Lego Juris A/S v Toy sotred

WIPO Case No. D2024-3064

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Toy sotred

Case No. D2024-3064

1. The Parties

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

Sweden.

The Respondent is Toy sotred, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <lego-fi.com> (the “Domain Name”) 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 July 26, 2024. On July 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 26, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 July 31, 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 August 1, 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 August 5, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was August 25, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on September 2, 2024.

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The Center appointed Gregor Vos as the sole panelist in this matter on September 9, 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 is a well-known manufacturer of inter alia construction toys and sells its products in over

130 countries worldwide.

The Complainant is the owner of inter alia the following trademark registrations (the “Trademarks”):

United Kingdom Trade Mark registration No. UK00001292923 for the wordmark LEGO, registered on March

16, 1990;

United States of America Trade Mark registration No. 85825507 for the wordmark LEGO, registered on

September 3, 2013.

The Domain Name was registered on June 9, 2024, and used to resolve to website mimicking the not resolve to an active webpage.

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 Domain Name.

Notably, the Complainant first contends that the Domain Name is confusingly similar to its Trademarks, since it incorporates the Trademarks in their entirety with the mere addition of a hyphen, the geographical indication ‘fi’ that refers to Finland and the generic Top-Level Domain (“gTLD”) “.com” that is generally disregarded under the first element.

Second, the Complainant states that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has never received authorization from the Complainant to use the Trademarks in the Domain Name and is not commonly known by the Domain Name. Also, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name, and has not satisfied the Oki Data-criteria in relation to the use of the website to which the Domain Name resolved before any notice by the Complainant.

Finally, according to the Complainant, the Respondent was undoubtedly aware of the Trademarks when registering the Domain Name and the current passive holding of the Domain Name does not preclude a finding of use of the Domain Name in bad faith.

B. Respondent

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

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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 Trademarks and the 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.

The entirety of the Trademarks is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the Trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, a hyphen and the geographical indication “fi” may bear on assessment of the second and third elements, the Panel finds the addition of these elements does not prevent a finding of confusing similarity between the Domain Name and the Trademarks 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 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 Domain Name such as those enumerated in the Policy or otherwise.

Furthermore, the composition of the Domain Name and the prior impersonating nature of the website to which the Domain Name resolved demonstrate the Respondent’s intention of taking unfair advantage of the likelihood of confusion between the Domain Name and the Complainant as to the origin or affiliation of the website to which the Domain Name resolved. The current non-use of the Domain Name cannot be considered a bona fide offering of goods and services. Also, for completeness the Panel notes that by failing to accurately disclose the (non-existent) relationship between the Complainant and the Respondent on the website to which the Domain Name used to resolve, the Respondent’s use of the Domain Name did not satisfy the Oki Data Test.

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

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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.

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.

First, the Panel notes that the Trademarks were registered by the Complainant and have been used for
many years. The Complainant’s rights to the Trademarks predate the registration date of the Domain Name.
In light of the reputation of the Trademarks, the Panel agrees with the Complainant that it is not conceivable
that the Respondent chose the Domain Name without knowledge of the Complainant’s activities and its
Trademarks under which the Complainant is doing business. The reputation of the Trademarks of the
Complainant has been confirmed by earlier UDRP panels (see e.g. LEGO Juris A/S v. xiaohai Wu,
heshengshiyeyouxiangongsi, WIPO Case No. D2022-0729 and Lego Juris A/S v. Yeon o Jung, WIPO Case
No. D2022-1295).

Second, the Complainant provided evidence that the Domain Name previously resolved to a website impersonating the Complainant and offering for sale the Complainant’s products. The Panel finds that the Respondent used the Domain Name to intentionally attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation, or endorsement of that Respondent’s website which the Panel finds constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.

Third, panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the reputation of the Complainant’s Trademarks, and the composition of the Domain Name that incorporates the Trademarks in their entirety, and finds that in the circumstances of this case the current passive holding of the Domain Name does not prevent a finding of bad faith under the Policy.

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 Domain Name <lego-fi.com> be transferred to the Complainant.

/Gregor Vos/ Gregor Vos Sole Panelist Date: October 1, 2024