Lego Juris A/S v Amar Brioue

WIPO Case No. D2024-2565

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. AMAR BRIOUE

Case No. D2024-2565

1. The Parties

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

Sweden.

The Respondent is AMAR BRIOUE, Morocco.

2. The Domain Name and Registrar

The disputed domain name <mercedeslego.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 June 24, 2024.
On June 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On June 25, 2024, 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 June 26, 2024, 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 June 26, 2024.

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 July 1, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2024.

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The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 2, 2024. 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

A. Complainant

The Complainant is a company incorporated in Denmark and the owner of the LEGO trade mark (the “Trade
Mark”) which is famous for its construction toys.

The Complainant is the owner of numerous registrations in jurisdictions worldwide for the Trade Mark, including international registration No. 287932, with a registration date of August 27, 1964, designating Morocco where the Respondent is located.

B. Respondent

The Respondent is located in Morocco.

C. The Disputed Domain Name

The disputed domain name was registered on March 28, 2024.

D. Use of the Disputed Domain Name

The disputed domain name was previously resolved to an English language website apparently promoting and offering for sale the Complainant’s Mercedes Technic products under the Trade Mark at discounted prices (the “Website”).

Following a cease and desist letter it was taken down, but it was then put back up.

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.

B. Respondent

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 trade mark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

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The Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced 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.

Although the addition of other terms (here, “mercedes”) 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.

Looking at both sections 2.5.1 and 2.8.1 of the WIPO Overview, the Panel notes that despite not being an
authorized reseller, the Website gives the impression that it is an official site, using logos and even
trademark symbols, and e.g., using phrases such as “At Mercedeslego, we are passionate about bringing the
excitement of motorsport to life through the world of LEGO® Technic™” and signing off as “The
Mercedeslego Team.” Even at the footer of the page, there is not only no disclaimer, but rather a statement
“All rights reserved Mercedes Lego” again giving the impression of an official site of the Complaint.

In all the circumstances, the Panel finds that the Respondent’s use of the Website to apparently offer for sale the Complainant’s products, under and by reference to the Trade Mark, at discounted prices – and without the authorization or approval of the Complainant – does not give rise to rights or legitimate interests in the disputed domain name for the purpose of the Policy. The fact the Website was taken down following the cease and desist letter, and was then put back up, underscores the lack of rights or legitimate interests.

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 light of the manner of use of the disputed domain name as set out above, the Panel finds that bad faith registration and use has been made out under paragraph 4(b)(iv) of the Policy. The Respondent clearly targeted the Complainant and the Trade Mark when registering and using the disputed domain name. Such bad faith is underscored by the fact the Website was taken down, only to be later put back up.

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 <mercedeslego.com> be transferred to the Complainant.

/Sebastian M.W. Hughes/
Sebastian M.W. Hughes
Sole Panelist
Date: August 13, 2024