LEGO Juris A/S v Daurs Dine

WIPO Case No. D2023-4086

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Daurs Dine

Case No. D2023-4086

1. The Parties

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

Sweden.

The Respondent is Daurs Dine, Hungary.

2. The Domain Name and Registrar

The disputed domain name <legocenter.shop> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2023. On September 29, 2023, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On September 29, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 2, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint on October 4, 2023.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on October 13, 2023. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2023. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on November 3, 2023.

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The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 14, 2023. The Panel f inds 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 limited 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 United States trademark LEGO (device), registration number 1018875, registered on August 26, 1975.

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 May 17, 2023.

The disputed domain name redirects to a website where a message in Hungarian announcing that they are currently unable to accept new orders until November 15, 2023 is displayed.

From the submissions provided by the Complainant, it appears that previously (at least on June 12, 2023) the Respondent used the disputed domain name for an unauthorised website of fering LEGO branded products, and presenting copyrighted imagery of the Complainant’s products.

5. Parties’ Contentions

A. Complainant

The Complainant claims that:

(a) the disputed domain name is confusingly similar to the Complainant’s trademark; (b) the Respondent lacks any rights or legitimate interests in the disputed domain name; and (c) the Respondent has 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

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

A. Identical or Confusingly Similar

The Complainant has established rights in the LEGO trademark. The disputed domain name contains the Complainant’s LEGO trademark with the addition of the term “center” and the generic Top-Level Domain “.shop”. The addition in the disputed domain name of the term “center” does not prevent the LEGO

trademark f rom being recognizable in the disputed domain name.

Pursuant to section 1.8 of the Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which states: “Where 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 f irst element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”

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 f inds that the Complainant has satisf ied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel f inds 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 af f iliation 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 of fering of goods or services. In fact, it appears that the Respondent has used the disputed domain name for an unauthorised website offering LEGO-branded products, using copyrighted image of the Complainant’s products, and displaying a disclaimer stating that the LEGO trademarks belong to the “LEGO Group”, and that are being “used with permission”. 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 f inds that the Complainant has satisf ied paragraph 4(a)(ii) of the Policy.

C. Registered and 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 of fering 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.

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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, af f iliation, 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 satisf ied paragraph 4(a)(iii) 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, <legocenter.shop>, be transferred to the Complainant.

/Fabrizio Bedarida/
Fabrizio Bedarida
Sole Panelist
Date: November 14, 2023