The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is linlong yu, Hong Kong, 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 January 21, 2021. On January 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2021, 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 January 22, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 26, 2021. 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 of the Complaint, and the proceedings commenced on January 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 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 Hong Kong, 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 Hong Kong, China since 1964 (Trade Mark No. 19640937). 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 name on June 16, 2020. The disputed domain name is linked to a website which reproduces the logo of the Complainant and which purportedly offers the LEGO products for sale. The Complainant sent a first cease and desist letter to the Respondent through the Registrar on July 28, 2020 requesting for the voluntary transfer of the disputed domain name. No response was given to the said letter in spite of reminders. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name comprises 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 name is “lego”. The disputed domain name is clearly confusingly similar to the Complainant’s LEGO mark as it reproduces the latter in its entirety. The suffix “enligne” which means “online” in English is generic and does not detract from the overall impression of similarity. The addition of the generic Top-Level Domain (“gTLD”) “.com” 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. No license or authorization of any kind has been given by the Complainant to the Respondent to use the LEGO trademark. Given the fame of the LEGO trademark any such use shall be considered as a violation of the Complainant’s trademark rights. 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 the Respondent has linked the disputed domain name to an unauthorized website offering the LEGO products and using the Complainant’s logo. The Respondent is not an authorized reseller and he did not disclose the fact that he has no business relationship of any kind with the Complainant. 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 numerous cases 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 name and it is clear that the Respondent knew of the Complainant’s rights in the famous trademark LEGO at the time of registration. The disputed domain name resolves to a commercial website which prominently uses the Complainant’s logo without authorization and offers the LEGO products for sale. The Respondent has intentionally attempted to attract Internet users to the website at the disputed domain name for commercial gain. The fact that the Respondent did not react to the Complainant’s warning letter constitutes bad faith. B. Respondent 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 Hong Kong, 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 name only differs from the Complainant’s LEGO mark through the addition of the other term “enligne” (“online” in English), 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 name. 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 “.com” in the disputed domain name is irrelevant in determining the first criteria under the Policy. Under the circumstance, the Panel concludes that the disputed domain name is 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 name, 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 not an authorized reseller of the Complainant, and he does not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant on the website linked to the disputed domain name. - The Respondent is not using the disputed domain name with a bona fide offering of goods or services as he linked the disputed domain name to a website selling the LEGO products and prominently displaying the LEGO logo 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 name, in particular no evidence showing that the Respondent has been commonly known by the disputed domain name or any evidence showing a bona fide offering of goods or services, or any legitimate noncommercial or fair use of the disputed domain name. In view of the above and in the lack of any denial by the Respondent, the Panel is satisfied that it is more likely than not that the Respondent uses the disputed domain name without a bona fide offering of goods or services. Moreover, the nature of the disputed domain name 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 ago worldwide under the name and well-known trademark LEGO. Consequently, the Respondent knew or should have known of the Complainant’s trademark and deliberately registered the disputed domain name that is 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 name is being used to create and operate a commercial website using the LEGO logo 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. 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 name 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 name Theda König Horowicz
Sole Panelist
Date: March 15, 2021
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