The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is zhu xiaojie, China. 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2021. On January 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 11, 2021, 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 January 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2021. The Center appointed Theda König Horowicz as the sole panelist in this matter on February 25, 2021. 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 part of the LEGO Group and has its historical headquarters in Denmark. The LEGO Group has subsidiaries and branches throughout the world. The Complainant commercializes worldwide – including in China – child products, in particular the famous LEGO building bricks. It has expanded its use of the LEGO trademark to other goods such as computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant has been holding since decades a large number of registrations worldwide for the LEGO trademark, including in China since at least 1980 (Trademark No. 135134). The Complainant also holds a huge range of domain names comprising the trademark LEGO. The LEGO trademark has acquired a distinctiveness and is generally recognized as a famous trademark, in particular in surveys. The Respondent registered the disputed domain names The Complainant alleges that the disputed domain names comprise the term “lego” which has been registered as a trademark for many years by the Complainant and which has been considered in several UDRP decisions as being well-recognized and worldwide famous. The dominant part of the disputed domain names is “lego”. The disputed domain names are clearly confusingly similar to the Complainant’s LEGO mark as they reproduce the latter in its entirety. The suffixes “online” and “toystore” are generic and do not detract from the overall impression of similarity. The said suffixes actually increase the confusing similarity as such terms refer to the Complainant’s business. The addition of the generic Top-Level Domain (“gTLD”) “.top” does not have an impact and is irrelevant in determining the first criteria under the Policy. The Complainant has not found that the Respondent would own any rights in the LEGO trademark. The Respondent used a privacy WhoIs service to register the disputed domain name The Complainant reminds that LEGO is a world-famous trademark which has always been attractive to third party domain name registrations and domain name infringers as shown by the numerous cases which have been filed with the Center by the Complainant. The Complainant’s trademark rights over LEGO are prior to the registration of the disputed domain names and it is clear that the Respondent knew of the Complainant’s rights in the famous trademark LEGO at the time of registration. The link of the disputed domain names to commercial websites using the Complainant’s logo and offering the LEGO products for sale was done intentionally by the Respondent in order to attract Internet users for commercial gain, which constitutes bad faith. The Respondent employed a privacy service when registering the disputed domain name The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant showed it has trademark rights in LEGO through several trademark registrations worldwide including in China where the Respondent is based. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. The disputed domain names only differ from the Complainant’s LEGO mark through the addition of the dictionary terms “online” and “toystore”, which does not avoid a finding of confusing similarity (see WIPO Overview 3.0, section 1.8). The Complainant’s mark is nevertheless clearly recognizable and entirely contained in the disputed domain names. Finally, it is well established that the TLD in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLDs”). See WIPO Overview 3.0, sections 1.11.1 and 1.11.2. Consequently, the addition of the TLD “.top” in the disputed domain names is irrelevant in determining the first criteria under the Policy. Under the circumstance, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (i) the use of the domain name in connection with a bona fide offering of goods or services; (ii) being commonly known by the domain name; or (iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See WIPO Overview 3.0, section 2.1. The Complainant contends that the Respondent has no rights and legitimate interests in the disputed domain names, notably stating that: - The Complainant has not found that the Respondent would own any rights in the LEGO trademark. - No license or authorization has been given by the Complainant to the Respondent to use the LEGO trademark. - The Respondent is trying to benefit of the Complainant’s famous trademark and is not using the disputed domain names with a bona fide offering of goods or services as she linked the disputed domain names to the websites offering the LEGO products for sale and displaying the LEGO logo and LEGO figurines without authorization from the Complainant. Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent. The Respondent has chosen not to reply. No evidence is contained in the case file which would demonstrate that the Respondent has rights or legitimate interests in the disputed domain names, in particular no evidence showing that the Respondent has been commonly known by the disputed domain names or any evidence showing a bona fide offering of goods or services, or any legitimate noncommercial or fair use of the disputed domain names. In view of the above and in the lack of any denial by the Respondent, the Panel is satisfied that it is more than likely that the Respondent uses the disputed domain names without a bona fide offering of goods or services. Moreover, the nature of the disputed domain names carries a risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1). Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith There is no doubt that the Complainant is a well-established company which operates since decades worldwide under the name and well-known trademark LEGO. Furthermore, the additional dictionary terms “online” and “toystore” in the disputed domain names refer to the Complainant’s business. Consequently, the Respondent knew or should have known of the Complainant’s trademarks and deliberately registered the disputed domain names that are confusingly similar to the Complainant’s trademark (see WIPO Overview 3.0, section 3.2.2). Furthermore, the case file shows that the disputed domain names were used to create and operate commercial websites using the LEGO logo, reproducing the famous LEGO figurines without authorization, and purportedly offering the LEGO products for sale. This obviously falls in the scope of bad faith registration and use as defined by paragraph 4(b)(iv) of the Policy. After the Complainant took steps to take down the websites, the disputed domain names no longer resolve to any active websites. However, non-use of the disputed domain names would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). The Panel further notes that the Respondent has chosen to remain silent within the proceeding, which is a further indication of bad faith. In light of the above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith and that the Complainant has established its case under paragraph 4(a)(iii) 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 Theda König Horowicz
Sole Panelist
Date: March 15, 2021
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