LEGO Juris A/S v My Store Admin, Wrangler Bags

WIPO Case No. D2024-2560

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. My Store Admin, Wrangler Bags

Case No. D2024-2560

1. The Parties

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

Sweden.

The Respondent is My Store Admin, Wrangler Bags, India.

2. The Domain Name and Registrar

The disputed domain name <lego-closeouts.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2024.
On June 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On June 24, 2024, 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 (Contact Privacy Inc. Customer 0170414012) and contact
information in the Complaint. The Center sent an email communication to the Complainant on June 26,
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 amended Complaint on

June 26, 2024.

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 July 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2024.

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The Center appointed Mihaela Maravela as the sole panelist in this matter on August 2, 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.

4. Factual Background

The Complainant has supplied construction toys and related products under the trademark LEGO for decades. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in India. According to the official Top 10 Consumer Superbrands for 2019, provided by Superbrands UK, LEGO is number 1 Consumer Superbrand and number 8 in the Consumer Relevancy Index.

The Complainant owns many registered trademarks for LEGO including the United States trademark No.
1018875, registered on August 26, 1975, in class 28. The Complainant operates a website at

“ and is the owner of many domain names containing the term LEGO.

The disputed domain name was registered on March 2, 2024, and does not resolve to an active website.

The Complainant has sent a cease-and-desist letter to the Respondent on March 19, 2024, but despite the reminders sent, no reply was received.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for the transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the LEGO, identical to the registered trademark LEGO of the Complainant. In addition to the trademark LEGO, the disputed domain name also adds the term “closeouts” which does not diminish the confusing similarity between the disputed domain name and the Complainant’s trademark. According to the Complainant, it maintains an online shop where it also offers products on sale and special offers thus, making the suffix “closeouts” closely linked and associated with the Complainant’s brand and trademark.

As regards the second element, the Complainant argues that no license or authorization of any kind has been given by the Complainant to the Respondent to use the trademark LEGO. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Rather, the

domain name redirects Internet users to a website that resolves to a blank page and lacks content. The Complainant also submits that the Respondent is identified as “My Store Admin / Wrangler Bags”, which does not resemble the disputed domain name in any manner.

With respect to the third element, the Complainant argues that the trademark LEGO in respect of toys belonging to the Complainant has the status of a well-known and reputable trademark with a substantial and widespread goodwill throughout the world. The Respondent registered the disputed domain name on March 2, 2024, which is well after when the Complainant registered the trademark LEGO. There is no connection between the Respondent and the Complainant.

By passively holding the disputed domain name, the Respondent is not making a legitimate non-commercial or fair use. Moreover, the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which UDRP panels have held serves as further evidence of bad faith registration and use.

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B. Respondent

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

6. Discussion and Findings

No response has been received from the Respondent in this case. Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of the Rules. The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, and the Panel can draw certain inferences in light of the particular facts and circumstances of the case. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (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.

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.

The Complainant has shown rights in respect of the trademark LEGO for the purposes of the Policy. WIPO
Overview 3.0, section 1.2.1.

The entirety of the 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.

Although the addition of other terms (here, “closeouts”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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

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demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the
Policy or otherwise.

There is no evidence of the Respondent’s use of, or 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. Rather, according to the unrebutted evidence provided by the Complainant, the disputed domain name does not resolve to an active website, which according to the Panel does not give rise to any rights or legitimate interests in the disputed domain name.

Also, there is no evidence that the Respondent is commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

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.

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.

According to the unrebutted assertions of the Complainant, its LEGO trademark was widely used in commerce well before the registration of the disputed domain name and is reputed. The disputed domain name is confusingly similar to the Complainant’s trademark. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name. The Respondent provided no explanations for why it registered the disputed domain name.

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 trademark, and the composition of the

disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed

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

The Panel finds 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 <lego-closeouts.com> be transferred to the Complainant.

/Mihaela Maravela/
Mihaela Maravela
Sole Panelist
Date: August 15, 2024