ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Oz Sahman, Aozu Case No. D2024-3066 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. The Respondent is Oz Sahman, Aozu, United Kingdom (“UK”). 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 July 26, 2024. On July 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent (Redacted for Privacy, Privacy Service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 29, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 1, 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 Respondent of the Complaint, and the proceedings commenced on August 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2024.
page 2 The Center appointed Mihaela Maravela as the sole panelist in this matter on August 30, 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. The Complainant owns many registered trademarks for LEGO including the UK trademark No. 00900039925, registered on August 2, 1999, in classes 14, 18, 21, 27, 30, 38, and 41. The Complainant operates a website at “www.lego.com” and is the owner of many domain names containing the trademark LEGO. The disputed domain name was registered on May 19, 2024, and it resolves to a website offering for sale crypto tokens, displaying the LEGO trademark of the Complainant and featuring a “LEGOified” image of United States of America’s (U.S.) 45th President Donald Trump, titled “Lego Trump” in the Complainant’s LEGO typeface. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for the transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark LEGO, as the dominant part of the disputed domain name comprises the term “Lego”, identical to the registered trademark LEGO of the Complainant. The Complainant’s LEGO trademark is recognizable within the disputed domain name despite the addition of the third-party trademark TRUMP - as such, the disputed domain name must be considered confusingly similar to the Complainant’s LEGO trademark. Additionally, the Respondent’s use of the disputed domain name contributes to the confusion, as it features a “LEGOified” image of 45th U.S. President Donald Trump, titled “Lego Trump” in the Complainant’s distinctive LEGO typeface, which suggests that the Respondent intended the disputed domain name to be confusingly similar to the Complainant’s trademark as a means of furthering consumer confusion. As regards the second element, the Complainant argues that no license or authorization of any 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 Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Rather, the disputed domain name is used to offer for sale crypto tokens, a service entirely unrelated to the Complainant, also displaying the LEGO trademark of the Complainant, therefore, the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as allowed under the Policy. Rather, such use can risk tarnishing the Complainant’s brand. The Complainant also submits that the Respondent is identified as “Oz Sahman / “Aozu”, which does not resemble the disputed domain name in any manner. With respect to the third element, the Complainant argues that the trademark LEGO in respect of toys belonging to the Complainant has the status of a well-known and reputable trademark with a substantial and
page 3 widespread goodwill throughout the world. The Respondent registered the disputed domain name on May 19, 2024, which is well after when the Complainant registered the trademark LEGO. There is no connection between the Respondent and the Complainant. The disputed domain name is connected to an unauthorized commercial website promoting the sale of crypto tokens, which is unrelated to the Complainant and its services under the LEGO trademark. The Complainant’s LEGO typeface is prominently displayed on the website, contributing to creating a likelihood of confusion with the Complainant. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. Further, the Respondent had employed a privacy service to hide its identity, which past Panels have held serves as further evidence of bad faith registration and use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Although properly notified, no response has been received from the Respondent in this case. 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2. 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 name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name, and (iii) the disputed domain name has been registered and is 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 the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. It is the settled view of panels applying the Policy that the Top-Level Domain (here “.xyz”) should be disregarded under the first element test. 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 entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds that the Complainant’s trademark is recognizable within the disputed domain name, and the addition of the third-party mark TRUMP does not prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.12. The Panel finds the first element of the Policy has been established.
page 4 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 name. 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 name such as those enumerated in the Policy or otherwise. There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. According to the unrebutted evidence adduced by the Complainant, the disputed domain name is used to host a website displaying the Complainant’s registered and well-known trademark LEGO and offering for sale crypto tokens. The Panel finds it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant’s reputation by registering a domain name fully containing the Complainant’s trademark and trade name with the intent to attract Internet users for commercial gain. Also, there is no evidence indicating that the Respondent is commonly known by the disputed domain name. Considering the above, and also for the reasons in section C below, in the Panel’s view, such use does not confer rights or legitimate interests on the Respondent. 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. According to the unrebutted assertions of the Complainant, its LEGO trademarks were widely used in commerce well before the registration of the disputed domain name and are well-known. The disputed domain name is confusingly similar with the Complainant’s trademarks. The website at the disputed domain name displays the Complainant’s LEGO trademark. Under these circumstances, the Panel considers that the Respondent knew or should have known that the disputed domain name consisted of the Complainant’s trademark when he registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed LEGO trademark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith.
page 5 As regards the use of the disputed domain name, from the evidence on file and not rebutted by the Respondent, it results that the disputed domain name redirects Internet traffic to a website offering for sale crypto tokens and displaying the LEGO trademark of the Complainant. Such use creates a false impression of an association with the Complainant. As the Respondent is not authorised by the Complainant to use the Complainant’s trademarks and is not associated with the Complainant in any way, such use is in bad faith. Moreover, the Respondent has not formally participated in this proceeding and has failed to rebut the Complainant’s contentions and to provide any evidence of actual or contemplated good faith use. The Panel finds that the Complainant has established the third element of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.1 /Mihaela Maravela/ Mihaela Maravela Sole Panelist Date: September 9, 2024 1The transfer of the disputed domain name shall be ordered without prejudice to any rights of the third-party holder of the TRUMP trademark in the disputed domain name.
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