LEGO Juris A/S v Ivan Gerov

WIPO Case No. D2022-1560

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Ivan Gerov

Case No. D2022-1560

1. The Parties

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

The Respondent is Ivan Gerov, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <lego2sex.website> 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 April 29, 2022. On April 29, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2022, 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 May 9, 2022, 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 9, 2022.

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 17, 2022. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2022.

The Center appointed Daniel Peña as the sole panelist in this matter on June 21, 2022. 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.

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4. Factual Background

The Complainant is the owner of the LEGO brand of construction toys, holding several trademarks for
LEGO, including Russian Federation Registration No 59114, registered on August 25, 1977 and European
Union Registration No 000039800, registered on October 5, 1998.

The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the Russian Federation and elsewhere.

The Complainant has subsidiaries and branches throughout the world.

LEGO products are sold in more than 130 countries including the Russian Federation. The Complainant is also the owner of more than 1,000 domain names containing the term “Lego.”

The Complainant maintains an extensive website under the domain name <lego.com>.

The disputed domain name was registered on August 26, 2021. The disputed domain name resolves to a

Registrar parking page with sponsored links.

5. Parties’ Contentions

A. Complainant

The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.

The disputed domain name is confusingly similar to the Complainant’s famous trademark LEGO, the name has been registered and is being used in bad faith.

The fame of the trademark LEGO has been confirmed in numerous previous UDRP decisions.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the disputed domain names transferred, the Complainant must show the following per the Policy, paragraph 4(a):

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and are being used in bad faith.

The Complainant bears the burden of proof for each of these elements.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant

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has provided evidence of its rights in the trademarks LEGO on the basis of its multiple trademark
registrations in different jurisdictions, including the Russian Federation, where the Respondent is reportedly
located. A trademark registration provides a clear indication that the rights in the trademark belong to the
Complainant (see section 1.2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions,
Third Edition (“WIPO Overview 3.0”). It has also been established by prior UDRP panels that incorporating a
trademark in its entirety into a domain name can be sufficient to establish that the domain name is
confusingly similar to a trademark. Such findings were confirmed, for example, within section 1.7 of WIPO
Overview 3.0. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s
LEGO marks.

The Respondent’s incorporation of the Complainant’s mark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. Mere fact of the addition of the number “2” (also a symbol representing the word “to”) and the term “sex”, to the Complainant’s

trademark LEGO does not prevent a finding of confusing similarity with the Complainant’s marks. confusing similarity either.

The Panel is satisfied that the disputed domain name is identical or confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by the Respondent, will lead to this ground being set forth.

Refraining from submitting any Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights to or legitimate interests the disputed domain name. The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain names. The Complainant claims that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. Furthermore, the disputed domain name redirects Internet users to a parking page with sponsored links misleading about the website’s affiliation to the Complainant. Such use supports a finding that the Respondent lacks rights to or legitimate interests in the disputed domain name.

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in

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excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service
mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged

in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a
competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the Panel finds that at the date of registration of the disputed domain name the Respondent knew or should have known of the Complainant’s mark LEGO. Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known and a respondent cannot credibly claim to have been unaware of the mark, panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark (see section 3.2.2 of WIPO Overview 3.0).

Furthermore, the disputed domain name resolves a Registrar parking page with sponsored links misleading about the potential website’s affiliation to the Complainant.

The Panel takes into account the evidence of the use being made of the disputed domain name.
Accordingly, the Panel finds that the Respondent registered the disputed domain name, which includes the
Complainant’s well-known mark LEGO, in an attempt to cause a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.

Noting also the absence of a response from the Respondent, the Panel finds that the disputed domain name was registered and used in bad faith.

The Complainant also relies upon the fact that the Respondent failed to respond to cease and desist letters sent by the Complainant’s lawyers, in which the Complainant requested the Respondent should stop using and transfer the disputed domain name. The Panel follows earlier UDRP decisions and finds that a failure to

respond to such a letter can be further prima facie evidence of bad faith.

Consequently, the Panel finds that the disputed domain name was registered and used by the Respondent in bad faith within paragraph 4(a)(iii) 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 <lego2sex.website> be transferred to the Complainant.

/Daniel Peña/ Daniel Peña Sole Panelist Date: July 5, 2022