating to target the same brand (LEGO) during a seven-month period. The Complainant refers to Eli Lilly and Company v. Darren K. Headley et al., WIPO Case No. D2013-1303 (Sepember 4, 2013). In this case, the Panel held: “With respect to the disputed domain names, the Complainant has requested that the multiple Respondents be consolidated for decision in this one proceeding. After consulting prior UDRP decisions addressing similar circumstances, the Panel believes that there is significant precedent supporting consideration for such consolidation when the disputed domain names are determined to be under common control. See, for example, Guccio Gucci S.p.A v. Andrea Hubner, Beijing Harmony Software Co.Ltd., jiang wang, brian miller, Pornsawang Chotima, Domain Whois Protection Service, Whois Agent, Jie Zhou, Jayzhou, Hi to every day in Zhengzhou Medical Devices Co., Ltd., tian jin hua jin you xian gong si, lihong jay, hu, lizhu hu, da tou, Tamia Liu, Wang Jie, Yijiwangluo., WIPO Case No. D2012-2212 (‘UDRP jurisprudence suggests consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve’); and Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.” B. Respondent Respondents did not formally reply to Complainant’s contentions. In its June 19, 2024 email to the Center, Respondent Muhamad Arifin stated: “Regarding this domain, we are sorry, we are not aware that the use of this domain violates existing provisions and we will no longer use the word LEGO in our domain [sic].” This communication refers to 23 of the 31 Domain Names, including the Domain Name whose underlying registrant as disclosed by the Registrar is Evania DuaEnam.
page 6 6. Discussion and Findings 6.1 Consolidation and Multiple Purported Respondents Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing the Complainant’s request to consolidate in a single UDRP proceeding 31 domain names purportedly registered by different persons or entities, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview 3.0, section 4.11.2. As noted above, at least 22 of the 31 Domain Names are registered in the name of the same person. The Panel concludes, based on the undisputed record and the evidence in the record, that it is more likely than not that all 31 Domain Names are under common control such that consolidation of all 31 Domain Names in this single proceeding is warranted. The similarity of the Domain Names themselves (containing either “legowin”, “lego77”, “legowin77”, or “legowin777” in the second level domain) is one powerful indicator of common control. Other factors include the fact that many Domain Names resolve to the same website, and the ones that do not resolve to the same website resolve to similar sites or are registered in the name of another person who has directed other Domain Names in this case to that common website. For example, the Domain Name formerly redirected to . The communication from Respondent Muhamad Arifin, who, according to the Registrars’ disclosure, is the underlying registrant of 22 of the 31 Domain Names, refers to 23 of the 31 Domain Names, including the Domain Name whose underlying registrant as disclosed by the Registrar is Evania DuaEnam. The foregoing factors, and the lack of any indication from any of the purportedly different Respondents that the Domain Names are not all registered by the same person or under common control, leads the Panel to conclude that the 31 Domain Names at issue in this proceeding are probably registered by the same person or entity, and are under common control. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. As such, the Panel shall consolidate this proceeding to include all 31 Domain Names, and henceforth will refer to “Respondent” as a single person or entity. 6.2 Merits Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar 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 Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Panel finds that Complainant clearly has rights in the widely registered and well-known LEGO mark. The Panel also finds that each of the 31 domain names is confusingly similar to the LEGO mark. In each of the domain names, the LEGO mark is clearly recognizable.
page 7 Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests For each of the disputed domain names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. 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 often primarily within the knowledge or control of the respondent. Thus, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production 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. The Panel concludes that Respondent lacks rights or legitimate interests in connection with the Domain Names. Respondent has not come forward in this proceeding to refute any of the plausible allegations made by Complainant, or challenge any of the evidence put forth by Complainant. It is clear from this undisputed record that Respondent targeted Complainant’s well-known mark to derive income from gambling activities or hyperlinks to commercial websites offering products in competition with Complainant’s products. Such conduct obviously does not invest Respondent with rights or legitimate interests vis-à-vis the Domain Names. Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith For each of the disputed domain names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the domain name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or (ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
page 8 (iv) that by using the Domain Names, Respondent has intentionally attempted 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 of a product or service on Respondent’s website or location. The Panel concludes that Respondent registered and used the Domain Names in bad faith under the Policy. The Panel incorporates its discussion above in the “Rights or Legitimate Interests” section. On this record, the Panel finds it clear that Respondent targeted Complainant’s mark when registering the Domain Names, and has actively used most of the Domain Names for illegitimate commercial gain by seeking to divert Internet traffic by free-riding on Complainant’s well-known mark. This constitutes bad faith registration and use within the meaning of the above-quoted Policy paragraph 4(b)(iv). Regarding the Domain Names that do not resolve to active websites, the Panel notes that Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. In these circumstances, the Panel finds the passive holding of the remaining Domain Names does not prevent a finding of bad faith under the Policy. In addition, the Panel finds Respondent in bad faith within the meaning of the above-quoted Policy paragraph 4(b)(ii), as Respondent has engaged in a pattern of preclusive registrations. Complainant has established 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 following disputed domain names be transferred to Complainant: , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , . /Robert A. Badgley/ Robert A. Badgley Sole Panelist Date: July 15, 2024
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