LEGO Juris A/S v Ali Hakimsima

WIPO Case No. DIR2023-0012

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Ali Hakimsima

Case No. DIR2023-0012

1. The Parties

The Complainant is LEGO Juris A/S, Denmark, represented CSC Digital Brand Services Group AB, Sweden.

The Respondent is Ali Hakimsima, Iran (Islamic Republic of).

2. The Domain Name and Registry

The disputed domain name <tehran-lego.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2023. On October 17, 2023, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On October 21, 2023, IRNIC 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 (N/A) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 23, 2023, providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same day.

The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 24, 2023. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2023. The Respondent did not submit any response. Therefore, on November 14, 2023, the Center notified the Respondent’s default.

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The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 19, 2023.
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 in this administrative proceeding is LEGO Juris A/S, a company incorporated in Denmark.

The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States of America (“United States”) and the European Union. The LEGO trademark and brand have been recognized as being famous.

The Complainant has numerous registrations for the LEGO trademark around the world. The Complainant
is, inter alia, the owner of Iranian trademark LEGO (word), registration number 25637, registered on July 11,

1964.

In addition, the Complainant is the owner of close to 5,000 domain names containing the trademark LEGO.

The disputed domain name was registered on March 28, 2022.

The disputed domain name redirects to a website, in Farsi, offering LEGO-branded goods.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the
Policy require that the Complainant must demonstrate to the Panel that:

(i)        The disputed domain name is 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 name; and

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

A. Identical or Confusingly Similar

The Complainant has established rights in the LEGO trademark.

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The disputed domain name consists of the LEGO trademark with the addition of a “-” and the geographical
term “Tehran”. This Panel agrees with the Complainant’s assertion that the addition of the geographical term
“Tehran” and “-” in the disputed domain name is irrelevant in countering the confusing similarity between the
Complainant’s renowned LEGO trademark and the disputed domain name.

Therefore, the Panel finds the disputed domain name to be confusingly similar to the LEGO trademark in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name, and the burden of production of evidence shifts to the Respondent. The composition of the disputed domain name carries a risk of implied affiliation with the Complainant. The Respondent has no connection or affiliation with the Complainant and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In fact, it appears that the Respondent is using the disputed domain name to direct Internet users to an unauthorised website offering LEGO-branded products, and presenting copyrighted imagery of the Complainant’s products. The Panel notes that the composition and use of the disputed domain name creates a likelihood of confusion as to the Respondent’s relationship with the Complainant (where there is none). In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered or Used in Bad Faith

Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the LEGO mark when it registered the disputed domain name.

The Complainant’s LEGO trademark is one of the most renowned trademarks in the world and has been registered and in use for decades. The renown of the Complainant’s trademark has already been acknowledged in numerous previous UDRP decisions.

The Respondent’s use of the disputed domain name for an unauthorised website offering LEGO-branded products, and presenting copyrighted imagery of the Complainant’s products, is further inference that the Respondent knew of the Complainant’s trademark and activity.

Consequently, it appears, on the balance of probability, that the Respondent registered the disputed domain name while aware of the Complainant’s trademark and activity, and did so with the intention of creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of either the Respondent and/or the disputed domain name.

This constitutes bad faith registration and use under the Policy.

Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.

Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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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, <tehran-lego.ir>, be transferred to the Complainant.

/Fabrizio Bedarida/
Fabrizio Bedarida
Sole Panelist
Date: November 29, 2023