ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. handi saputra, handi Wijaya, garasi, mama hot, poipet, gilus mix, garasigame, bun jep, mall taman palem Case No. D2024-2478 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. The Respondents are handi Saputra, Indonesia; handi Wijaya, garasi, Indonesia; mama hot, poipet, Cambodia; gilus mix, garasigame, Cambodia; bun jep, mall taman palem, Indonesia. 2. The Domain Names and Registrars The disputed domain names
, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with NameCheap, Inc. The disputed domain names , , , , , and are registered with GoDaddy.com, LLC (together with NameCheap, Inc., the “Registrars”).
page 2 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2024. On June 19, 2024, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On June 20, 2024, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf, Registration Private / Domains By Proxy, LLC, REDACTED FOR PRIVACY / Domain Name Privacy Inc. and REDACTED FOR PRIVACY / PrivacyGuardian.org llc) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 5, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to 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. The Complainant filed an amended Complaint on July 16, 2024. 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 Respondents of the Complaint, and the proceedings commenced on July 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 22, 2024. On August 31, 2024, the Center issued a clarification regarding the underlying registrant information for certain domain names and invited the Complainant to submit any amendments to the Complaint by September 5, 2024. The Complainant submitted another amended Complaint along with a partial withdrawal request on September 5, 2024. On September 10, 2024, the Center notified the Parties of the partial withdrawal and granted the Respondent a five-day period, through September 15, 2024, to indicate whether it wished to participate in the proceeding. The Respondent did not submit a Response, and accordingly, the Center informed the Parties of the commencement of the Panel Appointment process on September 16, 2024. The Center appointed Mihaela Maravela as the sole panelist in this matter on September 18, 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 The Complainant has supplied construction toys and related products under the trademark LEGO for decades. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. According to the official Top 10 Consumer Superbrands for 2019, provided by Superbrands UK, LEGO is number 1 Consumer Superbrand and number 8 in the Consumer Relevancy Index. Moreover, 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, and applauded the LEGO Group’s strong reputation, having been on its top 10 list for 10 consecutive years. In 2014, TIME also announced LEGO to be the Most Influential Toy of All Time.
page 3 The Complainant owns many registered trademarks for LEGO including the European Union trademark No. 000039800, registered on October 5, 1998, in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, and 42, or the Indonesian trademark No. 000352087, registered on April 2, 2012, in class 25. The Complainant operates a website at “www.lego.com” and is the owner of many domain names containing the trademark LEGO. The Respondents are identified as different individuals (i.e., handi Saputra, handi Wijaya, garasi, mama hot, poipet, gilus mix, garasigame, bun jep, mall taman palem), with contact addresses in Indonesia and Cambodia. The disputed domain names were registered between May 30, 2024 and June 4, 2024. At the date of the Complaint, most of the disputed domain names resolved to or were redirected to gambling websites, where, in the majority of cases, the websites displayed LEGO at the top of the page, along with pictures of several of the Complainant's toy building blocks. Two of the disputed domain names were used to host websites featuring sponsored pay-per-click (“PPC”) advertisements for competing services or third-party services (i.e., , and ). The remaining disputed domain names did not resolve to active websites (i.e., , , , , , , , , and ). At the date of this Decision, most of the disputed domain names no longer resolve to an active website. The access to most of them appears blocked for security purposes, in case of other disputed domain names the message “This site can’t be reached” is displayed, and two of the disputed domain names are parked with GoDaddy. Two of the disputed domain names still resolve to gambling websites. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends that it is the owner of the very well-known trademark LEGO, and that the disputed domain names are confusingly similar to said trademark, as the dominant part of the disputed domain names comprise the term LEGO, identical to the registered trademark LEGO of the Complainant. The Complainant submits that in addition to the trademark LEGO, each of the disputed domain names also comprise a suffix in the form of the generic term “bet”, followed by a set of digits, namely “88”, as well as other generic terms or letters, namely: “bertahan” (Indonesian for “survive”), “gacor”, “jaya”, “resmi”, “rtp” (abbreviation for gambling slot term “Return to Player”), “x”, “y”, “z”, “a”, “alternatif” (Indonesian for “alternative”), “amp”, “judibola” (Malay for “football gaming”), “slot”, “online” and various numbers. The disputed domain name contains the letter “a” and a hyphen before the trademark LEGO. Use of these prefixes and suffixes, as well as the hyphens, do not diminish the confusing similarity between the disputed domain names and the Complainant’s trademark. With respect to the second element, the Complainant argues that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. The Complainant submits that the disputed domain names no. 1 – 8, 12 – 40, 42, 47 – 57, 59 – 60 are connected to or are redirected to websites that misappropriate the Complainant’s LEGO trademark in relation to the promotion of gambling services. The Complainant submits that the Respondent has intentionally chosen the mentioned disputed domain names based on registered trademarks in order to generate traffic and income through websites promoting gambling activities in Indonesia, where such unlicensed services are prohibited by law and that in doing so, the Respondent is using the Complainant’s trademark to mislead Internet users to its own commercial (and potentially unlawful) websites.
page 4 With respect to the disputed domain names no. 9 – 11, 41, 43 – 46, 58 and 62, the Complainant submits that those redirect Internet users to websites that resolve to blank pages and that lack content, therefore the Respondent has failed to make use of these disputed domain names and has not demonstrated any attempt to make legitimate use of these disputed domain names and websites, which evidences a lack of rights or legitimate interests. The Complainant further contends that the Respondent is not using the disputed domain names no. 61 and 63 in connection with a bona fide offering of goods or services. Instead, the Respondent is using the LEGO trademark in order to mislead Internet users to commercial websites as these two disputed domain names are used to generate traffic and income through websites with sponsored links. As regards the third element, the Complainant argues that its trademark LEGO has the status of a well-known and reputable trademark with a substantial and widespread goodwill throughout the world. The Respondent has registered the disputed domain names from July 2023 to June 2024, decades after the Complainant first registered its trademark LEGO, also in Cambodia and Indonesia where the Respondent resides. The Complainant argues that the fame of its LEGO trademark has motivated the Respondent to register the disputed domain names, therefore the Respondent cannot claim to have been registered and using the trademark LEGO without being aware of the Complainant’s rights to it, when in fact on several of the disputed domain names’ websites, the Respondent featured pictures of LEGO toy bricks and toy figurines at the top of the websites. As regards the use, the Complainant argues that the Respondent selected the disputed domain names no. 1 – 8, 12 – 40, 42, 47 – 57, 59 - 60, which promote gambling services unrelated to Complainant and its services, to intentionally confuse unsuspecting Internet users into visiting its websites. The disputed domain names no. 9 – 11, 41, 43 – 46, 58 and 62 currently resolve to inactive sites and are not being used, but passively holding domain names can constitute a factor in finding bad faith registration and use pursuant to Policy, given the confusing similarity between these domain names and the Complainant’s trademark. The disputed domain names no. 61 and 63 are connected to websites displaying sponsored links, and some of these links directly reference Complainant, therefore, the Respondent is using these two disputed domain names to intentionally attempt to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites. Further, the Complainant argues that the Respondent “gilus mix, garasigame” has previously been involved in a previous case where six domain names have been transferred to the Complainant (LEGO Juris A/S v. gilus mix / garasigame, FA2405002097749, FORUM June 8, 2024), and has also registered other four domain names during or after the mentioned case. The sheer number of infringing domain names registered by the Respondent demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Consolidation: Multiple Respondents The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant submits that (i) all disputed domain names contain the Complainant’s LEGO trademark followed by the gambling term “bet”; (ii) the registrant “gilus mix” and “handi Wijaya” both have the term “garasi” in their organization name; (iii) the registrants “gilus mix”, “handi Wijaya” and “mama hot” all have “poipet” (a city in Cambodia) in their address; (iv) the registrants “handi Wijaya” and “handi Saputra” have the same first name “handi”; (v) the registrants “handi Wijaya” and “handi Saputra” have the same email address “alpukatbtk@[...].com”; (vi) although the country of the registrant “handi Wijaya” is indicated as Indonesia, the address contains “poipet” which is a city in Cambodia and the phone number has the international code “+855” which is for Cambodia, suggesting that the country of this
page 5 Registrant should have been Cambodia; (vii) the address of the registrants “gilus mix” and “mama hot” are very similar, being in “poipet”, Cambodia, and having the same postal code 010901; (viii) the disputed domain name registered by the registrant “handi Wijaya” resolves to the same gambling website content as the websites of the “legobet88bertahan” disputed domain names registered by the registrant “gilus mix”; (ix) the disputed domain names and registered by the registrant “mama hot” resolve to the same gambling website content as the websites of the disputed domain names registered by the registrant “gilus mix”. Furthermore, the majority of the disputed domain names are hosted on the same DNS nameservers on couldflare.com and resolve to the same gambling website content. For these reasons, the Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain names’ registrants did not comment on the Complainant’s request. 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, 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. As regards common control, the Panel takes note of and agrees with the unrebutted statements of the Complainant and also notes that the consolidation of the disputed domain name is justified as, inter alia: (i) the disputed domain names are similar in construction, as all of them incorporate the Complainant’s trademark LEGO with the addition of generic term(s) or letter(s) and hyphen(s) in most of the disputed domain names; (ii) most of the websites to which the disputed domain names resolved are similar, resolving or redirecting to gambling websites displaying LEGO along with pictures of several of the Complainant's toy building blocks; (iii) currently most of the websites at the disputed domain names are inactive or display warning messages. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding. 6.2. Substantive issues No response has been received from the Respondent in this case. However, given that the Complaint was sent to the relevant addresses disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of the Rules. The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, and the Panel can draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2 of the WIPO Overview 3.0. To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are 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 respect of the disputed domain names, and (iii) the disputed domain names have been registered and are being used in bad faith.
page 6 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 the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of the trademark LEGO for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The 63 disputed domain names wholly incorporate the LEGO trademark of the Complainant. The disputed domain names also incorporate other terms or elements, as follows: - the term “bet”, followed by the number “88”, as well as other terms, letters or a hyphen, namely: “bertahan” (“survive” in Indonesian), “gacor”, “jaya”, “resmi”, “rtp” (abbreviation for gambling slot term “Return to Player”), “x”, “y”, “z”, “alternatif” (“alternative” in Indonesian), “amp”, “judibola” (“football gaming” in Malaysian), “slot”, “online” and various numbers; and - the disputed domain name also contains the letter “a” and a hyphen before the trademark LEGO. Although the addition of the above terms or letters may bear on assessment of the second and third elements, the Panel finds the addition of such terms or letters does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy, because the LEGO trademark remains clearly recognizable in each of them. WIPO Overview 3.0, sections 1.7 and 1.8. Also, use of hyphens or prefixes does not prevent the confusing similarity between the disputed domain names and the Complainant’s trademark. It is the settled view of panels applying the Policy that the generic Top-Level Domains (“gTLD”) (here “.com”, “.xyz”, “.org”, “.info”, and “.ink”) may be disregarded under the first element test. See WIPO Overview 3.0, section 1.11. Accordingly, the Panel finds that all 63 disputed domain names are confusingly similar to the Complainant’s LEGO trademark for the purposes of the Policy. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests 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 the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.
page 7 The Complainant submits that it has not licensed or authorized the Respondent to use the trademark LEGO and that the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. There is no evidence that the Respondent is using the disputed domain names in connection with a bona fide offering of goods or services, nor does the Respondent appear to engage in any legitimate noncommercial or fair use of the disputed domain names within the meaning of paragraphs 4(c)(i) and (iii) of the Policy. Rather, according to the unrebutted evidence put forward by the Complainant, most of the disputed domain names (51 disputed domain names) resolve or formerly resolved or redirected to websites promoting gambling services, which shows in the Panel’s view, the Respondent’s intention to divert consumers for commercial gain to such websites, by taking unfair advantage of the goodwill and reputation of the Complainant’s rights. This is all the more so since the Complainant’s products are essentially tailored for children. Two of the disputed domain names formerly resolved to webpages displaying PPC links, that related to the Complainant’s products or to third-party services. According to section 2.9 of the WIPO Overview 3.0. “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. These links operated for the commercial gain of the Respondent, if it was paid to direct traffic to the linked websites, or for the commercial gain of the operator of those websites, or both. The fact that certain links on the Respondent’s webpage have no obvious connection with the Complainant is insufficient for the Respondent’s activities to comprise a bona fide offering of goods and services. Noting the circumstances of this case, the Panel does not foresee any reasonable explanation for the selection of the disputed domain names (reproducing the Complainant’s trademark in its entirety), and none has been provided. Further, ten disputed domain names did not resolve to an active website, which according to the Panel does not give rise to any rights or legitimate interests in the disputed domain names considering the circumstances of this case. At the date of the Decision, most of the disputed domain names no longer resolve to an active website. The access to most of them appears blocked for security purposes, in case of other disputed domain names the message “This site can’t be reached” is displayed, and two of the disputed domain names are parked with GoDaddy. Two of the disputed domain names still resolve to gambling websites. In the Panel’s view, none of the above indicate that the disputed domain names are being used in connection with a bona fide offering of goods or services for the purposes of the Policy or that the Respondent is making a legitimate noncommercial or fair use of any of the disputed domain names. The warning pages for most of the disputed domain names rather indicate that such disputed domain names may be being used to perpetrate illegal activity and thus, do not favor a finding of any rights or legitimate interests on behalf of the Respondent. Also, there is no evidence that the Respondent is commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. The Respondent’s names are handi Saputra, handi Wijaya, garasi, mama hot, poipet, gilus mix, garasigame, bun jep, mall taman palem. None of the mentioned names resemble a disputed domain name. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith 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. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
page 8 According to the unrebutted assertions of the Complainant, its LEGO trademark was widely used in commerce well before the registration of the disputed domain names. The Complainant’s mark is unique, a coined term; it has no meaning except for its association with the Complainant. The disputed domain names are confusingly similar with the Complainant’s trademark. Almost all the disputed domain names wholly incorporate the LEGO trademark as their initial element, and one of the disputed domain names has an “a” and a hyphen before LEGO. The majority of the disputed domain names resolved to the websites displaying LEGO at the top of the page, along with pictures of several of the Complainant's toy building blocks. The Respondent provided no explanations for why he registered the disputed domain names. Under these circumstances it is reasonable to infer that the Respondent has registered the disputed domain names with the Complainant in mind. As regards the use, most of the disputed domain names (51 disputed domain names) resolved or redirected to websites promoting gambling services. Two of the disputed domain names resolved to webpages displaying PPC links, that related to the Complainant’s products or to third-party services. Given the confusing similarity between the Complainant’s LEGO trademark and the disputed domain names, and that the websites appear to have been used for commercial gain of the Respondent or of the operators of those (linked) websites, or both, and given also the findings in section 6.2.B above, the Panel considers that the disputed domain names are intended to attract Internet users by creating a likelihood of confusion with the Complainant’s LEGO trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or other online location or of a service offered on such other online location within the terms of paragraph 4(b)(iv) of the Policy. The fact that the use of many of these disputed domain names has now changed and that they no longer resolve to active websites does not alter the above conclusion; rather, it may be further indication of bad faith. With respect to the disputed domain names that do not appear to have resolved to an active website since their registration, 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. Having reviewed the available record, the Panel finds the non-use of the disputed domain names does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness of the Complainant’s trademark, and the composition of the disputed domain names, and finds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy. Also, according to unrebutted evidence submitted by the Complainant, the Respondent has exhibited a pattern of bad faith registration and use of domain names that contain well-known trademarks. See, for example, LEGO Juris A/S v. gilus mix / garasigame, Claim Number: FA2405002097749. Such pattern of cybersquatting is strong evidence of bad faith. Moreover, the Respondent has not formally participated in these proceedings and has failed to rebut the Complainant’s contentions or provide any evidence of actual or contemplated good-faith use. Therefore, the Panel finds that all 63 disputed domain names have been registered and are being used in bad faith. The Panel finds that the Complainant has established the third element of the Policy.
page 9 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 names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,, , , , , , , , , , , , , , , , , , , and be transferred to the Complainant. /Mihaela Maravela/ Mihaela Maravela Sole Panelist Date: October 2, 2024
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