LEGO Holding A/S v I Flame

WIPO Case No. D2025-1169

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Holding A/S v. I Flame

Case No. D2025-1169

1. The Parties

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

Sweden.

The Respondent is I Flame, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <lego-cat.site> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2025.
On March 21, 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 (Redacted for Privacy, Privacy service provided by Withheld for
Privacy ehf) 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 28, 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 April 2, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2025.

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The Center appointed Marilena Comanescu as the sole panelist in this matter on May 1, 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. Further Procedural Considerations

Under paragraph 10 of the Rules, the Panel is required to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, and also that the administrative proceeding takes place with due expedition.

Since the Respondent’s mailing address is stated to be in Ukraine which is subject to an international conflict at the date of this Decision that may impact case notification, it is appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules, whether the proceeding should continue.

Having considered all the circumstances of the case, the Panel is of the view that it should. The Panel notes that the Respondent’s reported mailing address includes two street names in Kyiv which does not seem to exist. The Panel further notes, however, that the Center also sent the Notification of Complaint by email to the Respondent at its email address provided by the Registrar, as well as to the email address of the privacy service listed in the publicly available WhoIs database, and to the postmaster email address associated with the disputed domain name, as specified by the Rules. There is no evidence that the case notification emails to the first two email addresses were not successfully delivered.

It is moreover noted that, for the reasons which are set out later in this Decision, the Panel has no doubt
(albeit in the absence of any Response) that the Respondent registered and has used the disputed domain
name in bad faith and with the intention of unfairly targeting the Complainant’s goodwill in its trademark. The
Panel concludes that the Parties have been given a fair opportunity to present their case so that the
administrative proceeding should take place with due expedition. Therefore, the Panel will proceed to a

Decision accordingly.

5. Factual Background

The Complainant is LEGO Holding A/S (formerly LEGO Juris A/S), a worldwide known toymaker. LEGO branded products have been marketed and sold for decades in more than 130 countries worldwide, through authorized licensees. The Complainant has expanded its use of the LEGO mark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.

The Complainant holds numerous trademark registrations for LEGO, such as the following:

- the Icelandic trademark registration no. 247/1973 for LEGO (word mark), filed on April 26, 1973 and

registered on July 31, 1973, for goods in the International Class 28;

- the Ukrainean trademark no. 21669 for LEGO (figurative mark), filed on July 20, 1998 and registered on

November 15, 2001, for goods in the International Classes 14, 18, 24, and 25; and

- the International Trademark Registration no. 287932 for LEGO (word), registered on August 27, 1964, for
goods in International Class 28.

The LEGO trademark is among the best known trademarks in the world, with its well-known status being acknowledged on numerous occasions, such as the Consumer Superbrands 2019 listing LEGO as a top brand in various categories; the Reputation Institute listing the Complainant as the number one brand on the

list of the world’s Top 10 Most Reputable Global Companies of 2020 and applauded the Complainant’s

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strong reputation, having been on its top 10 list for 10 consecutive years; as well as by numerous previous

UDRP proceedings involving the Complainant.

The Complainant owns more than 6,000 domain names incorporating the mark LEGO, the main one being
<lego.com>.

The disputed domain name <lego-cat.site> was registered on November 9, 2024 and, at the time of filing the Complaint, it resolved to a commercial website purportedly offering crypto and NFT’s (non-fungible tokens), with a background featuring several images of interlocking plastic bricks and cats made of these bricks. No disclaimer or information related to the website operator was displayed on the homepage of the website at the disputed domain name.

The Complainant sent a cease-and-desist letter to the Respondent on November 29, 2024. Despite the reminders sent, no reply was received.

6. 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 LEGO is a well-known trademark, and that the trademark is distinctive and famous; the disputed domain name is confusingly similar to its trademark since it reproduces the LEGO mark, in addition to a hyphen and the suffix “cat”, which, in fact is closely linked and associated with the Complainant’s brand and mark since the Complainant offers for sale various toy products, including Tuxedo Cat and Playful Cat.

The Respondent has no rights or legitimate interests in the disputed domain name; the Respondent is not
an affiliated company or licensee of the Complainant, never had a business relationship with the
Complainant, nor is authorized in any way to use the Complainant’s LEGO trademark.

The Respondent has registered and is using the disputed domain name in bad faith; the LEGO trademark has the status of a well-known and reputed trademark with a substantial and widespread reputation through the world, in respect of toys, and was registered decades before the registration of the disputed domain name; the use of the disputed domain name in relation to a commercial website offering goods and services unrelated to the Complainant and without any disclaimer, is evidence that the Respondent is using the disputed domain name to intentionally attempt to attract Internet users, looking for the Complainant’s mark and goods, to its website for commercial gain.

B. Respondent

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

7. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities 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 the disputed domain name; and

(iii)      the disputed domain name has been registered and is being used in bad faith.

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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 Panel finds the mark 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.

While the addition of other term, here “cat” and a hyphen, 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 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 the composition of the disputed domain name, which incorporates the Complainant’s mark together with a term associated with the Complainant’s goods (the term “cat” might be associated with the Complainant’s toy-cat products), carries a risk of implied affiliation. UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. WIPO Overview 3.0, section 2.5.1.

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.

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In the present case, the Panel notes that the disputed domain name was registered in bad faith, with knowledge of the Complainant and its trademarks particularly because the disputed domain name is similar to the Complainant’s trademark, and the LEGO trademark predates the registration of the disputed domain name by more than 70 years and is distinctive and well-known worldwide, and display of images of interlocking plastic bricks and cats made of these bricks.

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.

According to the evidence provided in the Complaint, the disputed domain name was used in relation to a commercial webpage promoting crypto and NFT’s (non-fungible tokens), with a background featuring several images of interlocking plastic bricks and cats made of these bricks.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.

Given that the disputed domain name incorporates the Complainant’s well-known trademark, and the website operated under the disputed domain name as described above displays no disclaimer and no accurate information about the entity operating the website under the disputed domain name on its

homepage, indeed in this Panel’s view, the Respondent has intended to attract Internet users accessing the website corresponding to the disputed domain name who may be confused and believe that such website is held, controlled by, or somehow affiliated with or related to the Complainant, for the Respondent’s
commercial gain.

Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar to a widely known trademark by an unaffiliated entity can, by itself, create a presumption of bad faith for the purpose of Policy. WIPO Overview 3.0., section 3.1.4.

The Panel finds that the Complainant has established the third element of the Policy.

8. 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 <lego-cat.site> be transferred to the Complainant.

/Marilena Comanescu /
Marilena Comanescu
Sole Panelist
Date: May 14, 2025