LEGO Juris A/S v Domain Name Privacy Inc

WIPO Case No. D2024-4894

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Domain Name Privacy Inc.

Case No. D2024-4894

1. The Parties

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

Sweden.

The Respondent is Domain Privacy, Domain Name Privacy Inc., Cyprus.

2. The Domain Name and Registrar

The Disputed Domain Name <lego-land.online> is registered with CommuniGal Communications Ltd., (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2024. On December 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 28, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on November 28, 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 December 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 December 4, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2025.

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The Center appointed Michal Havlík as the sole panelist in this matter on January 9, 2025. 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 which is the proprietor of the LEGO and LEGOLAND trademarks that are widely used in connection with toys. The Complainant has subsidiaries and branches throughout the world and owns numerous domain names containing the term LEGO and LEGOLAND.

The LEGOLAND entertainment parks are owned and operated by Merlin Entertainments on basis of a trademark license from the Complainant.

The Complainant is the proprietor of numerous trademark registrations globally including:

- European Union (“EU”) trademark registration LEGO no. 000039800 with filing date of April 1,1996, registered on October 5, 1998, for goods and services in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42;

- EU trademark registration LEGOLAND no. 000054205 with filing date of April 1,1996, registered on October 5, 1998, for goods and services in classes 9, 16, 25, 28, 41 and 42

The Complainant owns and operates website under domain name <lego.com>. The Complainant’s group holds and operates the website under domain name <legoland.com>.

The Disputed Domain Name was registered on July 10, 2024. The Disputed Domain Name contains pay-per-click (“PPC”) advertising redirecting to entertainment park websites for which the Complainant´s trademark is registered. There was no change on the website after filing of the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends that is has satisfied each of the elements required under the Policy for a transfer of the Disputed Doman Name.

The Complainant cites its EU and other trademarks for word mark LEGO and LEGOLAND. The entirety as its core part. According to the Complainant, the only change is the addition of hyphen makes such a small difference that it is not able to eliminate the confusing similarity between the Complainant´s trademarks and the Disputed Domain Name; and then follows the generic Top-Level-Domain (“gTLD”) “.online.”. Notably, the Disputed Domain Name is nearly identical to Complainant’s domain names <lego.com> and <legoland.com>.

The Complainant contends that the Respondent has prima facie no rights or legitimate interests in respect of the Disputed Domain Name. Furthermore, it holds that the Complainant’s earlier rights precede the Disputed Domain Name by a long period. Moreover, the Complainant contends that it never licensed or granted an

authorization to the Respondent to use LEGO and LEGOLAND marks.

Finally, the Complaint alleges that the registration and use of the Disputed Domain Name was undertaken in bad faith. With regard to the long-term and broad use of the Complainant´s trademarks, the Respondent must have known about their existence when registering the Disputed Domain Name.

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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, the Complainant has the burden of proving the following:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has right;

(ii)       that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

and
(iii)	that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has shown rights regarding the LEGOLAND trademark for the purpose of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.2.1. The Complainant has sufficiently demonstrated existence of its trademark rights in numerous jurisdictions around the world. The requirements of the first element for the purposes of the Policy may be satisfied by a trademark registered in any country. See Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358.

The entirety of the mark LEGO is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to the mark for the purpose of the Policy. WIPO Overview 3.0, section 1.8.

Respondent’s addition of a hyphen does nothing to distinguish the Disputed Domain Name from the the LEGOLAND trademark as the trademark remains recognizable.

LEGOLAND trademark. In other words, the use of a hyphen to separate terms “lego” and “land” in the
The additional grammatical element “-” is a common English grammatical instrument that is not capable of
preventing confusing similarity of the Disputed Domain Name and the Complainant’s trademark. See
Hoffmann-La Roche AG v. Popo, WIPO Case No. D2008-0423; and WIPO Overview 3.0, section 1.8.

The gLTD is an obligatory part of the domain name and is to be disregarded in assessment of confusing similarity, see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286, since it has no impact on the overall impression of the dominant portion of the Disputed Domain Name.

Accordingly, this Panel finds that the Disputed Domain Name is confusingly similar to trademarks in which the Complainant has rights.

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 in on the Complainant, previous panels have recognized that proving a respondent lack of 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

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Respondent lacks right 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 (even though 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.

There is no evidence that the Respondent has been commonly known by the Disputed Domain Name as an individual, business or other organization. In addition, the Respondent reproduces the Complainant’s earlier registered trademarks in the Disputed Domain Name without any license or authorization from the

Complainant, which is strong evidence of the lack of rights or legitimate interests. The Complainant submits
that it has not authorized the use of its earlier trademarks or terms similar thereto in the Disputed Domain
Name in any manner or form.

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 illustrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise.

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 purpose of paragraph 4(a)(iii), paragraph 4)b) of the Policy establishes 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.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that my indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent´s registration and use of a domain name is in bad faith. WIPO Overview 3.0., section 3.2.1.

Hoffmann-La Roche AG v. Popo, WIPO Case No. D2008-0423.

The Panel notes that the Complainant’s trademarks LEGO and LEGOLAND predate the Disputed Domain of the long-term use, the Complainant’s trademarks are distinctive and well-known in the field of toys. Therefore, the respondent knew or should have known about the Complainant’s trademarks prior to registering the Disputed Domain Name, see

D2007-0267. Moreover, in the following case the Panel stated: “The Panel has already found that Internet users are likely to be misled by the confusing similarity between the disputed domain name and the Complainant’s trademark into supposing that the Disputed Domain Name indicates a site belonging to, or authorized by, the Complainant where the Complainant’s coupons can be obtained or exchanged. The only rational reason for using such a domain name would be to attract some of the Complainant’s customers to the Respondent’s site. Once there, at least some of them will click the sponsored links for which the Respondent will be paid“. See Inter Ikea Systems B.V. v. Daniel Woodson, WIPO Case No. D2011-1933.

The use of a Disputed Domain Name for a website comprising PPC links does not represent bona fide given WIPO Case No.

that such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark.

The Disputed Domain Name has not been put to any use in connection with an active website other than it
contains PPC links offering access to third party websites including entertainment parks operated by the
Complainant’s competitors.

When taking into account all relevant facts and circumstances, the Panel notes that the Disputed Domain Name is confusingly similar to the Complainant’s distinctive and widely known trademark, the Respondent

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has no rights or legitimate interests in the Disputed Domain Name and has failed to prove any evidence of
actual or contemplated good-faith use and such use is practically implausible. The Panel finds that the
Respondent has registered and used the Disputed Domain Name in bad faith primarily for the purpose of
attracting Internet users to his website by creating a likelihood of confusion with the Complainant’s
trademarks and such for commercial gain through PPC advertising for services that are covered by the
Complainant’s trademarks. See Shangri-La International Hotel Management Limited v. NetIncome Ventures

Inc., WIPO Case No. D2006-1315.

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 <lego-land.online> be transferred to the Complainant.

/Michal Havlík/ Michal Havlík Sole Panelist Date: January 21, 2025