WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico Case No. D2019-0248 1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama. 2. The Domain Name and Registrar

The disputed domain name (“Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2019. On January 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on February 6, 2019, 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 February 11, 2019.

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 February 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2019.

On March 11, 2019, the Center sent an email to the Parties, noting that, presumably due to an administrative oversight, the Center’s Written Notice was not faxed to the Respondent, and granting the Respondent a

five-day period to indicate whether it wished to participate in the proceedings. The Respondent did not submit any response.

The Center appointed Shwetasree Majumder as the sole panelist in this matter on March 26, 2019. 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, LEGO Juris A/S, is based in Denmark and owns a large portfolio of trademark registrations for the LEGO trademark (the LEGO Trademark”) around the globe, used mainly in connection with construction toys and other products being manufactured, marketed and sold by the Complainant under its “Lego” brand. The Complainant has set out in Annexure 6.1- 6.2 to the Complaint, a list of its valid and subsisting worldwide registrations for the LEGO Trademark which includes registrations in United States with registration number 1018875 since August 26, 1975 and in Panama with registration number 23428 since June 11, 1979. The earliest registration in favour of the Complainant for the LEGO Trademark dates back to the year 1955. The Panel observes that the all the above-mentioned registrations of the Complainant pre-date the registration of the Disputed Domain Name by the Respondent, which was on November 7, 2018.

The Complainant has subsidiaries and branches throughout the world and its products under the LEGO Trademark are sold in more than 130 countries.

The Complainant prominently depicts the LEGO mark on all the products, packaging, displays, advertising, and promotional materials. The LEGO Trademark has been conferred with various awards, honors and titles as is apparent from Annexure 9 of the Complaint.

The Complainant has a significant online presence and operates its official website on the domain name (Annex 10 to Complaint). In addition, the Complainant owns close to 5,000 domain names which contain the LEGO Trademark (Annexure 8 to the Complaint).

The Complainant tried to contact the Respondent on December 13, 2018 by sending a cease and desist letter by email and requested a voluntary transfer of the Disputed Domain Name. The Complainant also sent two additional reminders dated December 20, 2018 and December 31, 2018, however no response has been received from the Respondent. 5. Parties’ Contentions

The Complainant contends that the dominant part of the Disputed Domain Name comprises the term “Lego” identical to the LEGO Trademark as has been registered by the Complainant both as trademarks and domain names in numerous countries all over the world. The Complainant also contends that the addition of generic prefixes “www” and “the”, the suffix “store” and the Top-Level Domain (“TLD”) “.com” do not have any impact on the overall impression of the dominant portion of the Disputed Domain Name namely “Lego” recognizable as a world-famous trademark. Placing reliance on previous UDRP panel decisions, the Complainant has submitted that the Disputed Domain Name is confusingly similar to its well-known LEGO Trademark.

The Complainant alleges that by using its registered and well-known LEGO Trademark as a dominant part of the Disputed Domain Name, the Respondent is misleading Internet users into believing of an association/nexus/affiliation of the Complainant with the Disputed Domain Name. The Complainant contends that the Respondent is exploiting the goodwill and the image of the Complainant’s trademark, which might result in its dilution and also cause other damage to the said trademark.

The Complainant further alleges that the Respondent does not have any registered trademarks or trade names corresponding to the Disputed Domain Name. Further the Complainant claims that it has not found anything that would suggest that the Respondent has been using “Lego” in any other way that would give it rights or legitimate interests in the Disputed Domain Name. No license or authorization of any other kind has been given by the Complainant to the Respondent to use the LEGO Trademark and the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.

The Respondent is also not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Instead, the Complainant asserts that the Respondent has intentionally chosen the Disputed Domain Name based on the Complainant’s registered LEGO Trademark in order to generate traffic and income through a website which has a sponsored link on it (Annexure 11 of the Complaint).

The Complainant alleges that the LEGO Trademark has acquired the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world and that it is the considerable value and goodwill of the said trademark that motivated the Respondent to register the Disputed Domain Name. The Complainant asserts that the Respondent cannot claim to have been using the LEGO mark without being aware of the Complainant’s rights to the LEGO Trademark, so the re