LEGO Juris A/S v Milon Khan, hongbaocomau

WIPO Case No. D2024-5240

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Milon Khan, hongbaocomau

Case No. D2024-5240

1. The Parties

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

Sweden.

The Respondent is Milon Khan, hongbaocomau, Australia.

2. The Domain Name and Registrar

The disputed domain name <legos.space> is registered with Hostinger, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20,

2024. On December 20, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the disputed domain name. On December 21, 2024, the Registrar transmitted

by email to the Center its verification response confirming that the Respondent is listed as the registrant and

providing the contact details. The Center sent an email communication to the Complainant on December 23,

2024, providing the registrant and contact information disclosed by the Registrar.

The Center verified that the 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 December 27, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was January 16, 2025. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on January 17, 2024.

The Center appointed Geert Glas as the sole panelist in this matter on January 22, 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.

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4. Factual Background

The Complainant is a limited company incorporated in Denmark which makes and sells LEGO branded toys.

The Complainant is the owner of the LEGO brand and all other trademarks used in connection with the

LEGO branded construction toys and other LEGO branded products. The Complainant has subsidiaries and

branches throughout the world, and LEGO branded products are sold in more than 130 countries, including

in Australia.

The Complainant owns a large number of trademark registrations throughout the world which consist of the

word LEGO and covering a multitude of product and service classes, including class 28 (toys, parts thereof

and accessories thereto). These trademark registrations include:

- Australian trademark registration No. 129258, registered on September 17, 1956;

- United Kingdom registration No. UK00000754628, registered on June 11, 1956; and

- Danish trademark registration No. VR195400604, registered on May 1, 1954.

In third-party rankings of recognised consumer brands, the Complainant’s LEGO brand is consistently

ranked among the strongest and best-known brands and the Complainant itself as one of the most reputable

global companies.

The Complainant also owns close to 5,000 domain names containing the term “lego”, including the domain

name <lego.com> which links to its main official website. The Complainant has been a successful

complainant in hundreds of domain name dispute proceedings under the Policy involving the LEGO

trademark.

The disputed domain name was registered on January 17, 2024.

The Complainant sent several letters to the Respondent, seeking the transfer of the disputed domain name

and proposing to reimburse the out-of-pocket expenses of the Respondent for the registration and the

transfer of the disputed domain name. In its reply the Respondent indicated that its intention was to create

“a space where individuals can showcase their LEGO creations” and insisted on a “suitable compensation”

by way of a Binance cryptocurrency payment. No agreement was however reached.

The Complainant has provided evidence showing that the disputed domain name does not resolve to an

active website and that the disputed domain name is being offered for sale for an amount in excess of the

out-of-pocket costs of the Respondent related to the registration of the disputed domain name.

The Respondent is Milon Khan, an individual with an address in Australia who seems to also use

“hongbaocomau” as his name.

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 name.

Notably, the Complainant contends that its distinctive LEGO trademark has, through decades of use,

become well-recognized and world famous.

The disputed domain name comprises the LEGO trademark in its entirety followed by the single letter “s”.

As a result, the disputed domain name is confusingly similar to the LEGO mark as this added letter does not

detract from the overall impression which is one of visual and phonetic similarity.

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The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the

disputed domain name as the Respondent is not connected to nor affiliated with the Complainant and no

license or authorization of any kind has been given to the Respondent to use the Complainant’s LEGO.

The Complainant has not found any evidence suggesting that the Respondent would own any trademark or

trade name corresponding to the disputed domain name. To the contrary, neither the names

“hongbaocomau” nor “Milon Khan” which are being used by the Respondent resemble the disputed domain

name in any manner.

The Complainant points out that the disputed domain is not being used in connection with a bona fide

offering of goods or services as the Respondent has intentionally chosen a domain name based on a

registered trademark in order to merely offer it for sale for an amount which far exceeds its out-of-pocket

expenses in registering the disputed domain name. According to the Complainant, such passive use of the

disputed domain name is not consistent with a bona fide offering of goods or services nor a legitimate

noncommercial or fair use of the disputed domain name.

The Complainant contends that the disputed domain name was registered in bad faith as its reputable LEGO

mark which was first registered in the 1950s has accrued substantial and widespread goodwill in Australia

and elsewhere. As a result, the Respondent cannot have selected and registered the disputed domain name

without being aware of the Complainant’s rights to its LEGO trademark.

The Complainant finally contends that the Respondent also used the disputed domain name in bad faith.

Reference is thereby made to the doctrine of passive holding according to which “use” does not necessarily

require a positive act on the part of a respondent as passively holding a domain name can constitute a factor

in finding bad faith use pursuant to the Policy.

According to the Complainant the fact that the Respondent is not making any use whatsoever of the disputed

domain name other than offering it for sale for valuable consideration in excess of its out-of-pocket expenses

demonstrates such bad faith. Moreover, the Complainant contends that is not possible to conceive of any

plausible actual or contemplated active use of the disputed domain name by the Respondent that would not

be illegitimate.

B. Respondent

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

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 entirety of the LEGO mark is reproduced within the disputed domain name. Accordingly, the disputed

domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0,

section 1.7.

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The only difference between the disputed domain name and the LEGO mark of the Complainant is the

presence of an additional letter “s” which is added at the end of the disputed domain name. This difference

however does not prevent a finding of confusing similarity between the disputed domain name and the mark

for the purposes of the Policy.

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 disputed 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 disputed domain name such as those enumerated in the

Policy or otherwise.

The Respondent has indeed not challenged the Complainant’s statement that it is not connected to the

Respondent and has never authorized the Respondent to use its LEGO trademark. Moreover, there is no

evidence whatsoever of the Respondent using the disputed domain name with a bona fide offering of goods

or services, the Respondent being commonly known by the disputed domain name or the Respondent

making a legitimate noncommercial or fair use of the disputed domain name.

Indeed, the fact that the Respondent is offering the disputed domain name for sale cannot be considered a

bona fide offering nor a legitimate noncommercial or fair use of the disputed domain name.

Moreover, it is difficult to see how the Respondent could put the disputed domain name consisting of a

combination of the Complainant’s trademark and an additional letter “s” at the end, to a fair or legitimate

noncommercial use.

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.

As to the registration of the disputed domain name, it should be noted that panels have consistently found

that the mere registration of a domain name which is 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

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This is clearly the case here, as LEGO had become a widely-known trademark long before the disputed

domain name was registered by the Respondent. As a result, the Respondent knew or should have had

knowledge of the LEGO trademark when registering the disputed domain name. This is confirmed by the

Respondent’s statement in its reply to the Complainant’s cease and desist letter that its intention was to

create “a space where individuals can showcase their LEGO creations”.

Moreover, it cannot be envisaged how the disputed domain name in which a mere letter “s” is added to the

LEGO mark of the Complainant could be put to any bona fide use by an entity which is unrelated to the

Complainant.

Based on the available record, the Panel finds that the disputed domain name has been registered in bad

faith.

Panels have found that the non-use of a domain name 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 and reputation of the

Complainant’s mark, the composition of the disputed domain name as well the implausibility of any good faith

use to which the disputed domain name could be put. In view of these circumstances, the passive holding of

the disputed domain name by the Respondent does not prevent a finding of bad faith under the Policy.

As indicated above, the Respondent refused the offer of the Complainant to reimburse its out-of-pocket costs

relating to the registration and transfer of the disputed domain name and insisted on a “suitable

compensation” by way of a Binance cryptocurrency payment. The disputed domain name is also being

offered for sale to third parties for an amount in excess of the costs borne by the Respondent when

registering it.

Both these circumstances indicate that the Respondent registered the disputed domain name primarily for

the purpose of selling it to the Complainant or to a competitor of the Complainant, for valuable consideration

likely in excess of its documented out-of-pocket costs directly related to the disputed domain name.

Based on the available record, the Panel finds that the Respondent’s registration and use of the disputed

domain name constitute bad faith under the Policy and 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 name <legos.space> be transferred to the Complainant.

/Geert Glas/

Geert Glas

Sole Panelist

Date: February 5, 2025