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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Mohammad Yavari

Case No. D2021-2284

1. The Parties

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

The Respondent is Mohammad Yavari, Iran (Islamic Republic of).

2. The Domain Name and Registrar

The disputed domain name <legoiran.com> (the “Domain Name”) is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2021. On July 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 15, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on July 18, 2021 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 July 20, 2021.

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 July 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2021.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on September 8, 2021. 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 has registered LEGO trademarks all over the world, including international registration no. 869258 registered on November 11, 2005 and trademark registration no. 25637 registered on July 11, 1964 in Iran (Islamic Republic of), where the Respondent is based. The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries.

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

According to the Registrar, the Domain Name was registered on January 30, 2021. At the time of drafting the Decision, the Domain Name resolved to a web page with an error message. However, the Complainant has provided evidence that the Domain Name has been used to resolve to an unauthorized commercial website offering LEGO products.

5. Parties’ Contentions

A. Complainant

The Complainant provides evidence of trademark registrations and argues its trademark is a well know trademark pursuant to the Paris Convention for protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”). The Complainant argues that the Domain Name is confusingly similar to the Complainant’s trademark, as the Domain Name comprises the trademark LEGO with the addition of the term “Iran”. The fame of the trademark has been confirmed in numerous previous UDRP decisions, such as LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692: “The Panel finds that the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive”.

The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent cannot establish rights in the Domain Name, as it has not made any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the contrary, the Complainant argues that the Respondent is simply trying to benefit from the Complainant’s world famous trademark by seeking to create an impression of association with the Complainant.

The Complainant argues that the Respondent has registered and used the Domain Name to attract, for commercial gain, Internet users to a website or other online location by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement. The Respondent registered the Domain Name on January 30, 2021, decades after the Complainant registered the trademark LEGO in Iran and elsewhere. Moreover, the Complainant has documented that the Domain Name has resolved to an unauthorized third party offering the Complainant’s products. This, and the Complainant’s fame, indicate that the Respondent was aware of the trademark when the Respondent registered the Domain Name. The Respondent’s use of the Domain Name is in bad faith. The registration and the use have been done to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark. The Complainant also points to other evidence of bad faith, such as the fact that the Respondent employed a privacy service to hide its identity.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark LEGO.

The test for confusingly similarity involves the comparison between the trademark and the domain name. In this case, the Domain Name incorporates the Complainant’s trademark with the addition of “iran”. The addition 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. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.com”; see WIPO Overview 3.0, section 1.11.

The Panel finds that the Domain Name is confusing similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent does not have any registered trademarks or trade names corresponding to the Domain Name. Neither is there any evidence suggesting that the Respondent has been using LEGO in a way that would give it legitimate rights in the Domain Name. The Complainant has not granted any authorization to the Respondent. Indeed, based on the evidence in the Complaint, the Respondent’s use of the Domain Name is not bona fide, but rather evidence of bad faith. In addition, the Panel considers that the nature of the Domain Name carries a risk of implied affiliation or association.

The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is convinced that the Respondent was aware of the Complainant’s trademark LEGO when the Respondent registered the Domain Name. The Complainant has used its famous trademark decades before the registration of the Domain Name.

The Panel also finds use of the Domain Name in bad faith. The Domain Name incorporates the well-known trademark of the Complainant with an additional geographic term, which by itself create a presumption of bad faith, see WIPO Overview 3.0, section 3.1.4. The Domain Name has been used to try to attract Internet users for commercial gain by misleading them into believing that the website at the Domain Name is authorized by or somehow connected to the Complainant. The Respondent has not replied to the Complainant’s contentions and not provided any evidence of good-faith use.

The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the 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 Domain Name <legoiran.com> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: September 14, 2021

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