LEGO Holding A/S v Vasilisa Ivanova

WIPO Case No. D2025-1053

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Holding A/S v. Vasilisa Ivanova

Case No. D2025-1053

1. The Parties

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

Sweden.

The Respondent is Vasilisa Ivanova, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <hogwartslego.com> 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 14, 2025.
On March 14, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On March 14, 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 18, 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 20, 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 21, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 10, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 14, 2025.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on April 17, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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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 based in Denmark, which is the owner of LEGO and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products.

The Complainant has subsidiaries and branches throughout the world and LEGO products are sold in more than 130 countries, including in the Russian Federation,

The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the Russian Federation where the Respondent appears to reside and elsewhere.

Only in the Russian Federation, the Complainant had registered the trademark LEGO, under no:

- 280003, registered on December 10, 2004;
- 42932, registered on December 10, 1971;

- 474693, registered on November 14, 2012.

Moreover, the Complainant is the owner of more than 6,000 domain names containing the term LEGO.

The Respondent registered the disputed domain name on November 28, 2024.

The disputed domain name appears to have been connected to a commercial website offering for sale the

LEGO Hogwarts Castle toy products.

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:

In respect of the confusing similarity of the disputed domain name with the Complainant s marks:

- The dominant part of the disputed domain name comprises the term “lego”, identical to the LEGO
trademark, registered by the Complainant as trademark and domain name in numerous countries all over the
world.
- The disputed domain name also comprises of the prefix “hogwarts”.
- The disputed domain name is a combination of Complainant’s LEGO trademark and the third party
HOGWARTS trademark which belongs to Complainant’s business partner Warner Bros., who has further
licensed Complainant to use the HARRY POTTER® trademark, and related trademarks including
HOGWARTS.
- The addition of the generic Top-Level Domain (gTLD) “.com” does not have any impact on the overall
impression of the dominant portion of the disputed.

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In respect of rights and legitimate interests of the Respondent to the disputed domain name:

- The Complainant has not found that the Respondent has any registered trademarks or trade names
corresponding to the disputed domain name.
- No license or authorization of any other kind, has been given by the Complainant to the Respondent, to use
the trademark LEGO.
- LEGO is a famous trademark worldwide and the Respondent cannot claim to have been using LEGO
without being aware of the Complainant’s rights to it.
- The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or
services. Instead, the Respondent has intentionally chosen a domain name based on a registered
trademark in order to generate traffic and income through a commercial website offering the LEGO Hogwarts
Castle toy products for sale.

- The Respondent is not an authorized reseller.

In respect of bad faith registration and use of the disputed domain name:

- It is the fame of the trademark that has motivated the Respondent to register the disputed domain name.
- The Respondent cannot claim to have been using the trademark LEGO without being aware of the
Complainant’s rights to it.
- The Complainant first tried to contact the Respondent on December 13, 2024, through a cease and
desist letter sent by e-mail, to which the Respondent replied stating that they will delete the website and not
use the disputed domain name, and also requested to be compensated for the fees paid for the disputed
domain name, but went silent after Complainant’s representative requested for documents of proof of
payment.
- By using the disputed domain name, the Respondent is not making a legitimate noncommercial or fair use

but is misleadingly diverting consumers possibly for commercial gain.

B. Respondent

Although properly summoned, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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 trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel further notes that the entirety of the mark is reproduced within the disputed domain name. As per Complainant’s submissions, it comprises the term “lego”, identical to the LEGO trademark, registered by the Complainant as trademark in numerous jurisdictions all over the world.

The disputed domain name also comprises of the prefix “hogwarts” which results in a combination of the
Complainant’s LEGO trademark and the third party HOGWARTS trademark which belongs to Complainant’s
business partner Warner Bros. Such combination does not prevent a finding of confusing similarity. WIPO
Overview 3.0, section 1.12.

Moreover, the addition of gTLD “.com” does not have any impact on the finding of confusing similarity in this case.

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Accordingly, the Panel concludes that the disputed domain name is confusingly similar to the LEGO
trademark for the purposes of the Policy (WIPO Overview 3.0, section 1.7.) and 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.

In this sense the Complainant submitted that:

- there are no registered trademarks or trade names corresponding to the disputed domain name in respect
of the Respondent.
- no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use
the trademark LEGO.
- LEGO is a famous trademark worldwide and the Respondent cannot claim to have been using LEGO
without being aware of the Complainant’s rights to it.
- The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or
services, but has intentionally chosen a domain name based on a registered trademark in order to generate
traffic and income through a commercial website offering the LEGO Hogwarts Castle toy products for sale.
- The Respondent is not an authorized reseller and the criteria of Oki Data are not met (See Oki Data
Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

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.

Further, the Panel notes that as no evidence has been found that the Respondent is using the name “lego” as a company name or has any other legal rights in the name, it is a strong indication that the Respondent is simply trying to benefit from the Complainant’s world-famous trademark, by conveying the false impression that the Respondent is authorized to use the Complainant’s trademark. Such conveying cannot be considered a bona fide offering of goods and cannot create rights or legitimate interests in the disputed domain name.

Accordingly, 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, given the well-known character of the LEGO trademark and the use of the disputed domain name, the Panel notes that the Respondent has intentionally targeted the Complainant and its famous trademark, to intentionally attempt to attract Internet users to websites 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.

As this Panel cannot conceive other plausible purposes for registration and use of the disputed domain
name than intentionally targeting the disputed domain name, the Panel finds that the Respondent was aware
of the rights the Complainant has in the trademark, and the value of said trademark, at the point of the
registration and target it for misleadingly diverting consumers possibly for commercial gain.

Accordingly, having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under 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 <hogwartslego.com> be transferred to the Complainant.

/Dr. Beatrice Onica Jarka/
Dr. Beatrice Onica Jarka
Sole Panelist
Date: May 1, 2025