LEGO Juris A/S v Han Marim, Lego sell

WIPO Case No. D2024-3814

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Han Marim, Lego sell

Case No. D2024-3814

1. The Parties

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

Sweden.

The Respondent is Han Marim, Lego sell, United States of America.

2. The Domain Names and Registrar

The disputed domain names <legosell.com> and <legosells.com> are registered with Hostinger Operations,

UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2024. On September 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 20, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Domain Admin Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 20, 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 September 23, 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 September 24, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2024.

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The Center appointed Nayiri Boghossian as the sole panelist in this matter on October 21, 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 the manufacturer of the construction toys branded LEGO. The Complainant owns a number of trademark registrations for LEGO such as United States of America registration No. 1018875, registered on August 26, 1975.

The disputed domain names were registered on May 11, 2024. The disputed domain name <legosell.com> resolves to an inactive website. The disputed domain name <legosells.com> resolves to a website currently offering weight loss products. Previously it advertised baked goods under the header “Build with

LEGOminds”.

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 names.

Notably, the Complainant contends that the disputed domain names are confusingly similar to a trademark in
which the Complainant has rights. The dominant part of the disputed domain names consists of the
Complainant’s trademark. The trademark LEGO is well known. The inclusion of the generic terms “sell” and
“sells” does not eliminate confusing similarity. The generic Top-Level-Domain (“gTLD”) “.com” does not have
an impact on assessing confusing similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not authorized or licensed by the Complainant to use its trademark nor is he an authorized dealer. There is no evidence that the Respondent is commonly known by the disputed domain

names. The disputed domain name <legosell.com> resolves to an inactive website that lacks content. This
is passive holding and there is no demonstrable preparation to use the domain name in connection with
either a non-commercial, fair use or bona fide offering of goods and services. The disputed domain name
<legosells.com> resolves to a website currently offering weight loss products. Previously, it advertised
baked goods under the header “build with LEGOminds”.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant’s trademark is well known and there is significant value and goodwill attached to it. The disputed domain names were registered decades after the registration of the Complainant’s trademark. The Respondent must have been aware of the Complainant’s trademark when registering the disputed domain names. The Respondent did not reply to the cease-and-desist letter sent by the Complainant. Panels have found that the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith. The disputed domain name <legosell.com> resolves to an inactive website. Bad faith does not require a positive act and passively holding a domain name can constitute a factor in finding bad faith. The disputed domain name <legosells.com> resolves to a website currently offering weight loss products not related to the Complainant and there is no disclaimer to that effect. A privacy service was used by the Respondent.

B. Respondent

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

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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.

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 mark is recognizable within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “sell” and “sells”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. 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). 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 names. 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 names such as those enumerated in the Policy or otherwise.

While the Respondent’s name as per the WhoIs record for the disputed domain names is “Lego sells”, hence it is relevant for paragraph 4(c)(ii) of the Policy. However, for the reasons discussed in relation to bad faith below, it is likely that the Respondent adopted this name and registered the disputed domain names in order to benefit from confusion with the Complainant, which cannot give rise to rights or legitimate interests.

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

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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 notes that the Respondent must have been aware of the Complainant’s trademark as the disputed domain names were registered decades after the registration of the Complainant’s trademark and the Complainant’s trademark is well-known. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may 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.

In relation to the disputed domain name <legosell.com>, Panels have found that the non-use of a domain name (including a blank page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

In relation to the disputed domain name <legosells.com>, noting the well-known nature of the Complainant’s LEGO trademark, the Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online location by creating a likelihood of confusion with the Complainant’s mark. Such use constitutes bad faith pursuant to paragraph

4(b)(iv) of the Policy.

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 names <legosell.com> and <legosells.com> be transferred to the

Complainant.

/Nayiri Boghossian/
Nayiri Boghossian
Sole Panelist
Date: October 23, 2024