LEGO Holding A/S v Maysa Ribeiro

WIPO Case No. D2025-1170

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Holding A/S v. Maysa Ribeiro

Case No. D2025-1170

1. The Parties

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

Sweden.

The Respondent is Maysa Ribeiro, Brazil.

2. The Domain Name and Registrar

The disputed domain name <legomaclaren.com> is registered with PDR Ltd. d/b/a

PublicDomainRegistry.com (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 verif ication in connection with the disputed domain name. On March 24, 2025, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Domain Admin, Privacy Protect LLC (Privacyprotect.org)) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 25, 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 verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on March 28, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2025. The Respondent did not submit any response.

Accordingly, the Center notif ied 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 April 30, 2025. The Panel
f inds 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 (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 sof tware, books, videos and computer controlled robotic construction sets.

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

- the United States of America trademark registration no. 1018875 for LEGO (word), filed on September 17,

1974, and registered on August 26, 1975, for goods in the International Class 28;

- the Brazilian trademark no. 06707319 for LEGO (word), filed on January 29, 1974 and registered on June

25, 1978, for goods in the International Class 16; 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, 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 Complainant has partnered with McLaren Automotive for the past five years to produce and release the LEGO incarnation of McLaren cars. McLaren Automotive (directly or through its af f iliates) holds trademark rights for MCLAREN, such as the Brazilian trademark no. 818746442 filed on November 26, 2019, registered on June 23, 2020 for goods in the International Class 20.

The disputed domain name <legomaclaren.com> was registered on December 15, 2024 and, at the time of f iling the Complaint, it resolved to an error page. According to Annex 8 to the Complaint, the disputed domain name was previously used in connection with a website that offered the Complainant’s products - the LEGO McLaren construction set. No disclaimer or information regarding the website operator was displayed on the homepage of the website under the disputed domain name.

The Complainant sent a cease-and-desist letter to the Respondent on January 10, 2025, followed by several reminders. No reply was received.

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.

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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 captures and combines the Complainant’s LEGO trademark and a misspelling of the third-party trademark MCLAREN (adding the letter “a” to create “maclaren”), and the fact that the additional trademark is closely linked and associated with the Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the disputed domain name and the Complainant’s trademark.

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

Moreover, 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 across 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 to host a website that offers for sale the Complainant’s products, specifically offering for sale the Complainant’s LEGO McLaren product set #10330, suggests that the Respondent intended for the disputed domain name to be confusingly similar to the Complainant’s trademark as a means of furthering consumer confusion, to intentionally attempt to attract Internet users, looking for the Complainant’s mark and goods, to its website for commercial gain; the Respondent cannot claim bona fide use of the disputed domain name as a non-authorized reseller, primarily because the website under the disputed domain name does not accurately disclose the Respondent’s relationship with the Complainant; following the cease-and-desist letters sent by the Complainant, the content on the website under the disputed domain name was removed, which is further evidence to show the Respondent was aware that it was not using the disputed domain name in connection with a bona fide offering of goods and services, being clear that the Respondent’s primary intention was to profit from the false association with the Complainant’s brand.

B. Respondent

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

6. 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.

A. Identical or Confusingly Similar

It is well accepted that the f irst 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.

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While the addition of other term, here the misspelling of a third party’s trademark “maclaren” from the trademark MCLAREN, which belongs to the Complainant’s business partner McLaren Automotive, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a f inding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.8 and 1.12.

The Panel f inds the f irst 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 of ten 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.

According to the evidence provided in the Complaint, the disputed domain name was previously used to resolve to a website marketing LEGO McLaren products and displaying the Complainant’s mark and product images, without any accurate and prominent disclaimer regarding the Respondent’s lack of relationship with the Complainant. Even if the products were genuine, the lack of any accurate and prominent disclaimer on the website at the disputed domain name does not satisfy a bona fide offering of goods or services under the Policy. WIPO Overview 3.0, section 2.8. Internet users may believe that the website to which the disputed domain name resolved is owned by the Complainant or at least affiliated with the Complainant, contrary to the fact.

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 disputed domain name was registered in bad faith, with knowledge of the Complainant, its trademark and products, particularly because the disputed domain name incorporates the Complainant’s trademark and the trademark (slightly misspelled) of the Complainant’s business partner, and the use of the LEGO trademark predates the registration of the disputed domain name by more than 70 years and is distinctive and well-known worldwide. Furthermore, the previous use of the disputed domain name enhances such f inding.

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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.

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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, af f iliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location is evidence of registration and use in bad faith.

According to the evidence provided in Annex 8 of the Complaint, prior to receiving the cease-and-desist letters f rom the Complainant, the disputed domain name was used in connection with a commercial webpage promoting the Complainant’s LEGO McLaren products. Given that the disputed domain name incorporates the Complainant’s trademark together with a misspelling of its business partner’s trademark, the website operated under the disputed domain name displayed the Complainant’s LEGO mark and photos of of ficial LEGO McLaren products, and has no disclaimer. The Panel f inds that the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name who may be confused and believe that the website is held, controlled by, or somehow af f iliated with or related to the Complainant, for its commercial gain.

At the time of filing the Complaint, the disputed domain name resolved to an inactive page. UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a f inding of bad faith under the doctrine of passive holding. The Panel notes the distinctiveness and international reputation of the Complainant’s trademark; the composition of the disputed domain name together with its previous use; the Respondent’s failure to provide a response in this procedure or to the Complainant’s cease-and-desist letters; and f inds that, in the circumstances of this case, the passive holding of the disputed domain name does not prevent a f inding of bad faith under the Policy.

Moreover, 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.

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 <legomaclaren.com> be transferred to the Complainant.

/Marilena Comanescu /
Marilena Comanescu
Sole Panelist
Date: May 13, 2025