The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Cong Ty Cp Xuc Tien Tm Dau Tu Hanh Tinh So, Viet Nam.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2021. On November 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 18, 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.
On November 18, 2021, the Center transmitted an email communication to the Parties in English and Vietnamese regarding the language of the proceeding. On November 19, 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.
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 in English and Vietnamese of the Complaint, and the proceedings commenced on November 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2021.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on January 13, 2022. 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 BackgroundThe Complainant, LEGO Juris A/S, is a Denmark-based corporation that owns the LEGO trademark and other trademarks used in connection with construction toys and other LEGO branded products. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. According to Superbrands UK, the LEGO brand was ranked as number 1 in Top 10 Consumer Superbrands and number 8 in the Consumer Relevancy Index in the year 2019. In 2014, Time also announced LEGO to be the Most Influential Toy of All Time.
The Complainant has rights in numerous trademark registrations for LEGO trademark in various jurisdictions throughout the world, including in Viet Nam, where the Respondent resides, with Vietnamese Registration No. 60988 registered on March 14, 2005 and International Registration No. 287932 registered on August 27, 1964 designating, among others, Viet Nam, for toy products in Class 28.
The Complainant also owns close to 5,000 domain names featuring the LEGO trademark, among which the notable ones are
The Disputed Domain Name was registered on April 24, 2021. As of the date of this Decision, and as provided in the Complaint, the Disputed Domain Name does not resolve to an active website.
As indicated in the case file, the Complainant’s attorneys sent to the Respondent a cease-and-desist letter with regard to the Disputed Domain Name on June 4, 2021 and two reminders on June 11, 2021 and June 21, 2021, respectively, in which the Complainant asked for, amongst others, a voluntary transfer of such Disputed Domain Name. However, the Respondent did not reply.
5. Parties’ Contentions A. Complainant(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights.
First, the Complainant contends that the Complainant is the registered owner of LEGO trademark in numerous jurisdictions around the world. Further, the Complainant asserts that the LEGO trademark is well known and famous, which has been confirmed in previous UDRP decisions.
Second, the Complainant contends that the Disputed Domain Name is confusingly similar to the trademark owned by the Complainant since the Disputed Domain Name incorporates the Complainant’s LEGO trademark in its entirety, and the addition of the generic term “house” could not dispel any likelihood of confusion.
Finally, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) suffix “.tech” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.
First, the Complainant submits that the Respondent has no registered trademark or trade name corresponding to the Disputed Domain Name. Consequently, the Respondent may not claim any rights established by common usage.
Second, the Complainant submits that the Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the above-mentioned trademark. Further, the Respondent is not an authorized dealer of the Complainant’s products, but there is no disclaimer on the website to explain the lack of relationship to the Complainant.
Further, the Respondent’s name “Cong Ty Cp Xuc Tien Tm Dau Tu Hanh Tinh So”, as identified in the WhoIs information, has no resemblance with the term “Lego”, thus no evidence suggests that the Respondent is commonly known by the Disputed Domain Name. In addition, since LEGO is a famous trademark worldwide, any use of such a trademark in a domain name would violate the rights of the Complainant.
Finally, the Complainant submits that the Respondent is neither making a legitimate noncommercial or fair use of the Disputed Domain Name nor using the Disputed Domain Name in connection with a bona fide offering of goods or services since the Disputed Domain Name directs Internet users to an error page with no active content.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
First, the Complainant asserts that panel decisions under the Policy regularly recognize the well-known and reputable status of the Complainant’s LEGO trademark and the LEGO trademark has always been attractive to domain name infringers. Therefore, in the present case, the fame of the LEGO trademark has also motivated the Respondent to register the Disputed Domain Name, and the Respondent cannot claim to have been using the LEGO trademark without being aware of the Complainant’s rights to it.
Second, the Complainant contends that the Disputed Domain Name has been registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion – or at least an impression of association – with the LEGO trademark, and domain names containing the element “Lego” of the Complainant. Thus, the Respondent must have been undoubtedly aware of the risk of deception and confusion that would inevitably arise from the registration of the Disputed Domain Name. The Respondent acted with opportunistic bad faith in registering the Disputed Domain Name in order to make an illegitimate use of it.
Furthermore, the Complainant contends that since the Disputed Domain Name resolves to an inactive website, the passive holding behavior falls within the concept of the domain name being used in bad faith, as it has been established in many UDRP cases.
Finally, the Complainant submits that the Respondent has neither prior rights nor legitimate interests to justify the use of the already worldwide well-known LEGO trademark in the Disputed Domain Name. The absence of legitimate interests somewhat induces the absence of good faith.
With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Procedural Issues (A) Language of the ProceedingThe Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese.
As the Complaint was filed in English, the Center, in its communication dated November 18, 2021, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding.
On November 19, 2021, the Complainant responded the Center, confirming its request that English be the language of the proceeding as indicated in section V of the Complaint.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the 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.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) of the Rules is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679).
In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:
(i) the fact that the Complainant, a Denmark-based business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation;
(ii) the English language is quite popular in Viet Nam, where the Respondent is located, and the Disputed Domain Name contains the English word (i.e., “house”); these suggest that the Respondent appears to have knowledge of the English language and be able to communicate in English;
(iii) the Respondent did not object for English to be the language of the proceeding and did not submit a response in either English or Vietnamese, although the Center sent the emails of the language of the proceeding and notification of the Complaint in both English and Vietnamese.
Therefore, in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.
(B) The Respondent’s Failure to RespondThe Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413, and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
6.2. Substantive Issues A. Identical or Confusingly SimilarThe Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to LEGO, well before the Disputed Domain Name was registered.
Second, the Disputed Domain Name comprises the Complainant’s LEGO trademark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix “house”. The Panel finds that the LEGO trademark remains recognizable in the Disputed Domain Name. It is well established that the addition of other terms to a trademark does not prevent a finding of confusing similarity. Thus, in the Panel’s view, the addition of the suffix “house” does nothing to prevent the LEGO trademark from being recognizable in the Disputed Domain Name, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., LEGO Juris A/S v. Henry Jufri, Bayao Studio,WIPO Case No. D2021-2246; Royal Canid SAS v. Ong Pham Duc Thang,WIPO Case No. D2017-2567).
Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.tech” to the Disputed Domain Name does not constitute an element that may help avoid confusing similarity for the Policy purposes (see, e.g., LEGO Juris A/S v. Henry Jufri, Bayao Studio,WIPO Case No. D2021-2246; Compagnie de Saint-Gobain v. Andrea Chi, Andrea Chi,WIPO Case No. D2020-3546; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s LEGO trademark, and the first element of the Policy is established.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel finds that the Complainant has prima facie established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.
The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the Complainant, once a prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the Disputed Domain Name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted providing arguments or evidence to the contrary.
Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the LEGO trademark.
In addition, the Complainant provided evidence of the renown of the LEGO trademark worldwide, as shown in Annex 7 to the Complaint. Hence, the Panel concludes that the Respondent should have been aware of the LEGO trademark and its direct relation to the Complainant.
The Disputed Domain Name resolves to an inactive website. However, no evidence is available on the Respondent’s preparation to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Hence, in absence of this evidence, the Panel is of the view that paragraph 4(c)(i) of the Policy is not met.
Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence on record that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the LEGO trademark and had an intention to take advantage of the goodwill and reputation of the Complainant’s LEGO trademark.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively.
The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.
The Panel further finds that the Complainant’s LEGO trademark has been registered in numerous countries, including in Viet Nam, where the Respondent resides. According to what the Complainant established and similar to previous UDRP panel decisions, the Panel finds that the LEGO trademark is well known throughout the world, including in Viet Nam (see e.g. LEGO Juris A/S v. Henry Jufri, Bayao Studio,WIPO Case No. D2021-2246; LEGO Jurís A/S v. WhoisGuard Protected, WhoisGuard, Inc./Truong Bui,WIPO Case No. D2020-2457; LEGO Juris A/S v. Contact Privacy Inc. Customer 1246240368 / Nguyen Anh Duy,WIPO Case No. D2020-0822; LEGO Juris A/S v. lin zhang,WIPO Case No. D2020-0675; LEGO Juris A/S v. WhoisGuard Protected, WhoisGuard, Inc. / Eric Meals,WIPO Case No. D2020-0823; LEGO Juris A/S v. Nadir Boukeraa,WIPO Case No. D2020-0874; and LEGO Juris A/S v. Wu Zhang,WIPO Case No.
D2020-0914).
Given the famous nature and wide use of the LEGO trademark by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, and well predated the registration date of the Disputed Domain Name, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, the Panel is of the view that particularly noting the Complainant’s domain name
It is further noted that as of the date of this Decision, and at the time of filing of the Complaint, the Disputed Domain Name has not been used. From the inception of the UDRP, panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of the WIPO Overview 3.0).
In light of this doctrine, the Panel finds that at the time of registration of the Disputed Domain Name, the Complainant had an established international reputation in the LEGO trademark and had established a worldwide presence for its construction toys. Hence, the Panel is of the view that the Respondent intentionally chose to register the Disputed Domain Name, which is comprised of the element “house” combined with the Complainant’s LEGO trademark, in order to somehow confuse Internet users that the Disputed Domain Name may have a connection with the Complainant. Further, the Respondent failed to submit a response and/or to provide any evidence of actual or contemplated good faith use of the Disputed Domain Name. Therefore, the Panel considers it implausible for the Respondent to engage in any good faith use of the Disputed Domain Name.
Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established.
7. DecisionFor 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
Pham Nghiem Xuan Bac
Sole Panelist
Date: January 27, 2022