The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is liang man qing, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2019, 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 September 17, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center also sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On September 23, 2019, the Complainant filed an amended Complaint in English and confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. 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 in English and Chinese of the Complaint, and the proceedings commenced on September 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2019. On September 27, 2019, the Center received an email communication from the Respondent, requesting Chinese as the language of the documents attached to the Center’s email of Notification of Complaint and Commencement of Administrative Proceeding. No substantive Response was filed with the Center. On October 18, 2019, the Center informed the Parties that it would proceed to appoint the Panel. The Center appointed Matthew Kennedy as the sole panelist in this matter on October 31, 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 is the owner of LEGO trademarks used in connection with construction toys and other products, including computer hardware, software and computer-controlled robotic construction sets. The Complainant is the owner of multiple trademarks including United States of America trademark registration number 1,018,875 for LEGO, registered on August 26, 1975, specifying toy building blocks and other goods in international class 28; and Chinese trademark registration number 75682 for LEGO in a particular script, registered on December 22, 1976, specifying toys and other goods in international class 28. Those trademark registrations remain current. The Complainant is also the registrant of many domain names that contain the word “lego”, including The Respondent is an individual resident in China. The disputed domain name was registered on July 17, 2019. It resolves to a website in Chinese titled “少儿机器人教程” which can be translated as “children’s robotics courses”. The website promotes educational products for children, including乐高 (i.e. LEGO) construction sets, 乐高 (i.e. LEGO) WeDo 2.0 software (used with LEGO Education products) as well as Scratch children’s software produced by a third party. The number “12306” (which appears in the disputed domain name) is the China Railway customer assistance telephone number. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s LEGO trademark. The dominant part of the disputed domain name is identical to the registered trademark LEGO. Anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no registered trademarks or trade names corresponding to the disputed domain name. The Respondent appears to be trading under the name “Children’s Robotics Tutorial” and the WhoIs information identifies the registrant as “liang man qing”. No license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO. There is no connection between the Respondent and the Complainant but no disclaimer is found on the website to explain the lack of relationship to the Complainant. The disputed domain name was registered and is being used in bad faith. The trademark LEGO in respect of toys belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world. The disputed domain name is connected to a commercial website offering children’s robotics tutorials unrelated to the Complainant in any way and featuring pictures of models of robots and cars made with LEGO bricks. B. Respondent Other than an informal email communication regarding the language of the documents attached to the Center’s email of Notification of Complaint and Commencement of Administrative Proceeding dated September 27, 2019, the Respondent did not respond to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that English be the language of the proceeding. Its main arguments are that the Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings; such additional delay poses continuing risk to the Complainant and unsuspecting consumers seeking Complainant or its products; the disputed domain name is comprised of Latin characters; and the term “lego”, which is the dominant portion of the disputed domain name, does not carry any specific meaning in the Chinese language, and it is clear from the content on the website that this term is only included due to Complainant’s fame and reputation; the Respondent did not respond to the Complainant’s cease-and-desist letter. The Respondent requests the documents attached to the Center’s email of Notification of Complaint and Commencement of Administrative Proceeding dated September 27, 2019 in Chinese because he does not understand them. Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the Parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that the amended Complaint was filed in English. Despite having received the Notification of the Complaint and Commencement of Administrative Proceeding in Chinese and English, the Respondent does not express any interest in responding to the amended Complaint. Some of the annexes to the amended Complaint are already in Chinese while the Respondent is evidently already familiar with others that are in English regarding the Complainant’s products. The Center also indicated that the Respondent, may file a Response in English or in Chinese. Therefore, the Panel considers that selecting Chinese as the language of the proceeding, and requiring the Complainant to translate the amended Complaint and its annexes into Chinese, would create an undue burden and delay, whereas accepting all documents as filed in English or Chinese would not cause unfairness to either party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept all evidence as filed in its original language. The Panel would have accepted a Response in Chinese, but none was filed. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the LEGO trademark. The disputed domain name wholly incorporates the LEGO trademark as its initial and dominant element. The disputed domain name also includes the element “12306” but, whether that is read as the China Railway customer assistance telephone number or as mere numerals, this does not dispel the confusing similarity between the disputed domain name and the Complainant’s trademark. The LEGO trademark remains clearly recognizable within the disputed domain name. The disputed domain name also includes the generic Top-Level Domain (“gTLD”) suffix “.com”. As a mere technical requirement of registration, a gTLD suffix is disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy unless it has some impact beyond its technical function, which is not the case here. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: “(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” As regards the first circumstance set out above, the disputed domain name resolves to a website that provides information regarding children’s educational products, including those of the Complainant. The disputed domain name wholly incorporates the Complainant’s LEGO trademark, which gives the false impression that the website is affiliated with, or approved by, the Complainant. However, the Complainant submits that it has not given any license or authorization of any other kind to the Respondent to use the trademark LEGO and that there is no connection between the Respondent and the Complainant. Further, the Respondent’s website promotes the products of a third party as well and does not disclose the lack of a relationship between the Respondent and the Complainant. Therefore, the Panel does not find this to be a use of the disputed domain name in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. As regards the second circumstance, according to the Registrar’s confirmation, the Respondent’s name is “liang man qing”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy. As regards the third circumstance, the disputed domain name resolves to a website promoting products for sale. That is not a legitimate noncommercial or fair use of the disputed domain name as envisaged by paragraph 4(c)(iii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the amended Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows: “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] website or location.” With respect to registration, the disputed domain name was registered in 2019, many years after the registration of the Complainant’s LEGO trademarks, including in China where the Respondent is located. The disputed domain name wholly incorporates the LEGO trademark as its initial element. The disputed domain name resolves to a website that promotes the Complainant’s software, albeit using the Chinese transliteration 乐高 instead of “LEGO”. Therefore, the Panel finds that the Respondent was aware of the Complainant, its trademarks and its products at the time of registration of the disputed domain name earlier this year. The Panel finds that the Respondent deliberately chose to register the Complainant’s LEGO trademark in the disputed domain name in bad faith. With respect to use, the Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s LEGO trademark, to resolve to a website promoting the Complainant’s products, giving the misleading impression that it is affiliated with, or approved by, the Complainant. Further, the website also promotes the products of a third party. For the reasons given in Section 6.2B above, the Panel finds that the Respondent is using the disputed domain name intentionally 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 Respondent’s website or of a product or service on the Respondent’s website, within the terms of paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 disputed domain name Matthew Kennedy
Sole Panelist
Date: November 3, 2019
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