The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Wu Zhang, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2020. On April 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2020, 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 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 April 20, 2020. On April 20, 2020, the Center received two email communications from the Respondent. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2020. The Respondent did not submit a formal response. Accordingly, on May 11, 2020, the Center informed the Parties that it would proceed to appoint the Administrative Panel. The Center appointed Gareth Dickson as the sole panelist in this matter on June 17, 2020. 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 a very large number of trade mark registrations around the world for LEGOLAND (the “Mark”) and for LEGO, including in China where the Respondent is located. These date back to 1968 and in China to 1980 (for a LEGO device mark, registered in class 28 with number 135.134, registered on January 25, 1980). The Complainant has subsidiaries and branches throughout the world and its LEGO products are sold in more than 130 countries around the world, including in China. The LEGOLAND theme parks attract approximately 1.4 million visitors per annum. The Complainant is the owner of around 5,000 domain names containing the marks LEGO or LEGOLAND. The fame and distinctive character of the Mark has been found in previous UDRP decisions, including in LEGO Juris A/S v. Level 5 Corp.,WIPO Case No. D2008-1692 and LEGO Juris A/S v. Michael Longo WIPO Case No. D2008-1715. Since those decisions were published: - TIME magazine declared, in 2014, that the Complainant’s Lego toy is the Most Influential Toy of All Time. - LEGO was rated the number 1 “Consumer Superbrand 2019” in that year’s Superbrands United Kingdom survey, and was placed at number 8 in the Superbrands “Consumer Relevancy Index” in the same year. - The Reputation Institute rated the Complainant top among the “Most Reputable Global Companies of 2020”, having been on its top 10 list for 10 consecutive years. The disputed domain name was registered on February 25, 2020. It currently directs Internet users to a webpage featuring images of men giving presentations and of a woman delivering a news report. While there is also textual content on the website, none of it appears to be related to the Complainant or the Mark. 5. Parties’ Contentions A. Complainant The Complainant submits that the dominant part of the disputed domain name comprises the Mark and as such, the disputed domain name is confusingly similar to the Mark: the addition of “-jobs” is not sufficient to distinguish the disputed domain name from the Mark. It states that the trade marks LEGO and LEGOLAND, both belonging to the Complainant, have the status of well-known and reputed trademarks with a substantial and widespread reputation around the world. The Complainant has not found any evidence that the Respondent has any registered trade marks or trade names corresponding to the disputed domain name. No evidence has been found that the Respondent uses the Mark as a company name either, or that it has been using the Mark in any other way that would provide legitimate rights in the Mark or allow it to claim any rights established by common usage. The Complainant confirms that no licence or authorisation of any other kind has been given by the Complainant to the Respondent to use the Mark, and that the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. The Complainant also contends that it is “obvious”, given the fame of the Mark, that the Respondent knew of the Complainant’s legal rights in the Mark when the Respondent registered the disputed domain name and in fact the Respondent was motivated by the fame of the Mark to register the disputed domain name. The Complainant also argues that the Respondent is not currently using the disputed domain name in connection with a bona fide offering of goods or services related to the Mark, but instead is using it to provide guidance on ways to monetize the WeChat mobile app, services and topics completely unrelated to Complainant and its business. The Complainant therefore submits that the Respondent is using the Complainant’s trademarks to mislead Internet users and to attract them to its own commercial website. The Complainant also alleges that it first tried to contact the Respondent on March 25, 2020 through a cease and desist letter sent by email. The Complainant advised the Respondent that the unauthorized use of the LEGO and LEGOLAND trade marks within the disputed domain name (and two other domain names) violated the Complainant’s rights in those marks. The Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees. The Respondent replied saying: “I am not your lego employee” and asking: “Are you buying my domain name?” before stating: “these domain names are my auction results. The price is relatively high!”. The Complainant therefore alleges that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not submit a formal response. However, the Respondent sent two email communications to the Center, reproduced in full below: “My domain name is the result of my auction. I did not engage in anything related to your Lego. It is impossible for you to request an unconditional refund of the domain name, because you said that only the registration fee will be refunded.” “Lego asked me to return the domain name in an imperative manner, I am not your subordinate. Please don't chat with me in this tone.” 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that: a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and c) the disputed domain name has been registered and is being used in bad faith. These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of, and therefore has rights in, the Mark. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is recognisable within the disputed domain name. The addition of “-jobs” in the disputed domain name does not in any way prevent a finding of confusing similarity. The addition of the generic Top-Level Domain “.com” does not alter this conclusion either. The disputed domain name is clearly intended to appear, and is, confusingly similar to the Mark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark enjoys a very substantial reputation and a degree of inherent distinctiveness that makes a coincidental adoption by the Respondent virtually impossible. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name. There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the disputed domain name, has chosen to use the Mark in the disputed domain name in any descriptive manner, or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it. The Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel notes that the Mark has already been found by numerous UDRP panels to be distinctive and to have a reputation, rather than being a descriptive or dictionary term. The Panel notes that the disputed domain name was registered many years after the Mark was registered and that the Mark has been used continuously around the world for more than 50 years, in which time its fame and reputation has continued to grow. The Panel therefore accepts that the disputed domain name was chosen by reference to the Mark. As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental or permitted, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name. The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark. The disputed domain name is also being used in bad faith by seeking to mislead Internet users (in particular those seeking the Complainant) and redirect them to the Respondent’s own website, for the Respondent’s own purposes. The Respondent has not sought to explain its registration and use of the disputed domain name. There is also no conceivable use of the disputed domain name by the Respondent that would not be illegitimate and therefore there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified. Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith. The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. 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, Gareth Dickson
Sole Panelist
Date: July 1, 2020
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