LEGO Juris A/S v Mitra Haman

WIPO Case No. D2023-3129

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Mitra Haman

Case No. D2023-3129

1. The Parties

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

Sweden.

The Respondent is Mitra Haman, Canada.

2. The Domain Name and Registrar

The disputed domain name <وﮕﻟ.com> [xn--ghbi22a.com] is registered with CSL Computer Service

Langenbach GmbH dba Joker.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2023. connection with the disputed domain name. On July 21, 2023, 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 (CA) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 26, 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 July 31, 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 August 3, 2023. In accordance with the Rules, paragraph 5,
the due date for Response was August 23, 2023. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on August 29, 2023.

The Center appointed Kaya Köklü as the sole panelist in this matter on September 4, 2023. 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 trademark commonly known in relation to construction toys.
The Complainant has subsidiaries and branches throughout the world and its products are sold in more than
130 countries, including in Canada, where the Respondent is reportedly located.

The Complainant owns a large number of word and figurative LEGO trademark registrations around the world. According to the Complaint, the Complainant is, among many others, the registered owner of the Canadian Trademark Registration No. 0236250 (registered on April 26, 1957), and the Iranian Trademark

Registration No. 25637 (registered on July 11, 1964), both for LEGO, and inter alia covering protection for toys (Annexes 3.1, 3.2, and 3.3 to the Complaint).

The Complainant additionally owns more than 5,000 domain names comprising its LEGO trademark

(Annex 5 to the Complaint).

The disputed domain name was created on July 2, 2019.

The screenshots, as provided by the Complainant, show that the disputed domain name is connected to a website which offers LEGO products for sale, without providing for a visible disclaimer describing the (lack of) relationship between the Parties (Annex 8 to the Complaint). The associated website also prominently displays the Complainant LEGO logo together with pictures of the Complainant’s products.

On March 13, 2023 (and followed by various reminders), the Complainant sent a cease-and-desist letter to the Respondent and tried to solve the dispute amicably by requesting a transfer of the disputed domain name (Annex 9 to the Complaint).

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.

B. Respondent

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

6. Discussion and Findings

According to paragraphs 14 and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with
the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the
Complaint where no substantive response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i)        the disputed domain name is identical or confusingly similar to a trademark 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.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not substantively replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

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However, concerning the uncontested information provided by the Complainant, the Panel may, where
relevant, accept the provided reasonable factual allegations in the Complaint as true. See WIPO Overview
3.0 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 4.3.

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

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. See WIPO Overview 3.0, section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in the LEGO trademark by virtue of various trademark registrations. WIPO Overview 3.0, section 1.2.1.

The Panel notes that the disputed domain name is a transliteration (the representation in letters or words in the corresponding characters of another alphabet) of the LEGO trademark in Persian language. In line with the consensus view in the WIPO Overview 3.0, section 1.14, the Panel finds that a domain name consisting of a transliteration of a trademark is identical or confusingly similar to such trademark for purposes of

standing under the Policy, where the trademark is incorporated into the domain name through such
transliteration.

In view of the above, the Panel finds the LEGO trademark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the LEGO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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.

While 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 often impossible 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. 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 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. Furthermore, the nature of the disputed domain name, comprising a transliteration of the Complainant’s LEGO trademark, indicates an awareness of the Complainant and its trademark and intent to take unfair advantage of such, which does not support a finding of any rights or legitimate interests.

In the absence of a response, 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.

Based on the available record, the Panel finds the second element of the Policy has been established.

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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.

In the present case, the Panel notes that the Respondent must have had the Complainant and its widely- known LEGO trademark in mind when registering the disputed domain name. It is obvious to the Panel, that the Respondent has deliberately chosen the disputed domain name to target and mislead third parties. Consequently, the Panel is convinced that the Respondent has registered the disputed domain name in bad faith.

With respect to the use of the disputed domain name in bad faith, the Panel notes that the disputed domain name is connected to a website featuring the Complainant’s LEGO trademark and logo, and promoting different kind of toys and toy sets for sale (Annex 8 to the Complaint).

The Panel further notes that the Respondent has not published any recognizable disclaimer on the website associated to the disputed domain name to explain that there is no existing relationship between the Respondent and the Complainant. Rather, the prominent use of the Complainant’s LEGO wordmark together with the LEGO logo as well as the inherently misleading nature of the disputed domain name is, in view of the Panel, sufficient evidence that the Respondent intentionally tries to attract, for illegitimate commercial gain, Internet users by creating a likelihood of confusion with the Complainant.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

Consequently, the Panel finds the third element of the Policy has been established.

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 <وﮕﻟ.com> [xn--ghbi22a.com] be transferred to the Complainant.

/Kaya Köklü/ Kaya Köklü Sole Panelist Date: September 18, 2023