LEGO Juris A/S v mstfi sdaght tlgrd

WIPO Case No. D2023-2130

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. mstfi sdaght tlgrd

Case No. D2023-2130

1. The Parties

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

Sweden.

The Respondent is mstfi sdaght tlgrd, Iran (Islamic Republic of).

2. The Domain Name and Registrar

The disputed domain name <legometaverse.top> 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 15, 2023. On
May 15, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On May 16, 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 (Redacted for Privacy) and contact information in the Complaint.
The Center sent an email communication to the Complainant on May 17, 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 May 18, 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 May 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2023.

The Center appointed James Wang as the sole panelist in this matter on June 14, 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.

page 2

4. Factual Background

The Complainant, based in Denmark, is the owner of LEGO and all other trademarks used in connection with the famous LEGO brands of 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 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 in Iran (Islamic Republic of).

The LEGO trademark and brand have been recognized as being famous. The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.

The Complainant has obtained numerous LEGO trademark registrations in different jurisdictions, including but not limited to the following:

- Iran (Islamic Republic of) trademark registration No. 56970, filed on June 16, 1983;

- China trademark registration No. 135134, registered on January 5, 1980; and

- United States trademark registration No. 1018875, registered on August 26, 1975.

The Complainant is the owner of close to 5,000 domain names containing the term “Lego”.

The disputed domain name was registered on November 19, 2022, and resolved to a website purportedly offering blockchain NFTs for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contended as follows:

The disputed domain name is identical or confusingly similar to the LEGO trademark in which the domain name. The disputed domain name was registered and is being used in bad faith.

The Complainant requested that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(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.

page 3

A. Identical or Confusingly Similar

The Complainant has provided evidence that it has obtained numerous LEGO trademark registrations across different jurisdictions.

The disputed domain name incorporates the entirety of the LEGO trademark. As the LEGO trademark is
recognizable within the disputed domain name, the disputed domain name is confusingly similar to the
Complainant’s LEGO trademark. The addition of the term “metaverse” into the disputed domain name does
not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP

Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The Panel therefore finds that the Complaint has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

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. See WIPO Overview 3.0, section 2.1.

According to the Complaint, no license or authorization of any other kind has been given by the Complainant
to the Respondent to use the trademark LEGO. Further, the Respondent is not an authorized dealer of the
Complainant’s products and has never had a business relationship with the Complainant.

The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Further, the Complainant has not found anything that would suggest that the Respondent has been using LEGO in any other way that would provide rights or legitimate interests in the disputed domain name.

The Respondent submitted no response or evidence to rebut the allegations of the Complainant, or to establish that the Respondent is making a bona fide use, or a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent failed to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

The Panel therefore finds that the Complaint has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has provided evidence that the Complainant’s LEGO trademark has been registered for nearly 50 years and is among the best-known trademarks in the world. A simple online search could reveal that the trademark LEGO is in wide use by the Complainant.

Given the above, it would be inconceivable that the Respondent registered the disputed domain name purportedly offering blockchain NFTs for sale. It is clear that the Respondent selected the disputed domain name to intentionally confuse unsuspecting Internet users into visiting its website. This indicates that the Respondent is seeking to cause confusion for the Respondent’s commercial benefit or has an intent to profit

without knowledge of the Complainant or the LEGO trademark at the time of the registration. The Panel
therefore finds that the disputed domain name was registered in bad faith.

page 4

in some fashion from the Complainant’s trademark. The Panel finds that the Respondent is using the

disputed domain name in bad faith. See WIPO Overview 3.0, section 3.1.4.

The Panel therefore finds that the Complaint has satisfied 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 <legometaverse.top> be transferred to the Complainant.

/James Wang/ James Wang Sole Panelist Date: June 28, 2023