ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Anton Wijaya, Abdul Azis, and IWAN KUSTIAWAN Case No. D2024-2898 1. The Parties Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. Respondents are Anton Wijaya, Indonesia (“Respondent 1”), Abdul Azis, Cambodia (“Respondent 2”), and IWAN KUSTIAWAN, Indonesia (“Respondent 3”). 2. The Domain Names and Registrars The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with Dynadot Inc. The disputed domain name is registered with NameCheap, Inc. (Dynadot Inc., and NameCheap, Inc., collectively, the “Registrar”). 3. Procedural History The Complaint, regarding 57 domain names, was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2024. On July 16, 2024, the Center transmitted by email to each Registrar a request for registrar verification in connection with such 57 domain names. On July 16, 2024, each Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for these domain names which differed from those in the Complaint (REDACTED FOR PRIVACY / Super Privacy Service LTD c/o Dynadot, and Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf). The Center sent an email communication to Complainant on July 19, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by each Registrar, requesting Complainant to either file separate complaint(s) for the domain names associated with different underlying registrants or
page 2 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 July 24, 2024, including a request to remove one of the domain names from the current proceedings. On August 2, 2024, the Center confirmed to the Parties and the concerned Registrar regarding the removal of one of the domain names. 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 Respondents of the Complaint, and the proceedings commenced on August 14, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2024. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on September 6, 2024. The Center appointed Gerardo Saavedra 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 Complainant is a Danish company and the owner of the LEGO brands used in construction toys and other products. Complainant has rights over the LEGO mark for which it holds, among others, United States of America registration No. 1018875, registered on August 26, 1975, in class 28; and European Union registration No. 000039800, registered on October 5, 1998, in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, and 42. Complainant also has rights over the LEGO and design mark for which it holds, among others, Indonesian registration No. IDM000352087, registered on April 2, 2012, in class 25. Respondent 3 is the registrant of the disputed domain name . Respondent 2 is the registrant of the disputed domain names , , , , , , and . Respondent 1 is the registrant of all other 48 disputed domain names. The disputed domain names were all registered between February 2 and May 18, 2024. At the time of filing of the Complaint, (i) the disputed domain names , , , , (previously resolved to a parking web page showing sponsored links), (previously resolved to a website promoting gambling services), (previously resolved to a website promoting gambling services), , and (previously resolved to a website promoting gambling services) resolved to inactive websites; (ii) the disputed domain names , , , and resolved to parking web pages showing sponsored links; and (iii) all other 43 disputed domain names resolved to websites promoting gambling services. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy and requests that the disputed domain names be transferred to Complainant. Complainant’s assertions may be summarized as follows.
page 3 Complainant is the owner of the LEGO mark used in connection with the famous LEGO construction toys and other LEGO branded products. Over the years, the business of making and selling LEGO branded toys has grown remarkably. Complainant’s group has expanded its use of the LEGO mark to, inter alia, computer hardware and software, books, videos, and computer-controlled robotic construction sets. Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Indonesia. The LEGO mark 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. The LEGO mark and brand have been recognized as being famous; for instance, in the list of the official Top 10 Consumer Superbrands for 2019, provided by Superbrands UK, LEGO appears as the number one Consumer Superbrand and number eight in the Consumer Relevancy Index. In 2014, Time featured LEGO as the Most Influential Toy of All Time. Complainant is the owner of more than 5,000 domain names containing the term “lego”. Complainant’s group also maintains an extensive website linked to the domain name . All indicates that the 56 disputed domain names are under common control. Respondents are found to be connected to one another, either by similar address information and same postal code or phone number. In all disputed domain names, the LEGO mark is immediately followed by “138”, and most of the disputed domain names are associated with the same gambling website content. The disputed domain names are confusingly similar to Complainant’s LEGO mark. The dominant part of each disputed domain name identically comprises such mark. In addition to the LEGO mark, the disputed domain names also comprise a “138” suffix. A few other disputed domain names contain an additional suffix of other generic terms, namely: “rtp” (abbreviation for “Return To Player” - a term used in gambling with casino slot machines) and “spin”. One of the disputed domain names contains the prefix “spin” before the LEGO mark. Use of these prefix and suffixes do not diminish the confusing similarity between the disputed domain names and said mark. Respondents have no rights or legitimate interests in respect of the disputed domain names. Respondents have no registered trademarks or trade names corresponding to the disputed domain names. Complainant has not granted any license or authorization to Respondents to use the LEGO mark, and Respondents have never had a business relationship with Complainant. There is no evidence that Respondents are commonly known by the disputed domain names and Respondents’ names do not resemble the disputed domain names in any manner. Respondents are not using the disputed domain names in connection with a bona fide offering of goods or services. Respondents are simply trying to benefit from Complainant’s world famous mark, and there is no disclaimer on the websites to explain the lack of relationship to Complainant. Respondents are using the disputed domain names , , , , , , , , and to redirect Internet users to websites that resolve to error pages and lack content. Respondents have failed to make use of these nine disputed domain names and have not demonstrated any attempt to make legitimate use of them, which evidences a lack of rights or legitimate interests in the same. As regards the disputed domain names , , , and , Respondents have intentionally chosen them based on a registered trademark in order to generate traffic and income through websites with sponsored links; that is, Respondents are using the LEGO mark in order to mislead Internet users to their commercial websites. As regards the other 43 disputed domain names, , , , , , , , , , , , , , , , , , , , , , , , , , ,
page 4 , , , , , , , , , , , , , , , , and , they are used to resolve to websites featuring Complainant’s LEGO mark and iconic brick toy figurines whilst providing links to gambling sites. Respondents have intentionally chosen these 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. In doing so, Respondents are using Complainant’s mark to mislead Internet users to their own commercial (and potentially unlawful) websites. Respondents should be considered to have registered and used the disputed domain names in bad faith. Respondents registered the 56 disputed domain names between February and May 2024. Complainant’s worldwide trademark registrations of LEGO predate the registrations of the disputed domain names, including in Indonesia where Respondents reside. The LEGO mark in respect of toys has the status of a well-known and reputable trademark with a substantial and widespread goodwill throughout the world. The number of third-party domain name registrations comprising the LEGO mark in combination with other words has always been attractive to domain name infringers. The considerable value and goodwill associated with the LEGO mark is most certainly what motivated Respondents to register the disputed domain names. Respondents cannot claim to have been using the LEGO mark without being aware of Complainant’s rights to it, when in fact on several of the disputed domain names’ websites, Respondents have claimed to be “LEGO138” and featured pictures of LEGO toy figurines at the top of said websites. Respondents have intentionally misappropriated Complainant’s mark as a way of redirecting Internet users searching for Complainant to the websites linked to the disputed domain names. 43 of the disputed domain names promote gambling services unrelated to Complainant. This sort of tactic, labeled “bait-and-switch” for its propensity to confuse Internet users into believing that they are visiting Complainant’s sites, has been held to be evidence of bad faith registration and use under past UDRP decisions. Four of the disputed domain names are connected to websites displaying sponsored links, that is, these disputed domain names are used to intentionally attempt to attract Internet users to their websites for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such websites. Nine of the disputed domain names resolve to inactive sites and are not being used. Passively holding domain names can constitute a factor in finding bad faith registration and use pursuant to the Policy. The disputed domain names can only be taken as intending to cause confusion among Internet users as to their source, and thus they must be considered as having been registered and used in bad faith, with no good faith use possible. More specifically, where the disputed domain names contain the LEGO mark in its entirety together with terms like “rtp” and “spin” which relate to gambling services unrelated to Complainant’s business, there is no plausible good-faith reason or logic for Respondents to have registered them. As for the disputed domain names which resolve to inactive websites or parked pages, any use of them whatsoever, whether actual or theoretical, would have to be in bad faith. Each of the 56 disputed domain names infringes upon Complainant’s LEGO mark. The sheer number of infringing disputed domain names registered by Respondents demonstrates that Respondents engaged in a pattern of cybersquatting, which is evidence of bad faith registration and use. Respondents’ use of privacy services to hide their identities serves as further evidence of bad faith registration and use. Complainant first tried to contact Respondents on February 23, 2024, through a cease-and-desist letter sent via the Registrar’s contact request webform. In spite of the reminders sent, no reply was ever received.1 In earlier UDRP decisions, the failure of a respondent to respond to a cease-and-desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith. 1 Such cease and desist communication was addressed to “Super Privacy Service LTD c/o Dynadot” and made reference to 17 of the disputed domain names. The reminders thereof are dated March 1 and 8, 2024.
page 5 B. Respondents Respondents did not reply to 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. Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. 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 name registrants did not comment on 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 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 notes that: - The disputed domain names all contain Complainant’s LEGO trademark followed by the numbers “138”; - Respondents all have the same term “DKI Jakarta” and the same postal code “15678” in their addresses; - Respondents “Anton Wijaya” and “IWAN KUSTIAWAN” have the same starting terms “dgm” in their gmail addresses; - Although the country of Respondent “Abdul Azis” is indicated as Cambodia according to the Registrar’s reply to the request for Registrar Verification, the address contains the same postal code and address term, e.g., “DKI Jakarta” as other two Respondents based in Indonesia, suggesting that the country of this Respondent should have been Indonesia; - the disputed domain name registered by Respondent “Abdul Azis” resolves to the same gambling website content (with “LEGO138” website header ) as the websites of the disputed domain names registered by Respondent “Anton Wijaya”. 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 considers that Complainant has established that all disputed domain names are under common control and that it is fair and equitable to have all named Respondents in this single administrative proceeding. In light of the above, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants in a single proceeding. 6.2 Substantive Issues Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The lack of response from Respondents does not automatically result in a favorable decision for Complainant (WIPO Overview 3.0, section 4.3). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that each of the disputed domain names is identical or confusingly similar to a
page 6 trademark or service mark in which Complainant has rights; (ii) that Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) each of the disputed domain names has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy (WIPO Overview 3.0, section 1.2.1). The entirety of the LEGO mark is reproduced within each disputed domain name, albeit placed in between “spin” and “138” in one of them, or followed by the characters “138” or “138rtp” or “138spin” in the others. The Panel finds the mark is recognizable within each disputed domain name and that the addition of said characters does not prevent a finding of confusing similarity between each of the disputed domain names and the mark for the purposes of the Policy (WIPO Overview 3.0, sections 1.7, 1.8 and 1.11.1). The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests 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). Paragraph 4(c) of the Policy provides a list of circumstances in which a respondent may demonstrate rights or legitimate interests in a disputed domain name. In the case file, there is no evidence of any of those, or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain names by Respondents, but rather the opposite may be validly inferred. It is uncontested that Complainant’s LEGO mark is well known internationally. Complainant asserts that Respondents have had no business relationship with Complainant, that Respondents are not commonly known by the disputed domain names, that Respondents have no registered trademarks or trade names corresponding to the disputed domain names, and that Complainant has not granted any authorization to Respondents to use its LEGO mark.2 The Panel finds Complainant has established a prima facie case that Respondents lack rights or legitimate interests in the disputed domain names. Respondents have not rebutted Complainant’s prima facie showing and have 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. Based on the available record, 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. 2 See Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400: “There is no evidence that the Complainant authorized the Respondent to register the disputed domain name or to use the CASIO trademark, with or without immaterial additions or variants. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent”.
page 7 Having reviewed the case file, the Panel finds that Respondents’ registration and use of the disputed domain names constitutes bad faith under the Policy. The overall evidence indicates that Respondents’ choice of the disputed domain names was deliberate, with the intention to benefit from the reputation and goodwill of Complainant’s well-known LEGO mark, which denotes bad faith.3 The fact that Respondents registered the 56 disputed domain names, each incorporating Complainant’s LEGO mark, simply reinforces the aforesaid and leads to infer that Respondents registered and used the disputed domain names in bad faith (WIPO Overview 3.0, section 3.1.24). The evidence shows that 47 disputed domain names have been used for commercial gain (43 associated with gambling websites, while 4 resolved to websites with sponsored links). The evidence also shows that four out of nine inactive disputed domain names were previously used for commercial gain. Thus the overall evidence shows that Respondents have taken advantage of the confusingly similar disputed domain names in order to commercially benefit therefrom, that is, Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of these websites, which is a showing of bad faith5 (paragraph 4(b)(iv) of the Policy). The evidence also shows that nine disputed domain names, at the time of filing of the Complaint, did not resolve to any active websites. In any event, it seems to the Panel that there is no basis in the case file to conceive a legitimate use of these disputed domain names by Respondents where Complainant’s LEGO mark is clearly being targeted in registration of these disputed domain names. Taking into consideration the recognition of Complainant’s mark and the composition of these disputed domain names, the Panel finds that in the circumstances of this case the passive holding of such disputed domain names does not prevent a finding of bad faith under the Policy.6 Further, Respondents’ failure to reply to Complainant’s cease-and-desist letter may also be indicative of bad faith (see Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632). Such finding is still valid even where a privacy protection service is provided by a third party, since such third party provider would be expected to forward such cease and desist letter to its principal, i.e., the underlying registrant (see HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062). In the Panel’s view, the lack of response is also indicative that Respondents lack arguments and evidence to support their holding of the disputed domain names. Based on the available record, the Panel finds that Complainant has established the third element of the Policy. 3 See DaimlerChrysler Corporation v. Web4COMM SRL Romania, WIPO Case No. DRO2006-0003: “The registration and use in any form of a famous trademark which belongs to somebody else, without proving any rights or legitimate interests in it, represents bad faith registration and use”. See also Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273: “incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”. 4 See Verizon Trademark Services LLC v. Osman Khan, NutriGold Inc, WIPO Case No. D2015-1651: “Registering three domain names incorporating trademarks of third parties is sufficient to constitute a “pattern” of conduct evidencing bad faith”. See America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713: “registration of several names corresponding to Complainant’s service marks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith within the meaning of paragraph 4(b)(ii) of the Policy”. 5 See Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101: “registration of a domain name in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain constitutes a form of bad faith”. 6 See WIPO Overview 3.0, section 3.3. See also Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Case No. D2003-0882: “Respondent has provided no evidence or suggestion of a possible legitimate use of the Domain Name. Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate”.
page 8 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 Complainant. /Gerardo Saavedra/ Gerardo Saavedra Sole Panelist Date: October 2, 2024
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