LEGO Holding A/S v John Deecon, TrafficDomains INC

WIPO Case No. D2025-0497

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Holding A/S v. John Deecon, TrafficDomains INC

Case No. D2025-0497

1. The Parties

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

Sweden.

The Respondent is John Deecon, TrafficDomains INC, Poland.

2. The Domain Names and Registrar

The disputed domain names <lego-dubaipark.com>, <legoland.monster> and <ydelego.cyou> are registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2025. connection with the disputed domain names. On February 9, 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.

The Center verified that the 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 February 14, 2025. In accordance with the Rules,
paragraph 5, the due date for Response was March 6, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 7, 2025.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 14, 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.

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4. Factual Background

The Complainant uses the LEGO trademark to identify inter alia construction toys, computer hardware and software, books, videos and computer controlled robotic construction sets.

The Complainant is the owner of hundreds of trademark registrations for LEGO and LEGOLAND around the world (Annex 3 to the Complaint) amongst which:

- European Union trademark registration No. 000039800 for LEGO, registered on October 5, 1998,

subsequently renewed;

- European Union trademark registration No. 000054205 for LEGOLAND, registered on October 5,

1998, subsequently renewed;

- United Kingdom trademark registration No. UK00000844309 for LEGO, registered on January 25,

1963, subsequently renewed; and

- Canadian trademark registration No. TMA106457 for the word mark LEGO, filed on June 14, 1956,

registered on April 26, 1957, and subsequently renewed.

The disputed domain names are the following:

Disputed domain name	Registration Date	Use
<lego-dubaipark.com>	November 1, 2024	No active webpage.
<legoland.monster>	October 17, 2024	No active webpage.
<ydelego.cyou>	January 30, 2023	No active webpage.

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 names.

Notably, the Complainant asserts to own one of the best-known trademarks in the world, having been ranked number 1 at the top 20 Consumer Superbrands for 2019 by Superbrands United Kingdom in the category “Child Products – Toys and Education” (Annex 6.1 to the Complaint), as well as having been announced by Time as the “Most Influential Toy of All Time” (Annex 6.3 to the Complaint). The Complainant further asserts that its group sells LEGO products in more than 130 countries, having the LEGO trademark acquired substantial inherent distinctiveness, deserving the special protection awarded to well-known trademarks foreseen in the Paris Convention and the TRIPs Agreement. Moreover, the Complainant asserts that the LEGOLAND trademark is being used by the LEGO Group regarding for example, theme parks, hotels, entertainment, sporting and cultural activities.

According to the Complainant, the disputed domain name <legoland.monster> comprises solely of the identical registered LEGOLAND trademark, whereas the two other disputed domain names comprises the registered and very well-known trademarks LEGO and the addition of “dubaipark” and “yde” do not diminish the confusing similarity between the disputed domain names and the Complainant’s trademark.

As to the absence of rights or legitimate interests, the Complainant argues that:

(i)        it has not found any trademarks or trade names registered by the Respondent corresponding to the

disputed domain names, nor has it found anything that would suggest the Respondent’s legitimate interests
or rights in the disputed domain names;

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(ii)       no license or authorization of any kind has been given by the Complainant to the Respondent to

register the disputed domain names, not ever having the Respondent been in a business relationship with
the Complainant; and

(iii)      the Respondent is not using the disputed domain names in connection with a bona fide offering of

goods or services given that it has failed to make use of the disputed domain names and has not
demonstrated any attempt to make legitimate use of the disputed domain names, which evinces a lack of
rights or legitimate interests in the disputed domain names, as confirmed by numerous past panels.

Lastly, the Complainant points out that given the fame of the LEGO trademark worldwide the Respondent chose the disputed domain names to attract visitors to websites to generate traffic and income, not being the present passive holding of the disputed domain names capable of eluding the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)       the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii)      the disputed domain names have been registered and are being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain names transferred to it, according to paragraph 4(a) of the Policy.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

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 trademarks 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 marks LEGO and LEGOLAND are recognizable within the disputed domain names.
Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.7.

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 non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain names. These circumstances are:

(i)        before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the

disputed domain names or a name corresponding to the disputed domain names in connection with a bona
fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or

(iii)      the Respondent is making a legitimate noncommercial or fair use of the disputed domain names,

without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service
mark at issue.

The Panel notes that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production has therefore shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

In addition to that, the Complainant indeed states that no authorization, license, permission or consent was granted for the use of LEGO or LEGOLAND in the disputed domain names.

Furthermore, the absence of any trademarks registered by the Respondents corresponding to the disputed domain names corroborates with the indication of the absence of a right or legitimate interest.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.

The second element of the Policy has also been met.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain names

primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant who is the
owner of a trademark relating to the disputed domain names or to a competitor of the Complainant, for
valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the
disputed domain names; or

(ii)       the Respondent has registered the disputed domain names in order to prevent the owner of the

trademark or service mark from reflecting the mark in a corresponding domain name, provided that the
Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

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(iv)      by using the disputed domain names, the Respondent has intentionally attempted to attract, for

commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of
confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the
Respondent’s website or location or of a product or service on the Respondent’s website or location.

The registration and use of the disputed domain names in bad faith can be found in the present case in view of the following circumstances:

(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names;

(ii)       the well-known status of the Complainant’s trademarks and the nature of the disputed domain names;

(iii)      the inactive use of the disputed domain names; and

(iv)      the indication of a faulty address in the WhoIs data and, consequently, the Center not being able to

have the Written Notice fully delivered to the Respondent.

For the reasons stated above, the Panel finds that the disputed domain names were registered and are being used in bad faith. The third element of the Policy has therefore been met.

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 names <lego-dubaipark.com>, <legoland.monster> and <ydelego.cyou> be transferred to the Complainant.

/Wilson Pinheiro Jabur/
Wilson Pinheiro Jabur
Sole Panelist
Date: March 25, 2025