LEGO Juris A/S v Swajon Rahman

WIPO Case No. D2023-0817

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Swajon Rahman

Case No. D2023-0817

1. The Parties

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

Sweden.

The Respondent is Swajon Rahman, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <legolandmegamall.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2023. On February 23, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2023, 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 (Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 24, 2023, 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 March 1, 2023.

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 March 7, 2023. In accordance with the Rules, paragraph 5,
the due date for Response was March 27, 2023. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 28, 2023.

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The Center appointed Adam Samuel as the sole panelist in this matter on April 3, 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.

4. Factual Background

The Complainant is part of the Lego group. That group manufactures toys and owns a 20 percent stake in a
company that operates Legoland theme-parks in several countries. The Complainant owns a number of
trademarks for the names LEGO and LEGOLAND including the United States of America trademarks for
LEGO, registration number 1563848, registered on October 31, 1989, and LEGOLAND, registration number
2334535, registered on March 28, 2000. The Complainant registered the domain name <legoland.com> on
August 4, 1998, through which it promotes its group’s products.

The disputed domain name was registered on February 11, 2022. The disputed domain name resolves to a website selling goods unrelated to the Complainant.

5. Parties’ Contentions

A. Complainant

The dominant part of the disputed domain name comprises the name “legoland” which is identical to the registered trademark LEGOLAND registered by the Complainant as trademarks in numerous countries all over the world. The addition of the suffix “megamall” has no impact on the overall impression given by the dominant part of the disputed domain name LEGOLAND recognizable as a world-famous trademark.

The Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has not given any authorisation to the Respondent to use either of its trademarks LEGO or LEGOLAND. The Respondent has not demonstrated any attempt to make a legitimate use of the disputed domain name. The Respondent has intentionally chosen a domain name based on the Complainant’s registered trademarks in order to generate Internet traffic and income through a website which is offering for sale various items unrelated to the Complainant.

The Complainant emailed the Respondent via the Registrar on May 5, 2022, seeking the transfer of the disputed domain but did not receive a reply.

B. Respondent

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

6. Discussion and Findings

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.

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A. Identical or Confusingly Similar

The disputed domain name consists of the Complainant’s trademark LEGOLAND, the word “megamall” and the generic Top-Level Domain (“gTLD”) “.com”.

The gTLD is irrelevant here as it is a standard registration requirement. See section 1.11 of the WIPO

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

The addition of the generic shopping-related word “megamall” does not prevent the recognition of the

Complainant’s trademark in the disputed domain name. As section 1.8 of the WIPO Overview 3.0 says:

“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms
(whether descriptive, […] meaningless, or otherwise) would not prevent a finding of confusing similarity under

the first element.”

For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the

Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent is not called “legolandmegamall” or anything similar. There is no evidence that the to have used the disputed domain name for any legitimate purpose.

Based on the available record, where the Complainant has made out a preliminary case that the Respondent
lacks rights or legitimate interests, and in the absence of any response on this point, the Panel concludes
that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See

section 2.1 of the WIPO Overview 3.0.

C. Registered and Used in Bad Faith

The disputed domain name consists of a well-known trademark LEGOLAND, the generic shopping term “megamall” and “.com”. The trademark LEGOLAND itself consists of the Complainant’s trademark and main product of the Complainant’s group, LEGO, and the word “land”. The Respondent has used the disputed domain name to market goods unconnected to the Complainant’s group.

The renown of the Complainant’s trademarks LEGOLAND and LEGO and the way in which the former is a composite term with no meaning except as a location for displaying the products of the Complainant’s group, suggests that the Respondent clearly knew of the Complainant when it registered the disputed domain name and sought to use the disputed domain name to market the Respondent’s goods.

The Respondent appears to have registered the disputed domain name primarily to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. All this is evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

For all these reasons, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith.

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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, <legolandmegamall.com> be transferred to the Complainant.

/Adam Samuel/
Adam Samuel
Sole Panelist
Date: April 17, 2023