LEGO Juris A/S v Rouger Chuk

WIPO Case No. D2024-5210

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Rouger Chuk

Case No. D2024-5210

1. The Parties

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

Sweden.

The Respondent is Rouger Chuk, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <legoholdingcompany.com> is registered with Hostinger Operations, UAB

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2024. On December 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 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 (Domain Admin, Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 20, 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 December 23, 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 January 8, 2025. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2025.

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The Center appointed Mehmet Polat Kalafatoğlu as the sole panelist in this matter on February 7, 2025.
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 is LEGO Juris A/S, a company incorporated in Denmark. The Complainant is the owner of
the LEGO trademark and other related trademarks used in connection with the well-known LEGO
construction toys and other LEGO branded products. The Complainant also uses its LEGO trademark to
offer computer hardware and software, books, videos, and computer controlled robotic construction sets.
The Complainant has subsidiaries and branches around the world, and LEGO products are sold in more than
130 countries, including in the US, where the Respondent is located.

The Complainant has a very extensive portfolio of LEGO trademarks registered in many countries around the world (including in the US, where the Respondent is located), such as:

- the US trademark LEGO, No. 1018875, registered on August 26, 1975, in the international

class 28;

- the US trademark LEGO, No. 1248936, registered on August 23, 1983, in the international

classes 16, 20, 22, and 25; and

- the Swiss trademark LEGO, No. 281090, registered on March 3, 1976, in the international class 28.

In addition, several prior UDRP decisions recognized the distinctive and well-known nature of the
Complainant’s LEGO trademark (including, LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692;
LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; LEGO Juris A/S v. Paul Clark, WIPO Case
No. D2024-0383).

The Complainant also demonstrated that it owns more than 5,000 domain names containing the mark LEGO, including the domain name <lego.com>.

The disputed domain name was registered on April 27, 2024. It resolves to a website where the Respondent allegedly offers construction materials, services, and solutions under the “LEGO Holding Construction and Sales Company” business name. The website displays several addresses in different countries, including an office address in the Netherlands, which appears as the primary location.

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. Notably, the Complainant contends that the trademark LEGO is among the
best-known trademarks in the world, and it has substantial inherent and acquired distinctiveness. The well-
known nature of the LEGO trademark provides the Complainant with the right to prevent any use of the
LEGO trademark or a confusingly similar denomination in connection with any products or services.
The Complainant’s contentions regarding the three elements under the Policy can be summarized as follows.

First, the Complainant contends that the disputed domain name is confusingly similar to the LEGO trademark because its dominant part comprises the term LEGO, the addition of the generic terms “holding” and “company” does not diminish the confusing similarity between the disputed domain name and the LEGO trademark. Additionally, there is a considerable risk that the public will perceive the disputed domain name

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as either owned by the Complainant or somehow connected to the Complainant. The Complainant further
notes that the Respondent exploits the goodwill and the image of the Complainant’s trademark by using it as
the dominant part of the disputed domain name.

Second, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant, inter alia, asserts that any use of a well-known trademark in a domain name by an unaffiliated entity would violate the rights of the trademark owner; it has not licensed or authorized the Respondent to use the LEGO trademark; and the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. Especially, the Complainant notes that the Respondent claims to be trading under the name “LEGO Holding Construction and Sales”. In this regard, the Complainant, first, argues that the mere registration of a company name does not establish the Respondent’s exclusive right in that name nor provides authority to register domain names that infringe the rights of trademark owners. Second, the Complainant submits that it was unable to find any business registration under this business name at the Dutch Chamber of Commerce, and the displayed contact information in the Netherlands points to a residential address with no registered businesses. According to the Complainant, this suggests that the company allegedly trading under this business name is not a legitimate entity. Finally, the Complainant notes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent intentionally chose the disputed domain name to benefit from the Complainant’s world-famous trademark.

Third, the Complainant argues that the disputed domain name was registered and is being used in bad faith. The Complainant submits that the LEGO trademark has the status of a well-known and reputable trademark with substantial and widespread goodwill around the world. Considering the registration dates of the LEGO trademarks and the disputed domain name, it is obvious that the Respondent was motivated by the fame of the LEGO trademark in registering the disputed domain name. The Complainant notes that before filing the Complaint, it tried to contact the Respondent through a cease-and-desist letter. However, it was unable to

deliver this email since the only available contact information displayed on the website connected to the Respondent has targeted the LEGO trademark, which is famous for its construction toys, to attract visitors to its website for its construction related goods and services for commercial gain. Furthermore, the Complainant claims that in addition to the false information displayed on the website in relation to the business name and contact details, the Respondent appears to have forged the personal data of individuals to create the “Team” section of the website. Finally, the Complainant asserts that the layout and images used on the website point to several unrelated websites, all of which prove that the Respondent is engaged in fraudulent activities involving the use of the disputed domain name.

disputed domain name appears to be invalid. This is further evidence of the Respondent’s bad faith. The

B. Respondent

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

6. Discussion and Findings

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 of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

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.

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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, “holding” and “company” may bear on assessment of the second
and third elements, the Panel finds the addition of such terms 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 demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

In this regard, the Panel considers the Complainant’s assertion that it never authorized the Respondent to use its globally well-known and distinctive LEGO trademark as a part of the disputed domain name or in any other way. Furthermore, the Respondent has failed to provide any explanation or evidence of why it chose the disputed domain name, which fully incorporates the well-known LEGO trademark with the addition of the generic terms “holding” and “company”.

As explained above, the disputed domain name resolves to a website of a purported construction company under the “LEGO Holding Construction and Sales Company” business name with a primary contact address in the Netherlands. However, the Complainant has provided evidence that no such company exists on the

Dutch Chamber of Commerce registry. Moreover, it appears that the said website contains further false information copied from other websites and a range of typos and grammatical anomalies that one would not expect from a legitimate company. In the absence of any response and based on the available record, the Panel is convinced that the Respondent tried to create the false appearance of a corporate website of a construction company which, in reality, does not exist, and acted with the intention to take unfair advantage of the LEGO trademark. In the Panel’s view, such use cannot give rights or legitimate interests in a domain name under the Policy.

Therefore, the Panel finds that 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.

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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.

Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.

In addition, the Panel notes that the Complainant’s registered trademark LEGO predates the registration of the disputed domain name for decades. The Panel finds that the LEGO trademark is highly distinctive and globally well-known. The Panel also considers that the Respondent, without having rights or legitimate

addition of the generic terms “holding” and “company”. It is obvious that the Respondent was aware of the	interests, registered the disputed domain name, which fully incorporates the LEGO trademark with the confusingly similar to the well-known LEGO trademark and nevertheless registered it in order to take unfair advantage of the LEGO trademark.
Considering the use of the disputed domain name explained above and the conclusions reached under the previous section, the Panel finds that the Respondent acted in bad faith by intentionally attempting to attract, for commercial or other gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website.
Having reviewed the available record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Respondent’s failure to submit a response further supports this determination.
Therefore, 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 <legoholdingcompany.com> be transferred to the Complainant.
/Mehmet Polat Kalafatoglu/ Mehmet Polat Kalafatoglu Sole Panelist Date: February 21, 2025