LEGO Juris A/S v Mohammad Javad Motavaselian, GreenHost

WIPO Case No. D2023-2160

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Mohammad Javad Motavaselian, GreenHost

Case No. D2023-2160

1. The Parties

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

Sweden.

The Respondent is Mohammad Javad Motavaselian, GreenHost, Denmark.

2. The Domain Name and Registrar

The disputed domain name <3mlego.com> (the “Disputed Domain Name”) 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 May 16, 2023. On
May 17, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On May 19, 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 (GreenHost) and contact information in the Complaint. The
Center sent an email communication to the Complainant on June 9, 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 June 13, 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 June 14, 2023. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2023.

The Center appointed Nicholas Weston as the sole panelist in this matter on July 10, 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 operates a business selling toys in more than 130 countries. The Complainant holds registrations for the LEGO trademark and variations of it in numerous countries including Denmark trademark registration no. VR195400604, for the mark LEGO, registered on May 1, 1954 in class 28.

The Complainant conducts business on the Internet using numerous domain names containing the word
“lego”, including <lego.com>, with a toy business website resolving from these domains. The Complainant
also owns more than 5,000 domain names comprising or containing the word “lego”.

The Disputed Domain Name <3mlego.com> was registered on January 8, 2023 and redirects to <3mlego.ir>, which resolves to webpage bearing the Complainant’s trademarks and products.

5. Parties’ Contentions

A. Complainant

The Complainant cites its trademark registrations in numerous countries for the mark LEGO and variations of it, as prima facie evidence of ownership.

The Complainant submits that the mark LEGO is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is identical to its trademark, because the Disputed Domain Name is solely comprised of the LEGO trademark

and that the identity is not removed by the addition of the prefix “3m” or the generic Top-Level Domain

(“gTLD”) “.com”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the dealer of the Complainant’s products and has never had a business relationship with the Complainant.” The Complainant contends, in summary, that none of the circumstances set out in paragraph 4(c) of the Policy apply.

Disputed Domain Name because “[n]o license or authorization of any other kind, has been given by the

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and the Rules having regard to the prior use and well-known nature of the Complainant’s trademark, and submits that the “Respondent has included Complainant’s LEGO trademark, logo, logotype and color scheme on the [Disputed] Domain Name’s website…[in]… a direct effort to take advantage of the fame and goodwill that [the] Complainant has built in its brand” which amounts to bad faith registration and use”.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i)        that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)       that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii)      that the Disputed Domain Name has been registered and is being used in bad faith.

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A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark LEGO in numerous countries. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1).

Turning to whether the Disputed Domain Name is identical or confusingly similar to the LEGO trademark, the exact reproduction of the Complainant’s trademark LEGO; (c) followed by the gTLD “.com”.

It is well established that the gTLD used as part of a domain name is generally disregarded under the first element confusing similarity test (WIPO Overview 3.0, section 1.11.1). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “3mlego”.

WIPO Overview 3.0, section 1.7).

As the relevant mark is incorporated in its entirety and as such is recognizable in the Disputed Domain confusing similarity under the first element. This Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant’s LEGO trademark for purposes of UDRP standing (see

Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate
interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish
the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of
the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put
forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production
then shifts to the Respondent to rebut that prima facie case (see WIPO Overview 3.0, section 2.1).

The Complainant submits that “[n]o license or authorization of any other kind, has been given by the authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant…[and that] LEGO is a famous trademark worldwide.” It is contended that nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.

The Panel accepts the Complainant’s uncontested evidence that the Disputed Domain Name redirects to <3mlego.ir>, which resolves to a webpage that contains images of the Complainant’s products and its logo and finds that this does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the substantial reputation and goodwill of the Complainant’s mark or capacity to otherwise mislead Internet users. As the Respondent is not an authorized reseller with legitimate interests in a domain name incorporating a Complainant’s mark, and there is no disclaimer on the website that the Disputed Domain Name resolves to, the Respondent cannot meet the test set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

Given the fact the Disputed Domain Name incorporates the Complainant’s trademark in its entirety and the
nature of the use of the Disputed Domain Name, it is hard to conceive of a legitimate use to which the

Disputed Domain Name could be put.

On balance, the Panel is satisfied that a prima facie case exists that the Respondent lacks rights or
legitimate interests in the Disputed Domain Name. In view of the evidence that calls for an explanation from
the Respondent, and in the absence of a Response by the Respondent, this Panel finds that the Respondent
has no rights or legitimate interests in respect of the Disputed Domain Name.

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The Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain circumstances to be construed as evidence of both of these conjunctive requirements.

The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed
Domain Name in bad faith.

On the issue of registration, taking into account the content of the Disputed Domain Name and the well- known nature of the Complainant’s trademark, the Panel is satisfied that the Respondent knew of and targeted the Complainant’s trademark LEGO when it registered the Disputed Domain Name (see LEGO Juris A/S v. LogoFusion, WIPO Case No. D2006-0270 (“the worldwide fame of the Complainant’s trademark”); Lego Juris A/S v. Synergy Management, Fred Shear, WIPO Case No. D2007-1028 (“LEGO is well-known in the United States”); LEGO Juris A/S v. Chung Hong Phil, WIPO Case No. D2009-1288 (“the Complainant’s trademarks are very well-known worldwide”)).

This Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Name
other than to trade off the reputation and goodwill of the Complainant’s well-known trademark (see WIPO
Overview 3.0, section 3.1.4).

Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name some 69 years after the Complainant established registered trademark rights in the LEGO mark.

On the issue of use, the Panel notes that the Disputed Domain Name was used to redirect to <3mlego.ir>,
which resolves to an online website that displayed the Complainant’s own trademarks and products. In line
with prior UDRP panel decisions, the Panel finds that given the Disputed Domain Name incorporates the
Complainant’s widely known mark, even with the additional prefix “3m”, and the clear absence of rights or
legitimate interests coupled with no credible explanation for the Respondent’s choice of the Disputed Domain
Name suggests that the Respondent had plainly targeted the Complainant (see WIPO Overview 3.0, section
3.2.1).

In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark LEGO and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <3mlego.com> be transferred to the Complainant.

/Nicholas Weston/
Nicholas Weston
Sole Panelist
Date: July 24, 2023