LEGO Juris A/S v Steve Bialk

WIPO Case No. D2023-2129

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Steve Bialk

Case No. D2023-2129

1. The Parties

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

Sweden.

The Respondent is Steve Bialk, United States of America (“United States”).

2. The Domain Names and Registrars

The disputed domain names <bonsaitreelego.com>, <legobonsaitree.com>, <legobotanicalcollection.com>, and <legoflowers.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2023. On connection with the disputed domain names. On May 15, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is 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 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 16, 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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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 the United States 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 the United States.

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:

- United States trademark registration Number 1018875, registered on August 26, 1975;

- United States trademark registration Number 1248936, registered on August 23, 1983;

- United States trademark registration Number 1535046, registered on April 18, 1989; and

- United States trademark registration Number 1563848, registered on October 31, 1989.

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

The four disputed domain names were all registered on September 30, 2022, and resolved to websites displaying sponsored links.

5. Parties’ Contentions

A. Complainant

The Complainant contended as follows:

The disputed domain names are identical or confusingly similar to the LEGO trademark in which the domain names. The disputed domain names were registered and are being used in bad faith.

The Complainant requested that the disputed domain names 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 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.

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A. Identical or Confusingly Similar

The Complainant has provided evidence that it has obtained numerous LEGO trademark registrations across different jurisdictions. The Complainant is also the owner of numerous domain names consisting of or containing the term “Lego”.

The four disputed domain names each incorporates the entirety of the LEGO trademark. As the LEGO trademark is recognizable within the disputed domain names, the disputed domain names are confusingly similar to the Complainant’s LEGO trademark. The addition of the terms “bonsai” and “tree” to the disputed domain name <bonsaitreelego.com> and the disputed domain name <legobonsaitree.com>, or the addition of the terms “botanical” and “collection” to the disputed domain name <legobotanicalcollection.com>, or the addition of the term “flowers” to the disputed domain name <legoflowers.com>, 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 names. Further, the Complainant has not found anything that would suggest that the Respondent has been using LEGO in any other way that would provide legitimate rights in the disputed domain names.

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 names.

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 names.

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

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Meanwhile, the Complainant’s evidence shows that the disputed domain names resolved to websites displaying sponsored links and thereby they are clearly being used for commercial purposes. Consequently, the Respondent is using the disputed domain names to intentionally attempt to attract Internet users to its own websites for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites. The Panel finds that the Respondent is using the disputed domain names in bad faith. See WIPO Overview 3.0, section 3.1.

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 names <bonsaitreelego.com>, <legobonsaitree.com>,
<legobotanicalcollection.com>, and <legoflowers.com> be transferred to the Complainant.

/James Wang/ James Wang Sole Panelist Date: June 30, 2023