ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Muhammed Melih TAN, LegoToyx Case No. D2024-4102 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. The Respondent is Muhammed Melih TAN, LegoToyx, Türkiye. 2. The Domain Name and Registrar The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2024. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 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 (Contact Privacy Inc. Customer 0171378750) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 17, 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 October 23, 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 October 24, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2024.
page 2 The Center appointed Dawn Osborne as the sole panelist in this matter on November 22, 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, based in Denmark, is the owner of the trade mark LEGO registered, inter alia, as Canadian trade mark registration 0236250 for toys since April 26, 1957. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trade mark rights, in Canada, Türkiye and elsewhere. Over the years, the business of making and selling LEGO branded toys has grown significantly. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Türkiye where the Respondent is reportedly based. The LEGO trade mark is among the best-known trade marks in the world, due in part to decades of extensive advertising, which depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. The Lego Group has expanded its use of the LEGO trade mark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Lego Group maintains a website under the domain name . The disputed domain name was registered on June 5, 2024, and has been used to offer for sale competing products including versions of Complainant’s own products. In correspondence with the Complainant the Respondent said that “lego was not created with the group in mind. As a complete Minecraft lover, I founded my own toy store. I wanted to make a world made of pieces inspired by Minecraft”. The Complainant offers Minecraft products . The disputed domain name currently points to a shopify holding page. 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 name. Notably, the Complainant contends that: The disputed domain name registered in 2024 is confusingly similar to the Complainant’s well-known prior LEGO trade mark adding only the suffix “toyx” - likely intended to be read together as a misspelling of toys - and the generic Top Level Domain “.com”, none of which prevents said confusing similarity. The Respondent does not have any rights or legitimate interests in the disputed domain name, is not commonly known by it and is not authorised by the Complainant. The disputed domain name has been used to suggest a false affiliation with the Complainant, including for a web site offering competing products including a counterfeit version of a toy car sold by the Complainant. In correspondence with the Complainant the Respondent said the disputed domain name was to be used for “pieces inspired by Minecraft”. The disputed domain name currently points to a shopify holding page. These uses are not a bona fide offering of goods or services or a noncommercial or legitimate fair use.
page 3 This use by the Respondent is registration and use in bad faith misleading Internet users for commercial gain and disrupting the Complainant’s business. The Respondent offered to transfer the disputed domain name to the Complainant for USD 30, but failed to do so after the Complainant agreed subject to provision of the Respondent’s receipt for purchase of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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 trade mark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trade mark or service mark 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. Although the addition of other terms here, the word ‘toy’ and the letter ‘x’ may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. 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 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.
page 4 The Complainant has not authorised the Respondent to use its mark. The Respondent does not appear to be commonly known by the disputed domain name despite the appearance of the Complainant’s mark in the WhoIs details. The WhoIs details appear to be another way the Respondent seeks to affiliate itself with the Complainant. The web site attached to the disputed domain name uses the Complainant's mark to offer competing toys. The site does not make it clear that there is no commercial connection with the Complainant and is confusing. As such it cannot amount to the bona fide offering of goods and services. WIPO Overview 3.0, section 2.5.3. 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. In the present case, the Panel notes that the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers competing toys. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site or products on it likely to disrupt the business of the Complainant. WIPO Overview 3.0, Section 3.1.4 The disputed domain name currently points to a “shopify” holding page. 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. Panels have found that the non-use of a domain name (including a holding page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trade mark, and the composition of the disputed domain name, and finds that in the circumstances of this case the current passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. 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. /Dawn Osborne/ Dawn Osborne Sole Panelist Date: December 3, 2024
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