LEGO Juris A/S v Davis Lopez

WIPO Case No. D2024-3974

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Davis Lopez

Case No. D2024-3974

1. The Parties

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

Sweden.

The Respondent is Davis Lopez, United States of America.

2. The Domain Name and Registrar

The disputed domain name <legoshops.net> is registered with Wix.com Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27,
2024. On September 30, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On October 2, 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 (DT) /
Wix.com Ltd.) 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 11, 2024. In accordance with the Rules, paragraph
5, the due date for Response was October 31, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on November 5, 2024.

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The Center appointed Eva Fiammenghi as the sole panelist in this matter on November 11, 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, LEGO Juris A/S, is a limited company incorporated in Denmark. LEGO Juris A/S is the owner of the LEGO trademark, which is widely recognized for its construction toys and various LEGO- branded products. The LEGO brand, established in 1932, has since expanded globally, with subsidiaries and sales in over 130 countries.

The Complainant have secured ownership of numerous trademark registrations for LEGO in many jurisdictions throughout the world, including but not limited to the following:

- United States Reg. No. 1018875, LEGO, registered on August 26, 1975 – Class 28;
- Danish Reg. No. VR195400604, LEGO, registered on May 1, 1954 – Class 28.

The Complainant is the owner of nearly 5,000 domain names containing LEGO trademark as a prefix, demonstrating its effort to protect its trademark rights online.

The disputed domain name, <legoshops.net>, was registered on May 2, 2024. The disputed domain name is currently linked to a parked page but was previously used to purportedly offer products under the LEGO brand, while suggesting affiliation with the LEGO Group.

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 is confusingly similar to the Complainant’s registered trademark LEGO. The domain name fully incorporates the LEGO trademark, which is widely recognized globally. The addition of the descriptive term “shops” does not distinguish the domain name from the trademark but instead enhances confusion by suggesting an official association with the Complainant's retail operations.

The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use its LEGO trademark, and the Respondent is not affiliated with the Complainant in any capacity. Additionally, the Respondent is not commonly known by the domain name and has not used it for any bona fide offering of goods or services.

The Complainant asserts that the Respondent registered and is using the domain name in bad faith. The disputed domain name was previously linked to a parked page displaying the Complainant’s trademarks and products for sale. The Complainant alleges that the Respondent registered the dispute domain name to exploit the goodwill and reputation of the LEGO trademark for commercial gain.

On June 7, 2024, the Complainant sent a cease-and-desist letter to the Respondent, requesting discontinuation of the use of the disputed domain name. No satisfactory response was received, prompting this formal UDRP Complaint.

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B. Respondent

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

6. Discussion and Findings

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

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name was registered and is 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 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 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.

The disputed domain name incorporates the Complainant’s well-known trademark LEGO in its entirety. The addition of the term “shops” does not prevent a finding of confusing similarity between the disputed domain name and the trademark. 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). 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

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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.

The Respondent is not commonly known by the disputed domain name, nor has the Respondent made any demonstrable preparations to use the domain name for a bona fide offering of goods or services.

Furthermore, the use of the disputed domain name to purportedly offer goods under the Complainant’s trademark, while falsely suggesting an affiliation with the Complainant and without any disclaimer regarding the lack of relationship with the Complainant, cannot be considered a legitimate noncommercial or fair use under the Policy.

Panels have held that where a domain name consists of a trademark plus an additional term (at the second- or top-level), such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. WIPO Overview 3.0, section 2.5.1. Here, the incorporation of the Complainant’s well-known LEGO trademark with a descriptive term associated with the Complainant’s retail activities effectively impersonates or suggests sponsorship or endorsement by the Complainant. Moreover, the evidence indicates that the Respondent’s use of the disputed domain name is designed to unfairly capitalize on the goodwill of the Complainant’s trademark for commercial gain.

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 disputed domain name in bad faith.

In the present case, the Panel notes that the Respondent registered and used the disputed domain name in bad faith under the circumstances that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s well-known LEGO trademark. The evidence demonstrates that the disputed domain name hosted a page purportedly featuring the Complainant’s trademark and products, without any explanation regarding the lack of

relationship with the Complaiannt. This indicates an intent to exploit the goodwill associated with the LEGO trademark for financial benefit. Moreover, considering the available record, including the prior use of the disputed domain name, the distinctiveness and reputation of the Complainant’s trademark, and the

composition of the disputed domain name, the Panel finds that the subsequent non-use or passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. WIPO Overview 3.0, section 3.3.

The Complainant’s LEGO trademark is globally recognized and highly distinctive, and the Respondent would have been aware of its reputation at the time of registration. The registration of a disputed domain name that is confusingly similar to such a well-known trademark cannot plausibly be attributed to a legitimate purpose, supporting a finding of bad faith.

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 name <legoshops.net> be transferred to the Complainant.

/Eva Fiammenghi/
Eva Fiammenghi
Sole Panelist
Date: November 25, 2024