LEGO Juris A/S v Hoang Van Ha

WIPO Case No. D2024-1946

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Hoang Van Ha

Case No. D2024-1946

1. The Parties

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

Sweden.

The Respondent is Hoang Van Ha, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <lego-philippines.shop> (the “Domain Name”) is registered with GMO Internet,

Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2024. On May 10, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 13, 2024, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name which differed from the named Respondent (N/A) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 13, 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 May 16, 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 May 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2024.

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The Center appointed Enrique Bardales Mendoza as the sole panelist in this matter on June 19, 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 toy company based in Denmark selling interlocking plastic bricks in more than 130 countries. The protection of the LEGO trademark goes far beyond toys, as the Complainant has extended its use to computer hardware and software, books, videos, and computer controlled robotic construction sets.

The Complainant is the owner of close to 5,000 domain names containing LEGO, including <lego.com>.
Furthermore, the Complainant owns many international and national trademark rights, including:

- Viet Nam trademark LEGO (combined), registered under Registration No. 4-0060988-000 on March 14, 2005, for goods and services in international classes 9, 16, 20, 25, 28, and 41;

- Philippines trademark LEGO (combined), registered under Registration No. 33872 on December 5,1984, for goods in international class 28; and

- Japan trademark LEGO, registered under Registration No. 520470 on May 21, 1958, for goods in

international classes 20 and 28.

The Domain Name was registered on April 1, 2024. The Complainant has provided evidence showing that the Domain Name at the beginning resolved to an online store prominently displaying the Complainant’s trademark and purportedly offering for sale various Complainant’s goods. Subsequently, as per the evidence provided by the Complainant, the website at the Domain Name was no longer active. Lastly, at the time of issuance of this Decision, the Domain Name is still inactive.

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 Domain Name.

B. Respondent

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

6. Discussion and Findings

In a UDRP proceeding, according to paragraph 4(a) of the Policy, the Complainant must establish the following elements:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

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

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

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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 Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

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 Domain Name. Accordingly, the Domain
Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the addition of the term “philippines” and a hyphen does not prevent a finding of confusing similarity between the Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Lastly, the addition of the generic Top-Level Domain (“gTLD”) “.shop” to the Domain Name has no relevance in this case since it is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1.

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.

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 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 Domain Name such as those enumerated in the Policy or otherwise.

(i) First of all, the Respondent has not submitted any response and has not claimed any rights or legitimate
interests with respect to the Domain Name. As per the Complaint, the Respondent was not authorized to
register the Domain Name.

WIPO Overview 3.0, sections 2.8 and 2.13.

(ii) Secondly, the Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain services. In this regard, the Panel notes that the composition of the Domain Name incorporating the Complainant’s trademark with the term “philippines” which refers to a country where the Complainant carries out its business, carries a risk of implied affiliation. Noting the lack of any authorization by the Complainant and the Domain Name’s impersonating content, the Respondent’s use of the Domain Name does not amount to a bona fide offering of goods or services.

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(iii) Thirdly, based on the available record, the Respondent is not commonly known by the Domain Name.

Considering the above, there is no evidence on record giving rise to any rights or legitimate interests in the

Domain Name on the part of the Respondent within the meaning of paragraph 4(c) of the Policy.

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.

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.

The Panel concludes that the Respondent has registered and is using the Domain Name in bad faith for the following reasons:

(i) the LEGO trademark had been widely used and registered by the Complainant before the Domain Name

was registered;

(ii) the Respondent could verify that the Complainant is the owner of the LEGO trademarks by using a search

engine for this purpose before registering the Domain Name;

(iii) the Domain Name incorporates the LEGO trademark in its entirety and has previously resolved to an

impersonating online shop purportedly offering for sale Complainant’s products;

(iv) although, the Domain Name is not currently active, the Panel is of the opinion that the Respondent has
intentionally registered the Domain Name in order to generate traffic to its own website. The Panel notes
that the Respondent does not appear to have published an accurate and prominent disclaimer on its website
to explain that there is no existing relationship between the Respondent and the Complainant. On the
contrary, the prominent use of the LEGO trademark of the Complainant on the associated website as well as
the inherently misleading nature of the Domain Name, and the presentation of the website operator as
“LEGO System A/S” is, in view of the Panel, sufficient evidence 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 as to the source, sponsorship, affiliation, or endorsement of its website. WIPO

Overview 3.0, section 3.1.4; and

(v) further, the Panel finds that the lack of Response supports the Panel’s finding of bad faith.

Finally, the current passive holding of the Domain Name does not prevent the finding of bad faith.

Based on the available record, 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 Domain Name <lego-philippines.shop> be transferred to the Complainant.

/Enrique Bardales Mendoza/
Enrique Bardales Mendoza
Sole Panelist
Date: July 3, 2024