The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is RuFeng lin, United States of America (“United States”) and China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 19, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar also confirmed that the Registration Agreement for the disputed domain names is in English. The Center verified that the 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 September 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2019. The Center appointed Matthew Kennedy as the sole panelist in this matter on October 30, 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. The Complainant is the owner of multiple trademarks including United States trademark registration number 1,018,875 for LEGO, registered on August 26, 1975, specifying toy building blocks and other goods in international class 28; United States trademark registration number 1,026,871 for a LEGO device (the “LEGO logo”), registered on December 9, 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. His contact address in the Registrar’s WhoIs database is manifestly false as it combines elements of different addresses in the United States and China. His contact telephone number is a Chinese mobile number. The disputed domain name The disputed domain names are confusingly similar to the Complainant’s LEGO trademark. The dominant part of the disputed domain names is identical to the registered trademark LEGO. Anyone who sees the disputed domain names is bound to mistake them for a name related to the Complainant. The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has no registered trademarks or trade names corresponding to the disputed domain names. No license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO. The Respondent is not an authorized reseller. There is no connection between the Respondent and the Complainant but no disclaimer is found on his website to explain the lack of relationship with the Complainant. The disputed domain names were registered and are 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 names are connected to an unauthorized website offering the Complainant’s products that falsely appears to be authorized by the Complainant. The Respondent is using the disputed domain names to misleadingly divert consumers for his own commercial gain. The Respondent has also provided false contact information to the Registrar. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (i) the disputed domain names are 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 names; and (iii) the disputed domain names have been registered and are 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 names all incorporate the LEGO trademark as their respective initial element. Two of the disputed domain names also incorporate the dictionary word “online”, while the other disputed domain name incorporates the letters “us”, which are an abbreviation for “United States”. Neither of these elements dispels the confusing similarity between the disputed domain names and the LEGO trademark. The LEGO trademark remains clearly recognizable within the disputed domain names. The disputed domain names each include a generic Top-Level Domain (“gTLD”) suffix, either “.club” or “.site”, which is a technical requirement of registration. As gTLD suffixes, these are disregarded in the comparison of a domain name with a trademark for the purposes of the first element of the Policy unless they have some impact beyond their technical function, which is not the case here. Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element of 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 names resolve to a website, that prominently displays the Complainant’s LEGO logo and the words “OFFICIAL LEGO® SHOP GUARANTEE”, and offers the Complainant’s products for sale. It also displays the address of one of the Complainant’s actual stores in the United States. This all gives the impression that the website is authorized or approved by the Complainant. However, the Complainant submits that the Respondent is not an authorized reseller of its products and that there is no relationship between them. In view of these circumstances, the Panel does not find this to be a use of the disputed domain names in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. As regards the second circumstance, according to the Registrar’s confirmation, the Respondent’s name is “RuFeng lin”, not the disputed domain names. There is no evidence indicating that the Respondent has been commonly known by the disputed domain names as envisaged by paragraph 4(c)(ii) of the Policy. As regards the third circumstance, the disputed domain names resolve to an online store. That is not a legitimate noncommercial or fair use of the disputed domain names 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 names. The Respondent failed to rebut that prima facie case because he did not respond to the 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 names. 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 names were all registered in 2019, many years after the registration of the Complainant’s LEGO trademarks, including in China and the United States where the Respondent is, or claims to be, located. The disputed domain names wholly incorporate the LEGO trademark as their respective initial elements. The disputed domain names resolve to a website that prominently displays the Complainant’s LEGO logo and offer for sale the Complainant’s products. In view of these circumstances, the Panel finds that the Respondent was aware of the Complainant and its trademarks at the time of registration of the disputed domain names this year. The Panel finds that the Respondent deliberately chose to register the Complainant’s LEGO trademark in the disputed domain names in bad faith. With respect to use, the Respondent uses the disputed domain names, which are confusingly similar to the Complainant’s LEGO trademark, to resolve to an online store that is falsely presented as if it were authorized or approved by the Complainant. The Panel finds that the Respondent is using the disputed domain names intentionally to attract, for commercial gain, Internet users to his 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 names have been registered and are 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 names Matthew Kennedy
Sole Panelist
Date: November 10, 2019
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