LEGO Juris A/S v Christian Rouse

WIPO Case No. D2024-3989

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Christian Rouse

Case No. D2024-3989

1. The Parties

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

Sweden.

The Respondent is Christian Rouse, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <american-lego.com>, <americanlego.com>, and <americanlego.org> are 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 30,
2024. On September 30, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain names. On September 30, 2024, the Registrar
transmitted by email to the Center its verification response disclosing registrant and contact information for
the disputed domain names which differed from the named Respondent (Registration Private / Domains By
Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the
Complainant on October 3, 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 October 4, 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 October 9, 2024. In accordance with the Rules, paragraph
5, the due date for Response was October 29, 2024. The Respondent sent email communications to the
Center on October 11, 20, 23, 24, 30, and 31, 2024.

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The Center appointed Eva Fiammenghi as the sole panelist in this matter on November 5, 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 internationally recognized for its iconic LEGO trademark, which encompasses the design, manufacture, and sale of construction toys and related products. The Complainant was established in 1932 and has since become one of the most well-known brands worldwide in the toy and educational product industries. The Complainant is the owner of numerous registered trademarks LEGO across various jurisdictions, protecting its intellectual property rights on a global scale.

The Complaint is based on the following relevant registered trademarks, covering a range of goods primarily in the toy and entertainment sectors:

United States Trademark Reg. No. 1026871 LEGO registered on December 9, 1975, in class 28

Denmark Trademark Reg. No. VR 1954 00604 registered on May 1, 1954, in class 28

The Complainant operates a primary website under the domain name <lego.com>, alongside other related domain names, where it markets its products and shares brand-related content worldwide.

The disputed domain names, <americanlego.com>, <american-lego.com>, and <americanlego.org>, were all registered by the Respondent on June 14 and 15, 2024. The disputed domain name <americanlego.com> resolved to a Shopify webpage claiming to be “American Lego”, offering toy products for sale including some with the Complainant’s mark and other third-party marks. At the time of filing the Complaint, all the disputed domain names resolved to registrar parking pages comprising pay-per-click (“PPC”) 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 names.

Notably, the Complainant contends that the disputed domain names are confusingly similar to the not sufficiently distinguish the dispute domain names from the Complainant’s trademark.

Complainant’s registered trademark LEGO. The disputed domain names incorporate the entirety of the

The Complainant asserts that the Respondent lacks any rights or legitimate interests in the disputed domain names. The Respondent is neither authorized nor licensed by the Complainant to use the LEGO trademark. There is no evidence suggesting that the Respondent is commonly known by the disputed domain names or has used the disputed domain names in connection with a bona fide offering of goods or services.

According to the Complainant, the Respondent registered and is using the disputed domain names in bad faith. By using the disputed domain names to host parked pages comprising PPC links that include the LEGO trademark and references to Complainant’s toy products, the Respondent has created a likelihood of confusion and may be attempting to exploit the Complainant’s goodwill.

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On July 3, 2024, the Complainant sent a cease-and-desist letter to the Respondent, requesting discontinuation of the use of the disputed domain names. No satisfactory response was received, prompting this formal UDRP Complaint.

The Complainant asserts that the Respondent’s actions fulfill the Policy requirements for bad-faith registration and use, justifying the transfer of the disputed domain names to the Complainant.

B. Respondent

The Respondent sent multiple informal emails on October 11, 20, 23, 24, 30 and 31, 2024, claiming that he had registered and bought the disputed domain names several months before the Complaint was filed and that he attempted to contact the Registrar to delete them potentially 20 days after registration/purchase.

Accordingly, the Respondent contends not to have/own the accounts associated with the disputed domain name anymore.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:

(i) the disputed domain names are 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 names; and

(iii) the disputed domain names were registered and are being used in bad faith.

These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

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 names. 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 Panel finds the Complainant’s trademark LEGO is clearly recognizable within the disputed domain
names. The addition of the term “american” does not prevent a finding of confusing similarity between the

Complainant’s trademark and the disputed domain names. WIPO Overview 3.0, sections 1.7 and 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.

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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 names. 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 names, such as those enumerated in the Policy or otherwise.

The Respondent does not appear to be commonly known by the disputed domain names, nor is there
evidence of a bona fide offering of goods or services under the disputed domain names. Furthermore, the
Panel finds no legitimate noncommercial or fair use of the disputed domain names, which are used to host
parked pages comprising PPC links which compete with or capitalize on the reputation and goodwill of the

Complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9.

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.

In the present case, the Panel notes that the Respondent registered the disputed domain names, incorporating the Complainant’s well-known LEGO mark, with the apparent intent to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark. The addition of the term “american” could suggest an association with the Complainant’s operations in the United States, further increasing potential confusion.

Additionally, the Respondent’s failure to respond to a cease-and-desist letter sent by the Complainant on

July 3, 2024, indicates bad faith registration and use.

With respect to “automatically” generated PPC links, panels have found that that a respondent cannot
disclaim responsibility for content appearing on the website associated with the disputed domain name and
neither the fact that such links are generated by a third party such as a registrar, nor the fact that the
respondent itself may not have directly profited, would by itself prevent a finding of bad faith.

WIPO Overview 3.0, section 3.5.

Having reviewed the available record, the Panel notes that in this case, the use of the disputed domain
names to host parked pages comprising PPC links which were seemingly “automatically” generated by the

Registrar does not prevent a finding of bad faith under the Policy.

The Panel finds that the Complainant has established the third element 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 names <american-lego.com>, <americanlego.com>, and

<americanlego.org>, be transferred to the Complainant.

/Eva Fiammenghi/
Eva Fiammenghi
Sole Panelist
Date: November 19, 2024