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

WIPO Case No. D2024-3969

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

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

Case No. D2024-3969

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 <elego.shop> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2024. On September 27, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 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 (REDACTED FOR PRIVACY / Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 1, 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 7, 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 10, 2024. In accordance with the Rules, paragraph
5, the due date for Response was October 30, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on November 5.

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The Center appointed Tommaso La Scala 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 is a well-known toy company, specialized in the manufacturing and commercialization of
plastic construction toys. Currently, the Complainant’s products are sold in more than 130 countries and the

LEGO brand is widely known among consumers.

The Complainant is the owner of numerous LEGO trademark registrations, including:

- European Union Trademark Registration for LEGO, No. 000039800, registered on October 5, 1998.

The Complainant also operates numerous domain names incorporating its LEGO trademark, including the domain name <lego.com>, registered on August 22, 1995.

The disputed domain name was registered on December 2, 2023. At the time of submitting the Complaint, the disputed domain name has resolved to a website featuring sponsored links of third parties and it was offered for sale for almost USD 700.

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.

First, the Complainant submits that the disputed domain name is confusingly similar to the LEGO trademark in which the Complainant has rights.

Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the disputed domain name.

Third, the Complainant contends that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

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.

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Based on the available record, the Panel finds 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 entirety of the mark is reproduced within the disputed domain name and nor the addition of the prefix “e”, neither of the term “shop” are elements sufficient to avoid a likelihood of confusion between the Complainant's trademark LEGO and 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.

Based on the available record, 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). 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.

The Complainant has shown that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Rather, at the time of submitting the Complaint, the Respondent was offering it for sale for an amount that likely exceeds the Respondent’s out-of-pocket expenses in registering a domain name. Such use does not confer rights or legitimate interests upon a respondent.

The disputed domain name resolves to a website offering Pay-Per-Click (“PPC”) links that compete with the Complainant’s goods. 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. WIPO Overview 3.0,
section 2.9.

The Respondent did not reply to the Complainant’s allegations, not even after having received a C&D letter and several reminders.

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 demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Based on the available record, 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.

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The disputed domain name was registered well after the Complainant first started using its LEGO trademark and the Complainant’s evidence establishes extensive use of its earlier mark as at the date of registration of the disputed domain name. Given the confusing similarity between the latter and the Complainant’s mark, it is clear that the Respondent was aware of the Complainant and its LEGO mark as at the date of registration of the disputed domain name and registered it in order to take unfair advantage of it.

In the present case, the Panel also notes that the Respondent connected the disputed domain name to a website displaying sponsored links, where the disputed domain name is also offered for sale for USD 688, a conduct constituting bad faith under Policy 4(b)(i), since the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the disputed domain name for valuable consideration in excess of his out-of- pocket expenses.

With respect to the “automatically” generated PPC links within the website connected to the disputed domain name, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its disputed domain name. Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith. See section 3.5 of the WIPO Overview 3.0. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Furthermore, the Respondent’s use of privacy services (two layers of privacy service, actually) that concealed registrant information further supports a finding of bad faith.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds the third element of the Policy has been established.

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 <elego.shop> be transferred to the Complainant.

/Tommaso La Scala/
Tommaso La Scala
Sole Panelist
Date: November 23, 2024