LEGO Holding A/S v Hayden Renee

WIPO Case No. D2025-0496

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Holding A/S v. Hayden Renee

Case No. D2025-0496

1. The Parties

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

Sweden.

The Respondent is Hayden Renee, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <legoxvt.com> is registered with Hongkong Kouming International Limited (the

“Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2025. On February 11, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On February 18, 2025, the Center informed the Parties in Chinese and English, that the language of the
Registration Agreement for the disputed domain name is Chinese. On February 19, 2025, the Complainant
submitted the amended Complaint in English, requesting that English be the language of the proceeding.

The Respondent did not submit any comment on the Complainant’s submission.

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 in English and Chinese, and the proceedings commenced on February 21, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2025.

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The Center appointed Jonathan Agmon as the sole panelist in this matter on March 18, 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 the owner of the LEGO trademark used in connection with construction toys and other
products. The Complainant’s licensees are authorised to exploit the Complainant’s intellectual property
rights worldwide, including the United States, and the European Union. The Complainant has subsidiaries
and branches all over the world, and products bearing the LEGO mark are sold in over 130 countries
worldwide. The Complainant’s LEGO trademark is one of the best-known trademarks worldwide, in part due
to the Complainant’s extensive advertising and sales. The Complainant’s LEGO brand has been listed as
one of the top 10 consumer super-brands in 2019 by Superbrands UK. Amongst others, the Complainant has
also been recognized as number one on the list of the World’s Top 10 Most Reputable Global Companies of

2020 by the Reputation Institute.

The Complainant is the owner of numerous trademarks for LEGO worldwide, including:

- United States trademark registration no. 1018875 for LEGO, registered on August 26, 1975;

- European Union trademark registration no. 000039800 for LEGO, registered on October 5, 1998; and

- China trademark registration no. 75682 for LEGO, registered on December 22, 1976.

In addition to the above, the Complainant owns numerous other LEGO trademarks worldwide.

The Complainant maintains its website at the domain name <lego.com>, registered on August 22, 1995.

The disputed domain name was registered on December 24, 2024. It resolved to a webpage that prominently displayed the Complainant’s LEGO trademark, utilized the Complainant’s color scheme, and purportedly offered for sale the Complainant’s goods at a discount. At the time of filing the Complaint, it displayed a security warning, then resolved to an inactive webpage displaying a rendering error.

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 identical or confusingly similar to the LEGO trademark in which the

Complainant has rights. The fame of the trademark has been confirmed in numerous previous UDRP decisions. In addition to the trademark LEGO, the disputed domain name also comprises the letters “xvt” which does not diminish the confusing similarity between the disputed domain name and Complainant’s trademark. The addition of the generic Top Level Domain “.com” also does not have any impact on the overall impression of the disputed domain name. The Respondent’s website prominently displayed the Complainant’s LEGO mark, and purported to offer the Complainant’s products for sale at an extreme discount. This is evidence that the disputed domain name is confusingly similar to the Complainant’s trademark.

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- The Complainant has not found that the Respondent has any registered trademarks or trade names

corresponding to the disputed domain name. Neither has the Complainant found anything, including the give them any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by common usage. No license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO. There is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent has not registered any trademarks or trade names that correspond to the disputed domain name. The Respondent has not been licensed or authorised by the Complainant to use the Complainant’s LEGO trademark. The Respondent is also not an authorised dealer of the Complainant’s products, and has never had a business relationship with the Complainant. The Respondent also has not been using the disputed domain name in a bona fide way that that would give him any legitimate rights in the disputed domain name. As such, the Respondent is simply trying to benefit from the Complainant’s world famous trademark. The disputed domain name resolved to a website that impersonated the Complainant’s own website, displayed the LEGO trademark, and offered the Complainant’s goods for sale as highly discounted prices. However, it later resolved to a website displaying a rendering error, after displaying a security warning. This suggests that the disputed domain name was being used for phishing purposes.

- The disputed domain name was registered and is being used in bad faith. The Complainant’s LEGO mark is well-known and reputable trademark with substantial and widespread goodwill throughout the world. The Respondent registered the disputed domain name long after the Complainant registered the LEGO

trademark. The Complainant believes that it is obvious that the fame of the LEGO trademark motivated the could not have registered the disputed domain name without being aware of the Complainant’s LEGO trademark. The disputed domain name resolved to a website that displayed the Complainant’s LEGO trademark, and offered for sale, goods bearing the Complainant’s LEGO trademark. The Complainant believes that the Respondent was using the disputed domain name to intentionally attempt to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s LEGO mark. The disputed domain name currently resolves to a website that displays a rendering error but still appears to be commercial. However, visiting the disputed domain name results in a security prompt that warns Internet users of potential phishing. This is evidence that the disputed domain name is being used for nefarious purposes.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issue: Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in the English language. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that:

- The Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter;

- It would unduly burden the Complainant to have to arrange and pay for translation services;

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- Additional delay to the proceedings poses continuing risk to Complainant and unsuspecting

consumers seeking Complainant or its products;

- The disputed domain name is comprised of Latin characters;

- The website found at the disputed domain name featured no content in the Chinese language;

- The term LEGO, which is the dominant portion of the disputed domain name, does not carry any

specific meaning in the Chinese language; and

- The Respondent is based in the United States, an English-speaking country. Considering that neither

the Complainant nor the Respondent are based in China, and there is no evidence to suggest the in the language of the proceedings being another language besides the English language.

The Respondent did not make any specific submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2 Substantive Issues

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 3.0, section 1.7.

The Complainant has shown clear 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 another term here, “xvt”, 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.

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

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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.

There is no evidence to suggest that the Respondent is commonly known by the disputed domain name. The Complainant’s registration of its LEGO trademark long predates the registration of the disputed domain name. The disputed domain name resolved to a website prominently displaying the Complainant’s LEGO trademark, utilizing the Complainant’s color scheme, and purportedly offering goods for sale under the Complainant’s LEGO trademark at discounted prices. The Respondent’s actual contact details are not provided anywhere on the website.

There is no evidence that the Respondent is using or preparing to use the disputed domain name for any legitimate purpose. The fact that at the time of filing the Complaint, the disputed domain name displayed a security warning before resolving to an inactive website displaying a rendering error supports the notion that the Respondent was not making a legitimate use of the disputed domain name.

Panels have held that the use of a domain name for illegitimate or illegal activity here, claimed as applicable to this case: impersonation/passing off, or phishing, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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 registered the disputed domain name a very long time after the Complainant registered its LEGO trademark. Given the specific use the Respondent was making of the Complainant’s LEGO trademark and color scheme, including the offering for sale of goods under that trademark similar to those sold by the Complainant, and the considerable notoriety of the LEGO trademark, it is highly unlikely that the Respondent was not aware of the Complainant and its trademark prior to the registration of the disputed domain name. The Respondent also provided what appears to be false contact details when registering the disputed domain name, which is further evidence of bad faith.

The fact that at the time of filing the Complaint, the disputed domain name displayed a security warning before resolving an inactive webpage does not detract from the Respondent’s bad faith.

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 held that the use of a domain name for illegal activity here, claimed as applicable to this case: impersonation/passing off, or likely phishing constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name

constitutes bad faith under the Policy.

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Panels have found that the non-use of a domain name would not prevent the 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 and significant reputation of the Complainant’s famous trademark, the composition of the disputed domain name, and the prior use of the disputed domain name in connection with an impersonation website, 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 notes that the delivery of the documents from the Center was unsuccessful due to the

Respondent providing false contact details to the Registrar. As noted earlier, this is evidence of bad faith.

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 <legoxvt.com> be transferred to the Complainant.

/Jonathan Agmon/
Jonathan Agmon
Sole Panelist
Date: April 1, 2025