ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Toy sotred Case No. D2024-3972 1. The Parties Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. Respondent is Toy sotred, United Arab Emirates. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2024. On September 27, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 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 (Registration Private, Domains by Proxy, LLC, DomainsbyProxy.com) and contact information in the Complaint. The Center sent an email communication to Complainant on October 1, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 3, 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 Respondent of the Complaint, and the proceedings commenced on October 4, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 25, 2024. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on October 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.
page 2 4. Factual Background Complainant is a company organized under the laws of Denmark that is the worldwide well-known producer of LEGO branded construction toys and related LEGO products. Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to its company name and brand LEGO, inter alia, but not limited to, the following: - word mark LEGO, United Arab Emirates (“UAE”), registration number: 252230, registration date: February 8, 2018, status: active; and - word mark LEGO, Denmark (“DK”), registration number: VR195400604, registration date: May 1, 1954, status: active. Moreover, Complainant has evidenced to own a vast number of domain names relating to its LEGO trademark, inter alia, the domain name which resolves to Complainant’s official website at “www.lego.com”, used to promote Complainant’s LEGO toy products and related services worldwide. Respondent, according to the disclosed WhoIs information for the disputed domain name, is located in the UAE. The disputed domain name was registered on May 12, 2024; by the time of the rendering of this decision, it resolves to a technically blocked website at “www.lego-danmark.com”, notifying Internet users that “Something went wrong.” and that “This store is unavailable”. Complainant, however, has demonstrated that at some point before the filing of the Complaint, the disputed domain name resolved to a website set up in the Danish language which offered LEGO toy products for online sale without any authorization by Complainant, thereby prominently displaying Complainant’s official LEGO logo. Complainant requests that the disputed domain name be transferred to Complainant. 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 name. Notably, Complainant contends that its LEGO trademark is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO trademark on all products, packaging, displays, advertising, and promotional materials. Complainant submits that the disputed domain name is confusingly similar to Complainant’s LEGO trademark, as it comprises the latter identically, and the geographically suffix “danmark” (Danish for “Denmark”) only serves to underscore and increase such confusing similarity. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name, since (1) no license or authorization of any other kind has been given by Complainant to Respondent to use the LEGO trademark, (2) Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant, and (3) Respondent does not meet the requirements under the Oki Data Test, as the website under the disputed domain name does not contain any visible disclaimer stating that such website is not endorsed or sponsored by Complainant to explain the non-existing relationship with the LEGO trademark holder. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith, because (1) Complainant’s LEGO trademark in respect of toys has a status of a well-known and reputable trademark with a substantial and widespread goodwill throughout the world, and it is obvious that such fame has motivated Respondent to register the disputed domain name, and (2) by prominently displaying Complainant’s LEGO trademark and logo on the unauthorized commercial website under the disputed domain name, Respondent was using the disputed domain name to intentionally attempt to attract Internet users to its website for commercial gain.
page 3 B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar First, 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of its LEGO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Also, the entirety of such trademark is reproduced within the disputed domain name, merely added by the geographical term “danmark” (Danish for “Denmark”). Accordingly, the disputed domain name is confusingly similar to Complainant’s LEGO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, the geographical term “danmark”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s LEGO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel, therefore, holds the first element of the Policy has been established. B. Rights or Legitimate Interests Second, paragraph 4(c) of the Policy provides a list of circumstances in which 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 Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted
page 4 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. In particular, Respondent has not been authorized to use Complainant’s LEGO trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “lego” on its own. To the contrary, the disputed domain name at some point resolved to a website at “www.lego-danmark.com”, which was set up in the Danish language and offered LEGO toy products for online sale without any authorization by Complainant, thereby prominently displaying Complainant’s official LEGO logo. Such making use of the disputed domain name neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of the Policy, not even so under the so-called “Oki Data” principles which would have required Respondent e.g., to accurately and prominently disclose on such website the non-existent relationship between Respondent and Complainant as the LEGO trademark holder, which Respondent obviously and quite to the contrary did not (see WIPO Overview 3.0, section 2.8). The Panel, therefore, finds the second element of the Policy has been established, too. C. Registered and Used in Bad Faith Third, 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 circumstances to this case leave no doubts that Respondent was fully aware of Complainant’s rights in the undisputedly famous LEGO trademark when registering the disputed domain name and that the latter is clearly directed thereto. Moreover, using the disputed domain name, which is confusingly similar to Complainant’s LEGO trademark, to run a website at “www.lego-danmark.com”, which was set up in the Danish language and offered LEGO toy products for online sale without any authorization by Complainant, thereby prominently displaying Complainant’s official LEGO logo, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s LEGO trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. In this context, it also carries weight in the eyes of the Panel that Respondent obviously provided false or at least incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier, the Written Notice on the Notification of Complaint dated October 4, 2024 could not be delivered. This fact at least throws a light on Respondent’s behavior which supports the Panel’s bad faith finding. The Panel, therefore, holds that Complainant has established the third element of the Policy, too. 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 Complainant. /Stephanie G. Hartung/ Stephanie G. Hartung Sole Panelist Date: November 4, 2024
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