LEGO Juris A/S v Jacco Batavier, Batavier Holding

WIPO Case No. D2024-5163

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Jacco Batavier, Batavier Holding

Case No. D2024-5163

1. The Parties

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

Respondent is Jacco Batavier, Batavier Holding, Netherlands (Kingdom of the).

2. The Domain Names and Registrar

The disputed domain names <lego.eco> and <lego.luxe> (“Domain Names”) are registered with Realtime

Register B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Respondent sent email communications to the Center on December 17 and December 18, 2024. On December 19, 2024, Complainant requested suspension of the proceedings in order to explore settlement. After not having received any further communication from Respondent, Complainant requested that the proceedings be reinstituted on January 14, 2025. The administrative proceedings were reinstituted by the Center on the same date. Complainant filed an amended Complaint on January 21, 2025.
2024. On December 16, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the Domain Names. On December 17, 2024, the Registrar transmitted by
email to the Center its verification response disclosing registrant and contact information for the Domain

Names which differed from the named Respondent (Redacted for Privacy) and contact information in the

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 Respondent of the Complaint, and the proceedings commenced on January 22, 2025. In accordance with the Rules, paragraph 5, the due

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date for Response was February 11, 2025. On February 12, 2025, the Center informed the Parties that it
would proceed with Panel Appointment.

The Center appointed Marina Perraki as the sole panelist in this matter on February 17, 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

Complainant is a corporation organized and existing under the laws of Denmark. It is the owner of LEGO trademarks used in connection with the LEGO construction toys and other LEGO branded products. The Lego Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.

Complainant is the owner of trademark registrations for the LEGO mark in many jurisdictions around the world, including the Canadian trademark registration LEGO (word), no. TMA106457, filed on June 14, 1956, and registered on April 26, 1957, for goods in international classes 9, 16 and 28.

Complainant also maintains more than 5,000 domain names incorporating the LEGO mark and an extensive website under the domain name <lego.com>.

Per Complaint, the trademark LEGO is among the best-known trademarks in the world, due in part to long and extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. For instance, the official Top 10 Consumer Superbrands for 2019, provided by Superbrands UK, shows LEGO as no. 1 Consumer Superbrand and it is no. 8 in the Consumer

Relevancy Index. Moreover, the Reputation Institute recognized the LEGO Group as no. 1 on its list of the world’s Top 10 Most Reputable Global Companies of 2020, and applauded the LEGO Group’s strong reputation, having been on its top 10 list for 10 consecutive years. In 2014, TIME magazine also announced LEGO to be the Most Influential Toy of All Time.

The Domain Names were registered on August 5, 2024, and lead to inactive websites indicating that the registrant details for the Domain Names have not been validated.

Complainant sent cease and desist letters to Respondent on August 23 and 30, 2024, and on September 6,

2024, to which Respondent did not reply.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the

Domain Names.

B. Respondent

Respondent did not formally reply to the Complainant’s contentions. On December 17, 2024, Respondent sent an email communication to the Center, stating that he is a fan of LEGO and the reason for registering the Domain Names was out of personal interest for LEGO. There was no intention to commercially exploit the Domain Names, while Respondent was unaware that the Domain Names would conflict with the LEGO brand. Respondent is in any case willing to transfer the Domain Names to Complainant, taking into account

the cost and additional effort on his part. In a new email communication on December 18, 2024, Respondent

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confirmed his willingness to explore settlement options and expressed the desire to receive as a small

gesture from Complainant a weekend visit to Legoland or one of LEGO's signature sets.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the

Domain Name:

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

has rights; and

(ii) 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.

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.

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 LEGO mark is entirely reproduced within the Domain Names. Accordingly, the Domain
Names are identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The generic Top-Level Domains (“gTLD”) “.luxe” and “.eco” are disregarded, as gTLDs typically do not form part of the comparison under the first element on the grounds that they are generally required for technical reasons. (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

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 Complainant has established a prima facie case that rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise.

Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not rebutted

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In his communications to the Center, Respondent claimed to be a fan of Complainant and stated that he was unaware that the registration of the Domain Names could potentially conflict with Complainant’ s brand, and that the purchase was made out of his love for LEGO. He then proposed to transfer the mark in exchange of a trip to LEGO land.

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that rights or legitimate interests in the Domain Names such as those enumerated in the Policy or otherwise.

Respondent lacks rights or legitimate interests in the Domain Names. Respondent has not rebutted

Where a domain name is identical to a trademark and is being used in relation to a genuine noncommercial fan site, panels have tended to find that a general right to operate a fan site does not necessarily extend to registering or using a domain name that is identical to Complainant’s mark (WIPO Overview 3.0, section

2.7.2).

In any case, here the Domain Names are both identical to Complainant’s trademark and they are inactive, while Respondent did not express any intention to operate a fan site.

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.

Complainant’s LEGO trademarks were widely used and registered before the Domain Names registration
and enjoyed reputation. Although Respondent states that he was unaware that the registration of the
Domain Names could potentially conflict with Complainant’ s brand, Respondent evidently knew of
Complainant and its trademarks and chose the Domain Names having those in mind, as expressly stated by

Respondent in his email communications to the Center.

Having reviewed the available record, the Panel finds the non-use of the Domain Names does not prevent a
finding of bad faith in the circumstances of these proceedings. Although panelists will look at the totality of
the circumstances in each case, factors that have been considered relevant in applying the passive holding
doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of
the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use (iii)
the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration
agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
WIPO Overview 3.0, section 3.3.

The Panel notes a) the lack of any good-faith use claims let alone evidence thereof from Respondent in his email communication to the Center, and b) the composition of the Domain Names, which incorporate Complainant’s trademark entirely and make the good faith use implausible. Taking all the above into account, the Panel finds that in the circumstances of this case the passive holding of the Domain Names does not prevent a finding of bad faith under the Policy.

The Panel finds that 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 Names <lego.eco> and <lego.luxe> be transferred to the Complainant.

/Marina Perraki/
Marina Perraki
Sole Panelist
Date: March 3, 2025