ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Loftuch Cheeck, Whois Agent, Netlify Inc Case No. D2024-3760 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. The Respondents are Loftuch Cheeck, Republic of Serbia (“First Respondent”) and Whois Agent, Netlify Inc, United States of America (“United States”) (“Second Respondent”). 2. The Domain Names and Registrars The disputed domain name is registered with Name.com, Inc. The disputed domain name is registered with NameCheap, Inc. Name.com, Inc. and NameCheap, Inc. are separately and collectively referred to below as the “Registrar”. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2024. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 16, 2024 and September 18, 2024, the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for the disputed domain names that differed from the named Respondents (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf, and Non-Public Data, Netlify Inc) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 18, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant either to file separate complaints for the disputed domain names associated with different underlying registrants or, alternatively, to 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 September 20, 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”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on September 26, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2024. The Center appointed Matthew Kennedy as the sole panelist in this matter on October 28, 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 produces construction toys and other products. It holds multiple trademark registrations in multiple jurisdictions, including United States trademark registration number 1018875 for LEGO, registered on August 26, 1975, with a claim of first use in commerce on June 4, 1953, specifying goods in class 28. That trademark registration is current. The Complainant has also registered the domain name that it uses in connection with a website where it offers its products for sale. The website prominently displays the LEGO mark in a fancy script (the “LEGO logotype”) on a red background. The First Respondent is the registrant of the disputed domain name . He is identified in the Registrar’s WhoIs database as an individual with contact details that are manifestly false. The Second Respondent is the registrant of the disputed domain name . It is the name of a cloud computing company (which may or may not be the actual beneficial registrant). The disputed domain names were both registered on June 18, 2024. According to evidence presented by the Complainant, they have both resolved to a website displaying an image of a minifigure of Donald Trump and a model of the White House, both apparently constructed from LEGO toys. The title of the website, “LEGO TRUMP”, is displayed in the LEGO logotype on a red background. The website displays hyperlinks to two social media platforms and two cryptocurrency price tracking platforms. The Complainant sent cease-and-desist letters to the privacy service used by the First Respondent by email on July 3, 2024, with follow-up emails on July 10 and July 17, 2024. At the time of this Decision, the disputed domain name continues to resolve to the same website. However, the disputed domain name no longer resolves to any active website; rather, it is now passively held. 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 the disputed domain names are confusingly similar to its LEGO mark. The Respondents have no rights or legitimate interests in respect of the disputed domain names. No license or authorization of any other kind has been given by the Complainant to the Respondents to use the trademark LEGO. The disputed domain names were registered and are being used in bad faith. B. Respondents The Respondents did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings 6.1 Consolidation: Multiple Respondents The amended Complaint was filed in relation to two nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or under common control. The Complainant requests the consolidation of the Complaint against the two disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name 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 associated 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 were registered on the same day (within 15 minutes of each other), their composition is similar (differing only in the addition of “sol” in one and their respective generic Top-Level Domain (“gTLD”) extensions), and they have been used to resolve to the same website. In view of these circumstances, the Panel is persuaded that the disputed domain names 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. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different domain name registrants (referred to below as “the Respondent”) in a single proceeding. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements with respect to each disputed domain name: (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. See WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of the LEGO trademark for the purposes of the Policy. See WIPO Overview 3.0, section 1.2.1.
page 4 The disputed domain names both incorporate the LEGO trademark as their respective initial elements. After the LEGO mark, they both add “trump”, which is a family name and a third-party trademark.1 One of the disputed domain names () also adds “sol” which is, among other things, a cryptocurrency code. Despite these additions, the LEGO mark remains recognizable within both disputed domain names. The only additional element in each disputed domain name is a gTLD extension (either “.com” or “.wtf”). Accordingly, the disputed domain names are confusingly similar to the LEGO mark for the purposes of the Policy. See WIPO Overview 3.0, sections 1.7, 1.8, 1.11.1, and 1.12. Therefore, 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. See WIPO Overview 3.0, section 2.1. In the present case, the disputed domain names resolve, or formerly resolved, to a website displaying what appeared to be the Complainant’s construction toys, under a title that included the Complainant’s LOGO mark (combined with “TRUMP”) displayed in the Complainant’s LEGO logotype. This gave the impression that the website may have been affiliated with, or endorsed by, the Complainant. However, the Complainant submits that it has not given any license or authorization to the Respondent to use the LEGO trademark. The website displayed hyperlinks to commercial websites. This use is for the commercial gain of the Respondent, if it is paid to direct traffic to the linked websites, or the commercial gain of the operators of the linked websites, or both. In these circumstances, the Panel finds that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, nor making a legitimate noncommercial or fair use of the disputed domain names. Further, the Respondent is identified in the Registrar’s WhoIs database as “Loftuch Cheeck” and “Whois Agent, Netlify Inc”. Nothing indicates that the Respondent has been commonly known by the disputed domain names. 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. Based on the record, the Panel finds the second element of the Policy has been established. 1United States trademark registration number 4,874,427 for TRUMP, registered on December 22, 1995 and in force.
page 5 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. The fourth of these is as follows: “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.” The disputed domain names were registered in 2024, years after the registration of the Complainant’s LEGO mark. The disputed domain names wholly incorporate that mark, adding the name and a third-party trademark (“TRUMP”) and, in one case, “sol”, plus a gTLD extension. The disputed domain names resolve, or formerly resolved, to a website displaying what appeared to be the Complainant’s construction toys, under a title that displayed the Complainant’s LEGO mark (combined with “TRUMP”) in the Complainant’s LEGO logotype. Accordingly, it is clear that the Respondent registered the disputed domain names with the Complainant’s LEGO mark in mind. As regards use, the disputed domain names resolve, or formerly resolved, to a website displaying what appeared to be the Complainant’s construction toys, under a title that displayed the Complainant’s LEGO mark (combined with “TRUMP”) in the Complainant’s LEGO logotype, giving the false impression that it may have been affiliated with, or endorsed by, the Complainant. For the reasons given in Section 6.2B above, this use was for commercial gain. Accordingly, the Panel finds that the facts fall within the terms of paragraph 4(b)(iv) of the Policy. The Panel takes note that the use of the disputed domain name has changed and that it is now passively held. This change in use does not prevent a finding of bad faith; if anything, it may be a further indication of bad faith. Therefore, 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 names and be transferred to the Complainant. /Matthew Kennedy/ Matthew Kennedy Sole Panelist Date: November 6, 2024
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