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

WIPO Case No. D2023-0262

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

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

Case No. D2023-0262

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 <princesslego.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 January 20, 2023.

On the same day, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 23, 2023, 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 (Domains By Proxy, LLC, DomainsByProxy.com) and contact
information in the Complaint. The Center sent an email communication to the Complainant on January 24,
2023, 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

January 30, 2023.

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 paragraph 5, the due date for Response was February 20, 2023. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on February 21, 2023.

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The Center appointed Tuukka Airaksinen as the sole panelist in this matter on February 24, 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 is the owner of the trademark LEGO, which is among the best-known trademarks in the world for toys. It has been registered in several jurisdictions all over the world, such as in Panama under registration No. 23428 as of June 11, 1979.

The disputed domain name was registered on May 24, 2022 and resolves to a website which is blocked by

Internet browsers’ security settings. However, the Complainant has filed evidence showing that the website

offers pay-per-click (“PPC”) links to third party websites.

5. Parties’ Contentions

A. Complainant

The dominant part of the disputed domain name comprises the Complainant’s trademark LEGO, identical to the Complainant’s registered trademark. The addition of the term “princess” does not diminish the confusing

similarity between the disputed domain name and the Complainant’s trademark.

The Respondent does not have rights or legitimate interests in respect of the disputed domain name.

The Complainant has not licensed or otherwise authorized the Respondent to use the trademark LEGO.

The Respondent is not an authorized dealer of the Complainant’s goods and has never had any business

relationship with the Complainant.

The disputed domain name is used to generate traffic and income through sponsored links and hence the disputed domain name is used for a commercial purpose.

B. Respondent

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

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three elements of which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.

paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint or not.
A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.

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According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions,

Third Edition (“WIPO Overview 3.0”), “[t]he applicable Top Level Domain (‘TLD’) in a domain name

(e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under

the first element confusing similarity test”.

Section 1.8 of the WIPO Overview 3.0 reads: “[w]here the relevant trademark is recognizable within the

disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative,

meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.

The nature of such additional term(s) may however bear on assessment of the second and third elements.”

The disputed domain name is confusingly similar to the Complainant’s trademark as it includes the

Complainant’s trademark entirely with the addition of the term “princess”. This does not prevent a finding of

confusing similarity between the Complainant’s trademark and the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar with the Complainant’s trademark and

hence the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.

It is widely accepted among UDRP panels that once a complainant has made out a prima facie showing

indicating the absence of the respondent’s rights or legitimate interests in a domain name, the burden of

production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case

No. D2000-0270, and section 2.1 of the WIPO Overview 3.0.

The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.

Section 2.9 of the WIPO Overview 3.0 states: “[a]pplying UDRP paragraph 4(c), panels have found that the

use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering

where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or

otherwise mislead Internet users.”

Accordingly, the Panel finds that the Complainant has made out a prima facie case that has not been

rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other

circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain

name. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that [the respondent has] registered or has acquired the domain name

primarily for the purpose of selling, renting or otherwise transferring the domain name registration to
the complainant who is the owner of the trademark or service mark or to a competitor of that

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complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket

costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the

business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted 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, affiliation, or endorsement of [the

respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

The disputed domain name resolves to a website that displays various PPC commercial links. According to

section 3.5 of the WIPO Overview 3.0, such use can indicate the Respondent’s bad faith. In this specific

case, the composition of the disputed domain name, and the content of the website to which the disputed
domain name resolves, which consists of PPC commercial links, suggests to the Panel that the Respondent
has intended to create a likelihood of confusion and to mislead the Internet users for clicks and to gain

commercial revenue by the PPC system.

Furthermore, it was consistently found by previous UDRP panels that the mere registration of a domain

name that is identical or confusingly similar to a third party’s well-known trademark by an unaffiliated entity

can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

The Panel therefore finds that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(b)(iv).

Therefore, the Panel finds that the third element of the Policy is fulfilled.

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, <princesslego.com>, be transferred to the Complainant.

/Tuukka Airaksinen/

Tuukka Airaksinen

Sole Panelist
Date: March 8, 2023