LEGO Juris A/S v Spear Edgar, Manzanares Tracie, Martinez Freeman

WIPO Case No. D2023-1280

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Spear Edgar, Manzanares Tracie, Martinez Freeman

Case No. D2023-1280

1. The Parties

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

Sweden.

The Respondents are Spear Edgar, United States of America (“United States”), Manzanares Tracie, United

States, and Martinez Freeman, United States.

2. The Domain Names and Registrar

The disputed domain names <legoméxico.com> [xn--legomxico-f4a.com], <legoperú.com> [xn--legoper- d2a.com], and <legotürkiye.com> [xn--legotrkiye-eeb.com] are all registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2023. connection with the disputed domain names. On March 27, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details.

The Center verified that the 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 Respondents of the Complaint, and the proceedings commenced on April 3, 2023. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2023. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 24, 2023.

The Center appointed Edoardo Fano as the sole panelist in this matter on April 27, 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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The Panel has not received any requests from the Complainant or the Respondents regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to [the] Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondents.

The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is LEGO Juris A/S, a Danish company mainly operating in the field of construction toys and owning several trademark registrations for LEGO, among which:

- United States Trademark Registration No. 1018875 for LEGO, registered on August 26, 1975;

- European Union Trademark Registration No. 000039800 for LEGO, registered on October 5, 1998.

The Complainant operates on the Internet at the main website “ as well as with many other generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) including the trademark LEGO.

The Complainant provided evidence in support of the above.

According to the WhoIs records, the disputed domain names, <legoméxico.com>, <legoperú.com>, and <legotürkiye.com>, Internationalized Domain Names (IDNs) represented and displayed in Unicode and equivalent to the Punycode or ASCII versions [xn--legomxico-f4a.com], [xn--legoper-d2a.com] and [xn-- legotrkiye-eeb.com], were registered on the following dates: <legoméxico.com> on December 21, 2022, <legoperú.com> on January 15, 2023, and <legotürkiye.com> on January 12, 2023. Before the Complaint

was filed, they all redirected to very similar websites in which the Complainant’s trademark and logo were
reproduced, also as favicons, and the same products as the Complainant’s were purportedly offered for sale

at discounted prices. The disputed domain names are currently inactive.

Before filing the Complaint, the Complainant’s representatives sent several cease-and-desist letters to the

Respondents without receiving any reply.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names are confusingly similar to its trademark LEGO, as the disputed domain names wholly incorporate the Complainant’s trademark, with the addition of the geographic terms “méxico”, “perú” and “türkiye”.

Moreover, the Complainant asserts that the Respondents have no rights or legitimate interests in respect of the disputed domain names since they have not been authorized by the Complainant to register the disputed domain names or to use its trademark within the disputed domain names, they are not commonly known by the disputed domain names, and they are not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. The disputed domain names were used

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by the Respondents in an attempt to pass off as the Complainant or mislead consumers into believing they
are authorized or sponsored by the Complainant.

The Complainant submits that the Respondents have registered the disputed domain names in bad faith, since the Complainant’s trademark LEGO is well known. Therefore, the Respondents targeted the Complainant’s trademark at the time of registration of the disputed domain names and the Complainant contends that the previous use of the disputed domain names to attract, for commercial gain, Internet users to websites in which the same products as the Complainant’s are offered for sale, by reproducing the Complainant’s trademark and logo, creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites, as well as the current passive holding of the disputed domain names, qualifies as bad faith registration and use.

B. Respondent

The Respondents have made no reply to the Complainant’s contentions and are in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3.

6. Discussion and Findings

6.1 Consolidation of Multiple Respondents

The Complainant has requested consolidation of multiple Respondents and stated that all the disputed
domain names belong to the same person or organization. No objection to this request was made by the
Respondents.

Pursuant to the WIPO Overview 3.0, section 4.11.2, “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. The Panel may consider a range of factors to determine whether consolidation is appropriate, such as examining relevant registrant contact information, and any naming patterns in the disputed domain names, or other evidence of respondent affiliation that indicate common control of the disputed domain names.

The Panel notes that all the disputed domain names have been all registered in the same short period of time, namely between December 21, 2022 and January 15, 2023, they follow the same naming pattern and used to resolve to almost identical websites, in which the same products as the Complainant’s were purportedly offered for sale and the Complainant’s trademark and logo were reproduced. The Panel finds that there is plausible evidence that the disputed domain names are subject to common control, and that it would be procedurally efficient, fair, and equitable to all Parties to accept the Complainant’s consolidation request. The Panel further notes that the Respondents did not object to the consolidation request. The Panel therefore accepts the Complainant’s consolidation request. Hereinafter, the Panel will refer to the Respondents in the singular, i.e., “the Respondent”.

6.2 Substantive Issues

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

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(i)        the disputed domain names are 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 names; and

(iii)      the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark LEGO both by registration and acquired reputation and that the disputed domain names, <legoméxico.com> [xn--legomxico-f4a.com], <legoperú.com> [xn--legoper-d2a.com], and <legotürkiye.com> [xn--legotrkiye-eeb.com], are confusingly similar to the trademark LEGO.

Previous UDRP panels have considered IDNs and their Punycode translation to be equivalent.

Regarding the addition of the terms “méxico”, “perú” and “türkiye”, the Panel notes that it is now well established that the addition of other terms (whether descriptive, geographical terms, letters, or otherwise) to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark. The additional terms do not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademark. See WIPO Overview 3.0, section 1.8.

It is also well accepted that a gTLD, in this case “.com”, is typically ignored when assessing the similarity between a trademark and a domain name. See WIPO Overview 3.0, section 1.11.1.

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain names.

The Respondent may establish rights or legitimate interests in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation:

“(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use,
the domain name[s] or a name corresponding to the domain name[s] in connection with a bona fide offering

of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain

name[s], even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name[s], without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy is potentially quite difficult, since proving a negative circumstance is generally more complicated than establishing a positive one. As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names in order to shift the burden of production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the

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disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the

Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

prima facie

The Complainant in its Complaint, and as set out above, has established a case that the domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. The disputed domain names were used by the Respondent in an attempt to pass off as the Complainant while seeking a commercial gain.

Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names.

Should the products purportedly sold on the website to which the disputed domain names were directing Internet users be the Complainant’s genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using the disputed domain names that are confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to confusion.

According to the current state of UDRP decisions in relation to the issue of resellers, distributors, or service providers as summarized in the WIPO Overview 3.0, section 2.8.1:

“[...] resellers, distributors, or service providers using a domain name containing the complainant’s trademark
to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide
offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki
Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i)        the respondent must actually be offering the goods or services at issue;

(ii)       the respondent must use the site to sell only the trademarked goods or services;

(iii)      the site must accurately and prominently disclose the registrant’s relationship with the trademark

holder; and

(iv)      the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”

This summary is based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.
D2001-0903.

Even if the products purportedly sold by the Respondent were the Complainant’s genuine products, from inspection of the Respondent’s websites, the Panel finds that the prominent use of the Complainant’s trademark and logo, also as favicons, and the lack of any disclaimer would not make, under the Oki Data principles (see above), a bona fide offering of goods and services and thus a legitimate interest of the Respondent in the disputed domain names.

The Panel therefore concludes that the disputed domain names are not being used in connection with a bona fide offering of goods or services.

Moreover, the Panel finds that the composition of the disputed domain names carries a risk of implied
affiliation as they effectively impersonate or suggest sponsorship or endorsement by the Complainant. See
WIPO Overview 3.0, section 2.5.1.

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Based on the facts of this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

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

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “[f]or the purposes of paragraph 4(a)(iii) of the Policy, the following
circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of
the registration and use of a domain name in bad faith:

(i)        circumstances indicating that [the respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name; or

(ii)       [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii)      [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)      by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location”.

Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark LEGO is clearly established and the Panel finds that the Respondent likely knew of the Complainant, and deliberately registered the disputed domain names in bad faith, especially because the disputed domain names resolved to websites consisting of advertising for the purported sale of the same products as the Complainant’s, prominently reproducing the Complainant’s trademark and logo.

The Panel further notes that the disputed domain names were also being used in bad faith since the Complainant’s trademark as to the disputed domain names’ source, sponsorship, affiliation or endorsement, in order to purportedly sell the same products as the Complainant’s without any disclaimer of the lack of relationship with the Complainant, an activity detrimental to the Complainant’s business.

The above suggests to the Panel that the Respondent intentionally registered and was using the disputed domain names in order both to disrupt the Complainant’s business, in accordance with paragraph 4(b)(iii) of the Policy, and to attract, for commercial gain, Internet users to its websites in accordance with paragraph 4(b)(iv) of the Policy.

As regards the actual use in bad faith of the disputed domain names, which currently resolve to inactive websites, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding does not prevent a finding of bad faith. See WIPO Overview 3.0, section 3.3. In support thereof, the Panel considers as relevant the notoriety of the Complainant’s trademark, the identical incorporation of said distinctive trademark, the Respondent’s failure to formally participate, the Respondent’s concealing its identity or use of false contact details, as well as the previous use of the disputed domain names.

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Furthermore, the Panel considers that the nature of the inherently misleading disputed domain names, which

include the Complainant’s trademark in its entirety with the mere addition of the terms “méxico”, “perú” and
“türkiye”, further supports a finding of bad faith. See, WIPO Overview 3.0, section 3.2.1.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.

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

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 names, <legoméxico.com> [xn--legomxico-f4a.com], <legoperú.com>

[xn--legoper-d2a.com], and <legotürkiye.com> [xn--legotrkiye-eeb.com], be transferred to the Complainant.

/Edoardo Fano/
Edoardo Fano
Sole Panelist
Date: May 4, 2023