LEGO Juris A/S v ssaddd dasdsada

WIPO Case No. D2024-0771

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. ssaddd dasdsada

Case No. D2024-0771

1. The Parties

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

Sweden.

The Respondent is ssaddd dasdsada, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <legomaniaworld.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2024. On February 20, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 21, 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 February 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 February 26, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2024.

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The Center appointed María Alejandra López as the sole panelist in this matter on March 22, 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 belongs to the LEGO Group, a recognized Danish construction toys manufacturer company founded in 1932 by Mr. Ole Kirk Kristiansen, a master carpenter who created next to his son Godtfred Kirk Christiansen, the LEGO brick. The word “Lego” is an abbreviation of the two Danish words “leg godt”, which means “play well”. The Complainant’s use of the Trademark LEGO has now been expanded to identify computer hardware and software, books, videos, and computer controlled robotic construction sets.

The Complainant owns trademarks for or consisting of LEGO across the world, including the following:

-US Trademark for LEGO (word mark), Reg. No. 1018875, in International Class (“IC”) 28, registered on

August 26, 1975, and in force until August 26, 2025.

-US Trademark for LEGO (word mark), Reg. No. 1248936, in ICs 16, 20, 22, and 25, registered on August

23, 1983, and in force until August 23, 2033.

-Canadian Trademark for LEGO MANIA (word mark), Reg. No. TMA454004, in ICs 12, 28, 35, 36, and 41,
registered on February 9, 1996, and in force until February 9, 2026.

The Complainant also owns over 6,000 domain names containing the Trademark LEGO under different generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), including its official website and domain name <lego.com> registered since August 22, 1995.

According to the evidence presented, LEGO is a well-known Trademark, which status has been also
recognized through the years by previous panels, as in e.g.: LEGO Juris A/S v. Vahid Kiumarsi, Lego Art,
WIPO Case No. D2024-0110; LEGO Juris A/S v. Nguyen Xuan Hau, WIPO Case No. D2023-4439; LEGO
Juris A/S v. ayoub lagnadi, WIPO Case No. D2022-3337; LEGO Juris A/S v. FUNDATIA LEGO SCHOOL,
Pre-School Educational Center Foundation and CENTRUL EDUCATIONAL LEGO DACTA, Lego Dacta
Educational Center, WIPO Case No. DRO2012-0008; Lego Juris A/S v. Synergy Management, Fred Shear,
WIPO Case No. D2007-1028.

The disputed domain name was registered on January 26, 2024, and resolved to a website store allegedly selling the Complainant’s LEGO products without authorization. Prior to the present dispute, the Complainant requested the website’s takedown, henceforth the disputed domain name has remained inactive.

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.

B. Respondent

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

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6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must satisfy each of the three following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark 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.

No Response or any kind of communication has been submitted by the Respondent, despite the fair
opportunity given by the Center to present its case in accordance with paragraph 2(a) of the Rules.
However, the Complainant must establish the three elements of paragraph 4(a) of the Policy. See WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section
4.3. Therefore, this Panel shall analyze the evidence submitted by the Complainant and decide this dispute
under the “balance of probabilities” or “preponderance of the evidence” standard. See, paragraphs 14 and

15(a) of the Rules, and WIPO Overview 3.0, section 4.2.

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 its LEGO and LEGO MANIA Trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The entirety of the Complainant’s Trademarks LEGO and/or LEGO MANIA are reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the Trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds that the additional term or terms “mania” and/or “world” do not prevent a finding of confusing
similarity between the disputed domain name and the Complainant’s Trademarks for the purposes of the

Policy. WIPO Overview 3.0, section 1.8.

In relation to the generic Top-Level Domain “.com”, it is well established that such element may typically be
disregarded when it is used as a technical requirement of a domain name. WIPO Overview 3.0, section

1.11.1.

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

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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.

The Panel finds, as the Complainant argued and proved, that the Respondent used the disputed domain name to set up an online store to allegedly offer to sell the Complainant’s LEGO products, bearing an altered version of Complainant’s Trademarks, without any kind of authorization, which doesn’t constitute a bone fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy and/or a legitimate noncommercial use or fair use within the meaning of paragraph 4(c)(ii) of the Policy. The Panel also finds that the Respondent’s use doesn’t comply with the Oki Data Test criterion either. WIPO Overview 3.0, section 2.8.

In relation to it, panels have held that the use of a domain name for illegal activity, here claimed as potential sale of counterfeit goods, passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Furthermore, the Respondent has not become commonly known by the disputed domain name, or owns any trademarks either, within the meaning of paragraph 4(c)(ii) of the Policy. Also, there is no commercial relationship between the Complainant and the Respondent, since the Complainant has never granted any authorization or license to the Respondent to use its Trademark LEGO and/or LEGO MANIA, in any way, including as a domain name.

The Panel finds the second element of the Policy has been established.

C. Registered and Used 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.

In the present case, given the worldwide extent of the Complainant’s business activity, product’s recognition, and well-known status of the Trademark LEGO, including in the United States where Respondent is reportedly located, it is almost impossible that the Respondent was not aware of it at the time of the registration of the disputed domain name. Therefore, to this Panel, the Respondent did register the disputed domain name with the Complainant and its Trademark in mind. WIPO Overview 3.0, section 3.2.2.

As described along this Decision, the disputed domain name resolved to a website for allegedly selling the paragraph 4(b)(iv) of the Policy, incurring bad faith use as well.

In relation to it, panels have held that the use of a domain name for illegal activity, here claimed as potential sale of counterfeit goods, passing off, or other types of fraud, constitutes bad faith. WIPO Overview 3.0, section 3.4.

Finally, the Panel notes that the recent inactive use of the disputed domain name, doesn’t prevent a finding of bad faith use, under the passive holding doctrine. WIPO Overview 3.0, section 3.3.

Therefore, having reviewed the record, the Panel finds that the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

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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 <legomaniaworld.com> be transferred to the Complainant.

/María Alejandra López/
María Alejandra López
Sole Panelist
Date: April 5, 2024