LEGO Holding A/S v Brad Hernandez, Name Redacted

WIPO Case No. D2025-1347

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Holding A/S v. Brad Hernandez, Name Redacted

Case No. D2025-1347

1. The Parties

The Complainant is LEGO Holding A/S, Denmark, represented by CSC Digital Brand Services Group AB,

Sweden.

The Respondent is Brad Hernandez, Name Redacted[1].

[1] The Respondent appears to have used the name of a third-party organization when registering the disputed domain name. In light of

2. The Domain Name and Registrar

The disputed domain name <legomind.org> is registered with Tucows Domains Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2025. On April 3, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2025, 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 0173157254) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 4, 2025, 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 April 9, 2025.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 10, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2025.

The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on May 12, 2025. 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 is Lego Holding A/S, a Danish corporation doing business in more than 130 countries including Canada and Chile.

The Complainant has an extensive portfolio of trademarks for LEGO in different jurisdictions. By way of example:

Canadian Intellectual Property Office for LEGO, with registration number TMA106457, filed on June 14, 1956 and registered on April 26, 1957.

Instituto Nacional de la Propiedad Industrial for LEGO, with registration number 854586, filed on March 23,
2009 and registered on April 21, 2009.

The Complainant is also the owner of the DUPLO trademark in Chile with registration number 1301291, filed on November 13, 2018 and registered on July 12, 2019.

LEGO trademark is to be considered well known for UDRP purposes as it has been agreed in a large number of previous UDRP decisions.

The disputed domain name was registered on November 10, 2024, and resolved to a website displaying the products for sale. The disputed domain name is currently inactive.

The Complainant’s representatives sent three cease and desist letters to the Respondent, which remain unanswered.

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 is confusingly similar to the

Complainant’s trademark, as it comprises the LEGO trademark plus the term “mind”.

The Complainant also alleges that none of the circumstances depicted in paragraph 4 (c) of the Policy
applies in this case. In particular, no bona fide offering occurs as the Respondent did not comply with the
Oki Data test in full.

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Additionally, the Respondent has no registered trademarks or trade names corresponding to the disputed domain name. The Complainant has found no evidence suggesting that the Respondent has been commonly known by the disputed domain name.

Besides, the Complainant states that no license or authorization has been given to the Respondent to use the trademark LEGO. By connecting the disputed domain name to a commercial website, the Respondent is disrupting the Complainant’s business.

The Respondent was aware of the Complainant´s trademark rights when registering the disputed domain name and provided false contact information when registering the disputed domain name.

Finally, the Respondent through registration and use intended to pass off as the Complainant and/or defraud users via email since the Mail Exchange (“MX”) records were active.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

(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 was registered and is being used in bad faith.

There are no exceptional circumstances within paragraph 5(f) of the Rules to prevent the Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration.

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 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 trademark 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, “mind” 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 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.

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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.

The Panel notes that none of the circumstances described in paragraph 4(c) of the Policy can be inferred from the file.

Notably, the Panel finds that the Respondent is selling bricks under the LEGO trademark, yet does not comply with the Oki Data test. See WIPO Overview 3.0, section 2.8: where among other requirements, the site must accurately and prominently disclose the registrant’s relationship with the trademark holder. According to the file, the Respondent is using the Complainant’s mark seeking commercial gain while not complying with the Oki Data test as noted. Such use enhances the likelihood of confusion with the Complainant as to the origin or affiliation of the website at the dispute domain name and, therefore, no rights or legitimates interests are found in favor of 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.

In the present case, the composition of the disputed domain name coupled with a lack of disclaimer strengthen the conclusion that the Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark in the same terms as depicted in paragraph 4(b)(iv) of the Policy. That is to say, the disputed domain name bait the Internet users into a website which they might think is an official site of the Complainant when this is not the case.

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 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 trademark, the composition of the disputed

domain name and its previous use, 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.

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Besides, on balance, the Respondent knew or should have known about the Complainant and its trademarks when registering the disputed domain name due to their reputation and distinctiveness, and the previous use of the disputed domain name. This previous knowledge strengthens the conclusion that the registration was in bad faith.

The Panel also notes the absence of rights and legitimate interests of the Respondent, as well as the introduction of inaccurate data in the registration details for the disputed domain name, which together would support the conclusion of bad faith registration and use by the Respondent.

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 <legomind.org> be transferred to the Complainant.

/Manuel Moreno-Torres/
Manuel Moreno-Torres
Sole Panelist
Date: May 26, 2025

the potential identity theft, the Panel has redacted the Respondent’s organization name from this Decision. However, the Panel has
attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the
name of the Respondent organization. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in
these proceedings, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case.
See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.