LEGO Juris A/S v Mohammad javad Motavaselian

WIPO Case No. DIR2024-0002

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Mohammad javad Motavaselian

Case No. DIR2024-0002

1. The Parties

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

The Respondent is Mohammad javad Motavaselian, Iran (Islamic Republic of).

2. The Domain Name and Registrar

The disputed domain name <3mlego.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21,
2024. On February 22, 2024, the Center transmitted by email to IRNIC a request for registrar verification in
connection with the disputed domain name. On February 27, 2024, IRNIC 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 (Redacted) and contact information in the Complaint. The Center sent
an email communication to the Complainant on February 27, 2024, 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 amendment to the Complaint on March 4, 2024. Hard copies of the

Complaint were received by the Center on March 4, 2024.

The Center verified that the Complaint and the amendment to the Complaint satisfied the formal
requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir
Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain
Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 14, 2024. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2024. On April 4, 2024, the Center notified the Respondent’s default.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 16, 2024. 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 company manufacturing and commercializing the LEGO-branded construction toys and other LEGO-branded products. The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in Iran (Islamic Republic of) and elsewhere.

Over the years, the Complainant’s business of making and selling LEGO branded toys has grown
remarkably. The Complainant has subsidiaries and branches throughout the world, and LEGO products are
sold in more than 130 countries, including the jurisdiction where the Respondent is located. The
Complainant’s products and brands have received worldwide recognition and accolades, for example, the
Reputation Institute recognized the LEGO Group as number 1 on its list of the world’s Top 10 Most
Reputable Global Companies of 2020.

The Complainant has a large international trademark portfolio for the LEGO marks registered in different jurisdictions, including Japanese Trademark Registration No. 520470, registered on May 21, 1958, and Iranian Trademark Registration N. 25637, registered on July 11, 1964. The Complainant also has a strong online presence and is the owner of approximately 5,000 domain names containing the mark LEGO.

The disputed domain name was registered on April 17, 2021. The disputed domain name resolves to an unauthorized commercial website offering LEGO products. The Complainant’s logo is prominently displayed on the website.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is confusingly similar to its trademarks.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which a complainant must satisfy in order to succeed. The
Complainant must satisfy that:

(i)        the 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 such domain name; and

(iii)      the domain name has been registered or is being used in bad faith.

Given the similarities between the .irDRP and the Uniform Domain Name Resolution Policy (“UDRP”), the
Panel finds it appropriate to refer to UDRP jurisprudence, including reference to the WIPO Overview of
WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).

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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 3.0, section 1.7.

Based on the available record, the Panel finds 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 disputed domain name contains the mark of the Complainant with the addition of the term “3m”. The disputed domain name is confusingly similar to the mark for the purposes of the Policy.

Based on the available record, the Panel finds that 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 the 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.

The Complainant has claimed that, at the time of filing the Complaint, the disputed domain name resolved to an online store that was using images of the Complainant’s actual products, displaying the Complainant’s trademark without its authorization, and purportedly offering for sale the Complainant’s products.

The Panel finds that the Complainant has therefore 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.

The Panel considers that the record of this case reflects that:

- before any notice to the Respondent of the dispute, the Respondent did not use, nor made
demonstrable preparations to use, the disputed domain name or a name corresponding to the
disputed domain name in connection with a bona fide offering of goods or services. Paragraph 4(c)(1)
of the Policy.

- the Respondent (as an individual, business, or other organization) has not been commonly known by
the disputed domain name. Paragraph 4(c)(2) of the Policy.

- the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name,
without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or
service mark at issue. Paragraph 4(c)(3) of the Policy.

- the record contains no other factors demonstrating rights or legitimate interests of the Respondent in
the disputed domain name.

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The use of the disputed domain name and the lack of disclosure that of the relation (or lack thereof) of the
Respondent and the Complainant, indicates that the Respondent attempts to obtain undue commercial gain
by misleadingly diverting Internet users to the disputed domain name due to the similarity with the

Complainant’s marks. This cannot confer rights or legitimate interests on the Respondent.

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

C. Registered or 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.

The Panel considers that the record of this case reflects that the disputed domain name resolves to an online store images of the Complainant’s actual products available on its website, displaying the Complainant’s trademark without its authorization, and purportedly offering for sale the Complainant’s products.

In addition, the Panel notes that the Respondent was also the registrant of the domain name <3mlego.com>
for which the Complainant was granted a transfer decision (see LEGO Juris A/S v. Mohammad Javad
Motavaselian, GreenHost, WIPO Case No. D2023-2160).

As a result, there is no doubt that the Respondent knew about the existence of the Complainant and its trademarks. In the circumstances, the Panel finds that the Respondent registered the disputed domain name in bad faith.

The Panel concludes that the Respondent has intentionally attempted to attract, for commercial gain,
Internet users to its website or other online location, by creating a likelihood of confusion with the
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 the Respondent’s website or location. Paragraph 4(b)(iv) of the

Policy.

Based on the available record, 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 <3mlego.ir> be transferred to the Complainant.

/Pablo A. Palazzi/
Pablo A. Palazzi
Sole Panelist
Date: April 30, 2024.