LEGO Holding A/S v Grady Shah, legoproducts

WIPO Case No. D2025-1154

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Holding A/S v. Grady Shah, legoproducts

Case No. D2025-1154

1. The Parties

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

Sweden.

The Respondent is Grady Shah, legoproducts, United States of America (“United States” or “U.S.”).

2. The Domain Name and Registrar

The disputed domain name <legoproducts.com> is registered with Dominet (HK) Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2025. On March 20, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 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 (“TX/US”) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 24, 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 March 26, 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on March 26, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 15, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 16, 2025.

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The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on April 25, 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 a Danish company that produces and commercializes internationally construction toys and other products branded under the trademark LEGO, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant’s products are sold offline and online through its official website “ as well as through numerous authorized distributors and ecommerce platforms. Per the Complaint, the Complainant has subsidiaries and branches throughout the world, and its products are sold in more than 130 countries.

The Complainant owns multiple trademark registrations for LEGO, which provide protection in many jurisdictions including United States (where the Respondent is apparently located according to the Registrar verification). In this country, the Complainant owns, among other trademark registrations, United States Trademark Registration No. 1,018,875, LEGO, word, registered on August 26, 1975, in class 28.

Prior decisions under the Policy have recognized the international reputation and famous character of the

LEGO mark.1

The Complainant further owns numerous domain names comprising its trademark LEGO, including
<lego.com> (registered on August 22, 1995), which is linked to its corporate website and online shop for the
goods and services related to this brand.

The disputed domain name was registered on November 26, 2024, and it is currently apparently inactive resolving to an Internet browser “connection timed out” message. According to the evidence provided by the Complainant, the disputed domain name previously resolved to an active website, in English language, that purportedly commercialized various LEGO branded products, as well as other third parties unrelated

products. The prices of the products displayed at the site were provided in USD. This site prominently the disputed domain name, and it did not inform about its lack of relationship with the Complainant and its brand. At the bottom of the site, an address in Washington D.C, as well as two US telephone numbers, and an email address, were provided. The copyright note of the site indicated, “COPRIRIGHT © 2024 POWERED BY MUBAN”.

displayed, at its heading, the text “PromDreeses.com”, and included an image of three young models
wearing different color gowns with the legend “VISIT OUR LONDON MEGA STORE, 1000’s OF SHERRI

On December 11, 18, and 26, 2024, the Complainant sent a cease-and-desist letter and subsequent reminders to the Respondent through the email address provided at the bottom of its website, and through the Alibaba Cloud HiChina portal, with no reply.

1See, e.g., LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680; LEGO Juris A/S v. M. Moench, WIPO Case No.

DNL2009-0052; LEGO Juris A/S v. Kang Zheng, WIPO Case No. D2010-1924; LEGO Juris A/S v. Kim S J, WIPO Case No. D2014- 0884; LEGO Juris A/S v. Moshe Cohen / Funtasia Trade Ltd, WIPO Case No. D2019-2478; and LEGO Juris A/S v. Paul Clark, WIPO Case No. D2024-0383.

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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 its famous trademark, as it comprises the LEGO mark adding the word “products”, which increases the confusing similarity, and the generic Top-Level Domain (“gTLD”) “.com”, which has no relevance in the confusing similarity test. The content of the Respondent’s website corroborates this conclusion.

The Complainant further contends the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known and owns no trademark rights over the terms “lego” or “lego products”, and he has no authorization to use the LEGO mark. No evidence has been found that the Respondent is using any of these terms as a company name; he has no relationship with the Complainant and is not one of its authorized dealers. The Respondent has used the disputed domain name to generate traffic and income through an unauthorized website that did not comply with the Oki Data criteria (enunciated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903), because it did not disclose its lack of relationship with the Complainant, but falsely suggested an official character or relationship with the Complainant and the LEGO mark.

The Complainant finally contends the disputed domain name was registered and is being used in bad faith. The LEGO mark is worldwide famous and used, so the Respondent cannot claim to have been using this trademark, without being aware of the Complainant’s rights, and the Complainant repeatedly advised the Respondent of its rights through various cease-and-desist letters and communications. The Respondent has used 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, and the current apparent non-use of the disputed domain name does not cure his bad faith under the passive holding doctrine. It is not

conceivable any plausible legitimate use of the disputed domain name by the Respondent. The contact details provided in the WhoIs record are incomplete or false, which is further indication of the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed materials and allegations, and performing some limited independent research under the general powers of the Panel

articulated, inter alia, in paragraph 10 of the Rules.

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.

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The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy, namely the LEGO mark. WIPO Overview 3.0, section 1.2.1.

The entirety of the LEGO mark is reproduced and is recognizable 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 term “products”, 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.

Furthermore, as alleged by the Complainant, the gTLD “.com”, is viewed as a standard registration
requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview

3.0, section 1.11.

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. 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 the Respondent’s name revealed by the Registrar shares no similarity with the disputed domain name.

The Panel has further verified through a search in the Global Brand Database that, according to the
Complainant’s allegations, the Respondent owns no trademark rights over the terms included in the disputed
domain name, or any other term. The Respondent’s name does not reveal any result in the Global Brand
Database.2

The Panel further finds the disputed domain name generates an affiliation with the Complainant’s famous trademark. The fact that the disputed domain name incorporates the LEGO mark, adding a dictionary term (“products”) related to the Complainant’s activity as producer of construction toys and other products,

generates an implied affiliation or confusion that suggests the disputed domain name is owned or sponsored

2Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been

accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to
assessing the case merits and reaching a decision. WIPO Overview 3.0, section 4.8.

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by the Complainant or one of its many authorized distributors, subsidiaries, and retailers.

Additionally, the Panel notes that, according to the evidence provided by the Complainant, the disputed domain name has been used in connection to a website that purportedly commercialized several of the Complainant’s products, as well as promoted other unrelated products and prominently displayed a

reference to an online shop for gowns or prom dresses (“PromDresses.com”). This website further omitted any information about its owner or that of the disputed domain name, and its/their lack of relationship with the Complainant. These circumstances that generate a false affiliation with the Complainant and its trademark and unfairly take advantage of its famous character and reputation for a commercial gain, impede to have the Panel consider that the disputed domain name is being used in connection with a bona fide offering of goods or services under the Policy.

Panels have held a nominative fair use by resellers or distributors of a domain name containing the relevant mark may be considered a bona fide offering of goods or services and may be legitimate under certain circumstances outlined in the “Oki Data test” (in reference to Oki Data Americas, Inc. v. ASD, Inc., supra). However, these circumstances are not present in this case, as the website that was linked to the disputed domain name did not accurately and prominently disclose the lack of relationship with the Complainant, and it did not sell only LEGO branded goods, but, on the contrary, promoted and referred Internet users to an unrelated clothing online shop at “ WIPO Overview 3.0, section 2.8.

It is further remarkable the Respondent has chosen not to reply to the Complaint or to the various Complainant’s cease-and-desist communications, so he has not provided any evidence of any rights or legitimate interests in the disputed domain name. The Respondent’s reaction to such communications and to the Complaint seems to have been taking down the website originally linked to the disputed domain name.

Therefore, the circumstances of this case lead the Panel to conclude that nothing in the case file gives any reason to believe the Respondent has any rights or legitimate interests in respect of the disputed domain name.

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.

The Panel notes the extensive presence of the Complainant and the LEGO brand over the Internet, the reputation and famous character of this brand internationally, including in the United States where the Respondent is located according to the registrar verification; hence, the Panel finds inconceivable the Respondent acted in good faith without knowledge and intention of targeting the reputed mark. The use of the disputed domain name corroborates the targeting to the Complainant and its products for a commercial gain.

The Panel finds the facts of this case show the disputed domain name was registered and has been used targeting the Complainant’s famous LEGO mark in bad faith, in an effort to take unfair advantage of its reputation by creating a false affiliation to this brand for a commercial gain. The Respondent has used the disputed domain name to intentionally attempt to attract Internet users to its 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, which constitutes bad faith under the Policy.

The Panel further considers remarkable the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith; he has chosen not to reply to the Complaint, and apparently taking down the website that was linked to the disputed domain name.

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Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. The Panel notes that the website at the disputed domain name is currently inactive. Having reviewed the

available record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, and the
composition of the disputed domain name, which enhances the confusion/affiliation by adding the term
“products” (in reference to the Complainant’s LEGO branded products), and finds that, in the circumstances
of this case, the passive holding of the disputed domain name does not prevent a finding of bad faith under

the Policy.

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 name <legoproducts.com> be transferred to the Complainant.

/Reyes Campello Estebaranz/
Reyes Campello Estebaranz
Sole Panelist
Date: May 9, 2025