The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is 刘营军 (liu ying jun), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2021. On April 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 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 April 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 in English on April 27, 2021. On April 22, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 23, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. On April 27, 2021, the Respondent transmitted an email communication to the Center expressing its willingness to give up the Disputed Domain Name. On April 28, 2021, the Complainant transmitted by email to the Center its request to suspend the proceedings for the purpose of settlement talks. On April 28, 2021, the Center notified the Parties in Chinese and English that the proceeding was suspended until May 28, 2021. The Respondent did not respond to any of the Complainant’s emails. Accordingly, further to the Complainant’s request for reinstitution submitted on May 27, 2021 to the Center, the proceeding was reinstituted as of May 27, 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 in Chinese and English of the Complaint, and the proceedings commenced on May 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2021. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on June 23, 2021. The Center appointed Peter J. Dernbach as the sole panelist in this matter on July 7, 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, based in Denmark, is the owner of LEGO, and all other trademarks used in connection with the famous LEGO brand of construction toys and other LEGO branded products. Those include the Danish trademark registration number VR195400604 for LEGO registered on May 1, 1954 and the Chinese trademark registration number 671899 for LEGO registered on December 28, 2013. The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in China and elsewhere. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in China. The Complainant is the owner of close to 5,000 domain names containing the term LEGO. The Respondent is an individual in China, and the Disputed Domain Name The Complainant owns many LEGO trademarks and domain names filed in numerous countries all over the world, including in China where the Respondent is based, and the fame of the trademark has been confirmed in numerous previous UDRP decisions (See, LEGO Juris A/S v. Level 5 Corp,WIPO Case No. D2008-1692). The Disputed Domain Name incorporates the LEGO trademark in its entirety, with an additional element “store”. The “store” element does not diminish the confusing similarity with the Complaint’s brand and trademark. In fact, the Complainant operates an on-line store for its toy products at its official website at the Moreover, the Respondent’s use of the Disputed Domain Name contributes to the confusion. The Respondent uses the Disputed Domain Name to resolve to a website which features the Complainant’s LEGO trademark and logotype and offers Lego products for sale, which suggests that the Respondent intended the Disputed Domain Name to be confusingly similar to the Complainant’s trademark as a means of furthering consumer confusion. (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not the owner of any LEGO trademark. No evidence, including the WhoIs record for the Disputed Domain Name, suggests that the Respondent is commonly known by the Disputed Domain Name. Additionally, the Complainant has not given the Respondent any license or authorization of any other kind to use the LEGO trademark, and the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. No evidence has been found that the Respondent is using the name LEGO as a company name or has any other legal rights in the name. In addition, the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a website that is commercial through links directing Internet users to another commercial website, namely “www.amazon.com”, offering all kinds of products from a wide range of different brands, including, but not limited to, the Complainant. (iii) The Disputed Domain Name was registered and is being used in bad faith. Previous UDRP panels have issued many decisions recognizing the well-known status of the Complainant’s LEGO trademarks. The Respondent registered the Disputed Domain Name on November 5, 2020. This date is years after the Complainant’s registration of the LEGO trademark in China. It is obvious that it is the fame of the trademark that has motivated the Respondent to register the Disputed Domain Name. Moreover, the Disputed Domain Name is connected to a website directing Internet users through links to another commercial website, namely “www.amazon.com”, offering all kinds of products from a wide range of different brands, including, but not limited to, the Complainant. The incorporation of a well-known trademark into the Disputed Domain Name by the Respondent having no plausible explanation for doing so may be, in and of itself, an indication of bad faith. Additionally, the Respondent creates a likelihood of confusion with the Complainant and its trademarks by attempting to pass itself off as the Complainant by featuring the Complainant’s LEGO trademark and logotype and the phrase “WELCOME TO THE LEGO SHOP” at the top of the Disputed Domain Name’s website, and the potential visitors viewing the Disputed Domain Name could easily assume that it is operated or endorsed by the Complainant. The Complainant argues that this is strong evidence of bad faith use. In addition to the Disputed Domain Name, the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses. This fact demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the Disputed Domain Name. B. Respondent Other than sending an email on April 27, 2021 saying he gave up the Disputed Domain Name as mentioned above, the Respondent did not reply to the Complainant’s contentions. 6. Language of the Proceeding Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. Paragraph 10(b) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”; and paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”. The Registration Agreement for the Disputed Domain Name is in Chinese. The Complainant requested that the language of the proceeding be English. The Respondent was given an opportunity to comment on the language of the proceeding and failed to do so. Given the following factors, the Panel decides that the language of the proceeding be English. (1) The Disputed Domain Name (2) Neither the Complainant nor its legal representatives are in a position to conduct the proceeding in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese. Hence, the use of Chinese in the proceeding would impose a burden on the Complainant, which will be deemed in view of the cost for the present proceeding; (3) The Center sent an email communication to the Parties in both Chinese and English on April 22, 2021 inviting them to comment on the language of the proceeding. The Respondent was given an opportunity to comment on the language of the proceeding and failed to do so. The Center also formally notified the Respondent in both Chinese and English of the Complaint on May 28, 2021. However, the Respondent has chosen not to file a Response; and (4) According to the screenshots of the web site to which the Disputed Domain Name formerly resolved submitted by the Complainant, the Respondent also used English on the web site to which the Disputed Domain Name resolved. It thus appears that the Respondent can understand English, the language of the Complaint. Given these facts, the Panel is satisfied that the Respondent has been given an opportunity to participate and has chosen not to respond. Therefore, it would not be prejudicial to the Respondent in his abilities to articulate his arguments in Chinese or English in the administrative proceeding, whereas requiring the Complainant to translate the Complaint and all supporting materials into Chinese would cause unnecessary delay to the administrative proceeding. (See, Dolce & Gabbana S.r.l. v. Zhang Yali,WIPO Case No. D2013‑1101). The Panel does not consider it prejudicial to the Respondent to adopt English as the language of the proceeding, and determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English. 7. Discussion and Findings In accordance with paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present: (i) the Disputed Domain Name is 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 Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant alleges that the Disputed Domain Name The Complainant has established that it is the owner of the LEGO trademarks. The Disputed Domain Name incorporates the Complainant’s LEGO trademark in its entirety and includes the additional “store.wang” element. The “store” element does not prevent the confusing similarity between the Disputed Domain Name and the Complainant’s trademark. The addition of the gTLD “.wang” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademarks. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.11. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks, and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interest in respect of the [disputed] domain name[.]” Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [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.” The Complainant has established that it is the owner of LEGO trademarks, and that it has neither licensed nor authorized the Respondent to make any use of such trademarks or apply for registration of the Disputed Domain Name. There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name, the name LEGO or any similar name. The Disputed Domain Name resolved to a website pointing to another commercial website, namely “www.amazon.com”, offering all kinds of products from a wide range of different brands, besides the Complainant. The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent did not submit any allegation or evidence to support a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name or that it is used in connection with a bona fide offering of goods or services or for legitimate noncommercial or fair use as demonstrated in paragraph 4(c) of the Policy. Having considered the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith”. Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: […] The Complainant’s LEGO trademarks have been registered in many countries around the world. These registrations were made long prior to the registration of the Disputed Domain Name. The Complainant has established that its LEGO trademarks are well-known. It is therefore highly unlikely that the Respondent was unaware of the existence of the Complainant’s trademarks at the time of the Disputed Domain Name registration was made. The Respondent chose the “lego” element as the distinctive part of the Disputed Domain Name. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected the “lego” element for any reason other than the reputation of the Complainant’s trademarks. The Panel finds that the Disputed Domain Name has been registered in bad faith. The Respondent used a privacy service when creating the Disputed Domain Name. Although privacy services might be legitimate in certain circumstances, it is difficult for the Panel to see in the present case why the Respondent should need to protect its identity except to avoid being notified of a UDRP proceeding and to make it difficult for the Complainant to protect its trademark rights. The Panel rather believes that the choice of the Disputed Domain Name, the content as well as the design of the Respondent’s corresponding websites rather indicate that the Respondent deliberately opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the Complainant. This is an inference of bad faith. The Disputed Domain Name formerly resolved to the website that contained language suggesting it was a Lego shop and directing Internet users through links to another commercial website, namely “www.amazon.com”, offering all kinds of products from a wide range of different brands, including but not limited to, the Complainant. This use is clearly intended to attract Internet users for commercial gain. The Panel finds that the Respondent’s use of the Disputed Domain Name attempts to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s LEGO mark. This use of the Disputed Domain Name is in bad faith. Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 8. 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 Peter J. Dernbach
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line 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] web site or location.”
Sole Panelist
Date: July 19, 2021
Full & Egal Universal Law Academy