LEGO Juris A/S v Zulfiqar Zaria, IP Zone Technologies

WIPO Case No. D2023-2393

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Zulfiqar Zaria, IP Zone Technologies

Case No. D2023-2393

1. The Parties

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

Sweden.

The Respondent is Zulfiqar Zaria, IP Zone Technologies, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <legopakistan.com> (the “Disputed Domain Name”) is registered with Tucows

Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2023. On June 2, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 2, 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) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 5, 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 June 7, 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 June 9, 2023. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2023.

The Center appointed Nicholas Weston as the sole panelist in this matter on July 7, 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 operates a business selling toys in more than 130 countries. The Complainant holds registrations for the LEGO trademark and variations of it in numerous countries including Pakistan trademark registration no. 69100, for the mark LEGO, registered on March 8, 1979, which it uses to designate “toys, games and playthings” and Denmark trademark registration no. VR195400604, for the mark LEGO, registered on May 1, 1954 in class 28.

The Complainant conducts business on the Internet using numerous domain names containing the word
“lego”, including <lego.com>, with a toy business website resolving from these domains. The Complainant
also owns more than 5,000 domain names comprising or containing the word “lego”.

The Disputed Domain Name <legopakistan.com> was registered on April 4, 2023 and resolves to an inactive webpage.

5. Parties’ Contentions
A. Complainant

The Complainant cites its trademark registrations in numerous countries for the mark LEGO and variations of it, as prima facie evidence of ownership.

The Complainant submits that the mark LEGO is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is identical to its trademark, because the Disputed Domain Name is comprised of the LEGO trademark the addition of the country name “Pakistan” and that the identicality is not removed by the addition of the country

name or the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the paragraph 4(c) of the Policy apply.

Disputed Domain Name because “[n]o license or authorization of any other kind, has been given by the

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and the Rules having regard to the prior use and well-known nature of the Complainant’s trademark, and advances the argument that the passive holding of the Disputed Domain Name would not prevent a finding of bad faith.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i)        that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)       that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii)      that the Disputed Domain Name has been registered and is being used in bad faith.

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A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark LEGO in numerous countries including Pakistan. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1).

Turning to whether the Disputed Domain Name is identical or confusingly similar to the LEGO trademark, the
Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the
Complainant’s trademark LEGO; (b) followed by the country name “Pakistan”; (c) followed by the gTLD
“.com”.

It is well established that the gTLD used as part of a domain name is generally disregarded under the first element confusing similarity test (WIPO Overview 3.0, section 1.11). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “legopakistan”.

As the relevant mark is incorporated in its entirety and as such is recognizable in the Disputed Domain
Name, in line with previous UDRP decisions, the addition of the country name “Pakistan” would not prevent a
finding of confusing similarity under the first element. This Panel therefore finds that the Disputed Domain
Name is confusingly similar to the Complainant’s LEGO trademark for purposes of UDRP standing (see

WIPO Overview 3.0, section 1.7).

Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see WIPO Overview 3.0, section 2.1).

The Complainant contends, in summary, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because (i) the Disputed Domain Name is inactive; (ii) the Respondent has not acquired or owned any trademark or service mark rights in the name LEGO, and has not been commonly known by the name LEGO; (iii) the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain; and (iv) there is an increased risk that the Disputed Domain Name could be used by the Respondent to engage in unlawful phishing.

The Complainant has also supplied a search of publicly available MX records that reveals that a DNS “mail exchange” (MX) record has been activated, allowing email to be routed to a mail server, which it contends indicates a heightened risk that the Disputed Domain Name may be used for fraud or phishing. This Panel finds that the activation of the MX record alone is not sufficient to reach a conclusion of illegal activity, noting

also the absence of other circumstantial evidence to support the Complainant’s otherwise credible claim of
illegal activity other than defective contact details (see WIPO Overview 3.0, section 2.13.2).

The Panel also notes the evidence that the Disputed Domain Name in this proceeding resolves to an inactive webpage and finds that this does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the substantial reputation and goodwill of the Complainant’s mark or capacity to otherwise mislead Internet users. On balance, the Panel is satisfied that a prima facie case exists that the Respondent lacks rights or legitimate interests. In view of the evidence that calls for an explanation from the Respondent, and in the absence of a Response by the Respondent, this Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

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The Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain circumstances to be construed as evidence of both of these conjunctive requirements.

The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed
Domain Name in bad faith.

On the issue of registration, taking into account the composition of the Disputed Domain Name and the well-known nature of the Complainant’s trademark, the Panel is satisfied that the Respondent knew of and targetted the Complainant’s trademark LEGO when it registered the Disputed Domain Name (see LEGO Juris A/S v. LogoFusion, WIPO Case No. D2006-0270 (“the worldwide fame of the Complainant’s trademark”); Lego Juris A/S v. Synergy Management, Fred Shear, WIPO Case No. D2007-1028 (“LEGO is well-known in the United States”); LEGO Juris A/S v. Chung Hong Phil, WIPO Case No. D2009-1288 (“the Complainant’s trademarks are very well-known worldwide”).

This Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Name
other than to trade off the reputation and goodwill of the Complainant’s well-known trademark (see WIPO
Overview 3.0, section 3.1.4).

Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name some 68 years after the Complainant established registered trademark rights in the LEGO mark.

On the issue of use, the Complainant’s evidence is that the Disputed Domain Name does not currently resolve to an active website set up by the Respondent. Previous UDRP 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. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put” (See WIPO Overview 3.0, section 3.3). This Panel notes that the evidence is that all four of these four factors are present in this proceeding.

In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark LEGO and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the
Policy.

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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 <legopakistan.com> be transferred to the Complainant.

/Nicholas Weston/
Nicholas Weston
Sole Panelist
Date: July 21, 2023