The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Zhangming Li, 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 September 10, 2020. On September 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 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 September 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2020. The Center appointed Francine Tan as the sole panelist in this matter on October 19, 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, LEGO Juris A/S, is the owner of LEGO trade mark used in connection with construction toys and other products. The Complainant has subsidiaries and branches throughout the world. Lego products are sold in more than 130 countries, including in China. The Complainant owns numerous trade mark registrations for LEGO worldwide, including but not limited to the following in China: Registration No. 1112413 registered on September 28, 1997, Registration No. 7756054 registered on January 14, 2011 and Registration No. 7756055 registered on December 21, 2010. The Complainant also owns close to 5,000 domain names containing the term “lego”. The Complainant states that its LEGO mark is well known worldwide due to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. The Complainant’s Lego Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Lego Group also maintains an extensive website under the domain name “www.lego.com”. The LEGO mark has been recognized in many publications and brand rankings as one of the top and most reputable brands in the world. The disputed domain name The disputed domain name is confusingly similar to the Complainant’s LEGO trade mark as the trade mark is incorporated entirely into the disputed domain name. The addition of a hyphen and the suffix “nvzhuang” does not diminish confusing similarity between the disputed domain name and the Complainant’s LEGO trade mark. The “.com” generic Top-Level Domain (“gTLD”) is a standard registration requirement and is not relevant to whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name and is not licensed or authorized by the Complainant to use the LEGO trade mark. The Respondent is using the disputed domain name to direct Internet users to a website which features adult/pornographic content and third-party links to gambling websites which does not constitute a bona fide offering of goods or services. The disputed domain name was registered and is being used in bad faith. The Respondent was well aware of the Complainant’s well-known and reputed LEGO trade mark which has a substantial and widespread reputation throughout the world. The Respondent could not have registered the disputed domain name without such knowledge of the Complainant’s trade mark. The Complainant attempted to contact the Respondent on June 4, 2020 by way of a cease and desist letter sent by email. The Complainant advised the Respondent about the unauthorized use of the LEGO trade mark within the disputed domain name and requested a voluntary transfer of the same. The Complainant also offered compensation for the expenses of registration and transfer fees (not exceeding out-of-pocket expenses). The Complainant sent reminders but the Respondent never replied. The failure by the Respondent to respond to the Complainant’s cease and desist letter shows bad faith by the Respondent. The content of the Respondent’s website is further evidence of the Respondent’s bad faith as it features sexually explicit pornographic content. 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 it has rights in the LEGO trade mark. The LEGO trade mark is without doubt a well-known trade mark. The LEGO trade mark has been reproduced in its entirety in the disputed domain name and is easily identifiable. The Panel agrees that the addition of a hyphen and the suffix “nvzhuang” does not avoid confusing similarity between the disputed domain name and the Complainant’s trade mark. The “.com” gTLD is a standard registration requirement and is not relevant to whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark. The disputed domain name is therefore confusingly similar to the Complainant’s LEGO trade mark. The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s trademark registrations and many years of use, advertising and promotions of the LEGO trade mark long predate the registration of the disputed domain name. There is no evidence that any license or authorization has been extended by the Complainant to the Respondent for the use of the LEGO trade mark in a domain name. Neither is there evidence that the Respondent is commonly known by the name “Lego” or the disputed domain name. The use of the disputed domain name leading to a website which features explicitly pornographic adult content and links to third-party gambling websites does not constitute a bona fide offering of goods or services. This is all the more so since the Complainant’s products are essentially tailored for children. It is therefore particularly reprehensible for the Respondent to adopt the Complainant’s LEGO trade mark in its domain name registration for such use. The Respondent failed to respond or rebut the Complainant’s assertions. The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied C. Registered and Used in Bad Faith The Complainant’s LEGO trade mark is such a well-known mark that the Respondent could not by pure coincidence and without knowledge of the LEGO mark have registered the disputed domain name without the Complainant and/or its mark in mind. The Panel finds that the Respondent’s use of the disputed domain name for the offering of pornographic content and the provision of links to gambling sites are strong indicators of bad faith use. As was stated in the case of VIVENDI v. Guseva Svetlana,WIPO Case No. D2018-2631, “Numerous panels deciding cases under the Policy have held that pornographic content on a respondent’s website is in itself sufficient to support a finding of bad faith, irrespective of the respondent’s motivation […] In addition, the linking of the disputed domain name with a pornographic website might result in the tarnishing of the Complainant’s well-known trademark”. The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied. 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 Francine Tan
Sole Panelist
Date: October 26, 2020
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