LEGO Juris A/S v Carolina Rodrigues, Fundacion Comercio Electronico

WIPO Case No. D2024-3813

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2024-3813

1. The Parties

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

Sweden.

The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <legogroupsharepoint.com> is registered with GoDaddy.com, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2024. On September 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 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 (Registration Private, Domains By Proxy, LLC, DomainsByProxy.com) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 20, 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 September 25, 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 September 30, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2024.

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The Center appointed Zoltán Takács as the sole panelist in this matter on November 1, 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

The Complainant is a Danish company founded in 1932 by Ole Kirk Kristiansen.

The Complainant is a manufacturer of the Lego branded toys, consisting mostly of interlocking plastic bricks with its products selling in more than 130 countries.

The Complainant is owner of an extensive portfolio of trademarks consisting of or comprising the term “lego” and/or the signature Lego logo, including the International Trademark Registration No. 287932 for the word mark LEGO registered since August 27, 1964.

The Complainant also owns numerous domain name registrations that include its LEGO mark. For example, the domain name <lego.com>, which was registered on August 22, 1995, resolves to the Complainant’s corporate website.

The disputed domain name was registered on June 5, 2024, and has been resolving to a website displaying sponsored links.

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 the disputed domain name, which incorporates its LEGO mark is confusingly similar to its mark because the addition of the terms “group”, “share” and “point” is not sufficient to distinguish the disputed domain name from its mark.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. Due to the famous status of its mark, it is inconceivable that the Respondent did not have actual knowledge of it at the time of registration of the disputed domain name, which it chose to register in order to unlawfully benefit from the recognition attached to its mark through a website displaying sponsored links.

The Complainant also contends that the Respondent has engaged in a bad faith pattern of cybersquatting as determined by a number of UDRP panels.

The Complainant requests that the disputed domain name be transferred from the Respondent to the

Complainant.

B. Respondent

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

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6. Discussion and Findings

In order to succeed on a complaint, a complainant must evidence each of the three elements required by paragraph 4(a) of the Policy, namely that:

(i) the 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 respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

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

The LEGO mark is reproduced and 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.

Although the addition of other terms, here “group”, “share” and “point” may bear on assessment of the second and third elements, the Panel finds that the addition of such terms 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.

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In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-
established prior rights in the LEGO mark. The Complainant has never authorized the Respondent to use its

LEGO mark, in a domain name, or otherwise.

There is no evidence that the Respondent is commonly known by the disputed domain name.

WIPO Overview 3.0, section 2.9.

The disputed domain name has been linked to a website displaying various pay-per-click (“PPC”) links. trades on reputation and goodwill associated with the Complainant’s mark.

The Panel finds that 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 a number of prior decisions under the UDRP established that the
Complainant’s LEGO mark is globally famous (see e.g., LEGO Juris A/S v. Michael Longo, WIPO Case No.
D2008-1715).

UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.

In view of the Panel the Respondent must have had actual knowledge of the Complainant’s famous mark at the time of registration of the disputed domain name. WIPO Overview 3.0, section and 3.2.2.

The Panel also notes that the Respondent has been found to have engaged in a pattern of cybersquatting
(see e.g., Starbucks Corporation v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues,
Fundacion Comercio Electronico, WIPO Case No. D2019-1991). The Panel considers that the pattern of
registering trademark-abusive domain names constitutes further evidence of the Respondent’s bad faith.

WIPO Overview 3.0, section 3.1.2.

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 <legogroupsharepoint.com> be transferred to the Complainant.

/Zoltán Takács/
Zoltán Takács
Sole Panelist
Date: November 11, 2024