Lego Juris A/S v gacoan 88, no have

WIPO Case No. D2024-5102

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Lego Juris A/S v. gacoan 88, no have

Case No. D2024-5102

1. The Parties

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

Sweden.

The Respondent is gacoan 88, no have, Cambodia.

2. The Domain Name and Registrar

The disputed domain name <storelego.site> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2024. On December 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 12, 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 13, 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 17, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2025.

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The Center appointed Aaron Newell as the sole panelist in this matter on January 16, 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 company based in Denmark that produces construction toys under the brand LEGO. The Complainant’s LEGO brand is one of the most consistently-popular toy brands in the world, and has been widely extended beyond construction toys to clothing, video games, books and a successful franchise of major feature films. In 2014 Time Magazine referred to the Complainant’s LEGO toys as the most influential toys of all time.

The Complainant owns numerous trademark registrations around the world for the name LEGO including
United States of America Trademark Registration No. 1018875 registered August 26, 1975, Cambodia
Trademark Registration No. 899 registered July 23, 1992 and European Union Trademark Registration No.
000039800 registered October 5, 1998. The Complainant also owns a vast portfolio of close to 5,000
domain names containing its LEGO trademark.

The disputed domain name was registered September 28, 2024, using a privacy WhoIs service. At the time that the Complaint was filed the disputed domain name loaded a parking page featuring click-through advertising links. At the time of writing this decision the links have been removed but a generic parking page still loads.

The Respondent did not respond to the Complaint or otherwise engage in the proceedings.

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:

(i)        the disputed domain name is confusingly similar to its well-known LEGO trademark because the

Complainant’s LEGO trademark is wholly contained within the disputed domain name, and the addition of the generic terms “store” and “.site” do not detract from the impression of the LEGO trademark;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name because

the Respondent has no license or other authorization to use the Complainant’s famous LEGO trademark,
there is no evidence that the Respondent is commonly known by the disputed domain name, and there is no
evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of
goods or services;

(iii) the disputed domain name was registered and is being used in bad faith, as the Respondent has used

the disputed domain name to load a website featuring sponsored advertising links and is therefore
intentionally using the Complainant’s LEGO trademark in a confusing way in order to attract Internet users to
the website for commercial gain.

B. Respondent

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

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6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i)        that the disputed domain name is identical or confusingly similar to a trademark or service mark in

which the Complainant has rights; and

(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.

The Respondent’s default in the case at hand does not automatically result in a decision in favor of
Complainant, however, paragraph 5(f) of the Rules provides that if the Respondent does not submit a
response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon
the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences

from the Respondent’s failure to submit a Response as it considers appropriate.

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 its LEGO trademark 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.

While the addition of the term “store” could bear on assessment of the second and third elements, the Panel finds that the addition of this term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds that 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.

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

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

The disputed domain name resolves to a website that features sponsored advertising and Pay-Per-Click (“PPC”) links leading to third party websites. Applying UDRP paragraph 4(c), 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 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 accepts the Complainant’s assertions that its LEGO trademark is well known, and that the Respondent has used the Complainant’s well-known LEGO trademark in the disputed domain name in connection with a website that features sponsored advertising and PPC links leading to third party websites. The Panel also accepts that the Respondent registered the disputed domain name with knowledge of the Complainant’s LEGO trademark.

In the absence of a Response, the Panel cannot see a plausible justification for the Respondent’s registration and use of the disputed domain name for a website with PPC links. Further, the Respondent cannot (and in fact does not attempt to) disclaim responsibility for content appearing on the website associated with the disputed domain name. WIPO Overview 3.0, section 3.5.

Accordingly, 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 its website. This amounts to evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.

The Panel finds the third element of the Policy 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 <storelego.site> be transferred to the Complainant.

/Aaron Newell/ Aaron Newell Sole Panelist Date: January 30, 2025