LEGO Juris A/S v Manas

WIPO Case No. D2023-0824

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Manas

Case No. D2023-0824

1. The Parties

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

Sweden.

The Respondent is Manas, India.

2. The Domain Name and Registrar

The disputed domain name <legoverse999.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2023. On February 23, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 (Contact Privacy Inc. Customer 7151571251) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 24, 2023, 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 February 28. 2023.

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 March 2, 2023. In accordance with the Rules, paragraph 5,
the due date for Response was March 22, 2023. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 23, 2023.

The Center appointed Federica Togo as the sole panelist in this matter on March 29, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

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Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the registered owner of several trademarks worldwide consisting of or containing the term “LEGO”, e.g., Indian registered trademark no. 240430, with priority since February 7, 1967, for “games and playthings” in class 28. This mark has also been duly renewed and is in force.

The disputed domain name was registered on February 14, 2022.

Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name resolves to an unauthorised website offering LEGO Non-Fungible Tokens – (“NFTs”).

Finally, the Complainant sent a cease and desist letter to the Respondent on May 4, 2022. The Respondent did not reply to it.

5. Parties’ Contentions

A. Complainant

It results from the Complainant’s undisputed allegations that the Complainant, based in Denmark, runs the business of making and selling LEGO branded toys. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. The Complainant has expanded its use of the LEGO trademark from construction toys to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. Moreover, the Complainant is the owner of close to 5,000 domain names containing the term “lego” and uses the website “ in connection with its activity.

The Complainant contends that its trademarks LEGO are highly distinctive and well known worldwide. It further contends that its trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO trademark on all products, packaging, displays, advertising, and promotional materials.

The Complainant further contends that the disputed domain name is confusingly similar to the Complainant’s registered trademark LEGO since the dominant part of the disputed domain name comprises the term “lego”. The fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions. The addition of the suffix “verse999” will not have any impact on the overall impression of the dominant part of the name, LEGO, recognizable as a world famous trademark.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not known by the name “legoverse999” and has no right or legitimate interest in this name, which does not correspond to its company name or to any trademarks it may have. Furthermore, the Respondent is not linked to the Complainant’s activity and has no license or authorization to use the trademark LEGO. It further results from the Complainant’s undisputed contentions that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. In fact, the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through an unauthorised website offering LEGO Non-Fungible Tokens – (“NFTs”).

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. Due to the well-known character of the LEGO trademark, the Respondent must have been aware of the Complainant and its LEGO trademark at the time he registered the disputed domain name.

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B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:

(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 is being used in bad faith.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the term LEGO. Reference is made in particular to Indian registered trademark no. 240430, with priority since February 7, 1967 for “games and playthings” in class 28. This mark has also been duly renewed and is in force.

Prior UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.7).

This Panel shares this view and notes that the Complainant’s registered trademark LEGO is fully included in the disputed domain name, followed by the term “verse999”. Furthermore, it is the view of this Panel that the addition of the term “verse999” in the disputed domain name cannot prevent a finding of confusing similarity

between the disputed domain name and the Complainant’s trademark since the Complainant’s trademark is
clearly recognizable in the disputed domain name (see WIPO Overview 3.0 at section 1.8).

Finally, the generic Top-Level Domain (“gTLD”) “.com” of the disputed domain name is disregarded under the first element confusing similarity test (see WIPO Overview 3.0 at section 1.11.1).

In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

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Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the

Respondent lacks rights or legitimate interests in the disputed domain name.

According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and, in particular, did not authorize the Respondent’s use of the trademark LEGO, e.g. by registering the disputed domain name comprising the said trademark entirely.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

Finally, the Panel notes that the disputed domain name contains the Complainant’s registered and well-known trademark LEGO, and that the trademark LEGO is not a term that one would legitimately adopt as a domain name unless to suggest an affiliation with the Complainant. The Panel finds it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant’s reputation by registering a domain name fully containing the Complainant’s trademark and trade name with the intent to attract Internet users for commercial gain.

It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed
domain name has been registered and is being used in bad faith. The Policy indicates that certain
circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence
of the disputed domain name’s registration and use in bad faith.

Based on the evidence submitted by the Complainant, the Panel shares the view of other UDRP panels and finds that the Complainant’s trademark LEGO is well-known. Therefore, this Panel has no doubt that the Respondent knew or should have known that the disputed domain name consisted of the Complainant’s trademark when he registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed LEGO mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see e.g. Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955).

Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the
findings that the Respondent has registered and is using the disputed domain name in bad faith, including
(1) the nature of the domain name, i.e. incorporating the Complainant’s well-known trademark LEGO; (2) the
content of any website to which the domain name directs, e.g. the disputed domain name resolves to an
unauthorised website offering LEGO Non-Fungible Tokens – (“NFTs”); (3) a clear absence of rights or
legitimate interests coupled with no credible explanation for the Respondent’s choice of the domain name;
(4) the Respondent did not provide any response with a plausible explanation of its behavior or good faith
use (see e.g. WIPO Overview 3.0 at section 3.2.1).

Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. The Complainants are therefore deemed to also have satisfied the third element, paragraph 4(a)(iii) 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 disputed domain name <legoverse999.com> be transferred to the Complainant.

/Federica Togo/
Federica Togo
Sole Panelist
Date: April 12, 2023