ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. 张利哲 (zhang li zhe), 深圳利至科技有限公司 (shen zhen li zhi ke ji you xian gong si) Case No. D2022-3338 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. The Respondent is 张利哲 (zhang li zhe), 深圳利至科技有限公司 (shen zhen li zhi ke ji you xian gong si), China. 2. The Domain Name and Registrar The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar"). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 8, 2022. On September 9, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2022, 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 September 15, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. The Complainant filed an amended Complaint in English on September 16, 2022, which included a 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 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"). page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on September 22, 2022. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2022. The Respondent did not submit any response. However, an informal email sent from the email address shown on the website at the disputed domain name was received on September 26, 2022, indicating the website has been temporarily terminated since November 22, 2021 by their platform and it has not been used/active since then. Accordingly, the Center notified the Commencement of Panel Appointment Process on October 13, 2022. The Center appointed Sok Ling MOI as the sole panelist in this matter on October 24, 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 Background The Complainant, established and headquartered in Denmark, is in the business of making and selling LEGO branded toys. The Complainant has subsidiaries and branches throughout the world, and its LEGO branded toys are sold in more than 130 countries, including in China. The Complainant is the owner of the trade mark LEGO used in connection with its LEGO branded products. It owns numerous trade mark registrations for LEGO, including the following: Jurisdiction Mark Application/Registration No. Registration Date China LEGO 75682 December 22, 1976 Denmark LEGO VR195400604 May 1, 1954 Singapore LEGO T6435007D May 23, 1964 The Complainant is the owner of close to 5,000 domain names containing the mark LEGO. The LEGO Group maintains an official website under the domain name . The Respondent registered the disputed domain name on November 19, 2021. According to the evidence submitted by the Complainant, the disputed domain name resolves to a landing webpage with no substantive contents except the phrase, "Sorry, our store is under annual maintenance, please email [.]@shopssupport.com to be assisted." 5. Parties' Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its trade mark LEGO, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith. The Complainant requests for the transfer of the disputed domain name. B. Respondent Apart from the email communication of September 26, 2022 received from the email address shown on the website at the disputed domain name as indicated under section 3 above, the Respondent did not reply to the Complainant's contentions. In the email communication of September 26, 2022, it is also stated that "The unauthorized use of copyrighted products (including the violation of image rights of a third party and the use of counterfeit brands), which has negative influences on a particular community, is against our Terms of Service." page 3 6. Discussion and Findings 6.1. Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, unless 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) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated fairly and given a fair opportunity to present their respective case. The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Respondent did not respond on the language issue. On the record, the Respondent appears to be a Chinese individual. However, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has knowledge of English. In particular, the Panel notes that: (a) The disputed domain name is registered in Latin characters, rather than Chinese script; (b) The disputed domain name consists of the English word "sale"; and (c) The website to which the disputed domain name resolves has contents in English. Additionally, the Panel notes that: (a) The Center has notified the Respondent of the language of the proceeding and commencement of the proceeding in both Chinese and English; (b) The Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding; (c) The Center has informed the Respondent that it would accept a response in either English or Chinese; and (d) The Respondent did not comment on the language of the proceeding or file a Response. The Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. The Panel is also of the view that to require the Complaint and all supporting documents to be translated into Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would also be unnecessarily delayed. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English, and (ii) English shall be the language of the proceeding, and (iii) the decision will be rendered in English. 6.2. Substantive Matters Paragraph 4(a) of the Policy directs that the complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred: page 4 (i) the disputed domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; (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. On the basis of the evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar The Panel accepts that the Complainant has trade mark rights in LEGO by virtue of use and registration. The disputed domain name incorporates the Complainant's trade mark in its entirety. The addition of the word "sale", hyphen sign "-" and the country acronym "us" does not prevent a finding of confusingly similarity between the disputed domain name and the Complainant's trade mark since the Complainant's LEGO trade mark is clearly recognisable within the disputed domain name. The addition of the generic Top-Level Domain ("gTLD") ".com" is a standard registration requirement and is generally disregarded for the purpose of the confusing similarity assessment. Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trade mark. Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy: (i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue. (See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.) The Respondent's name does not bear any resemblance to the term "lego". There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or that it has any rights in the term "lego" or in the disputed domain name. The Complainant has confirmed that the Respondent is not in any way related to or affiliated with the Complainant or otherwise authorized or licensed to use the LEGO trade mark or to seek registration of any domain name incorporating the trade mark. page 5 According to evidence submitted by the Complainant, the disputed domain name does not resolve to any active website. Instead, the landing webpage contains the words, "Sorry, our store is under annual maintenance, please email [.]@shops-support.com to be assisted". There is no evidence to suggest that the Respondent has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use purpose. The Panel is therefore satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the prima facie case has not been rebutted. Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a disputed domain name in bad faith, namely: (i) circumstances indicating that the respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or (ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed 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. The Panel notes that, as of the date of this decision, the disputed domain name does not resolve to any active website. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. UDRP panels must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 3.3. The Panel accepts that the Complainant's LEGO trade mark is a distinctive and world famous mark as a result of extensive use and advertising over the past few decades. The Complainant's LEGO trade mark would also be well known in China where the Respondent is based. Registration of a domain name that incorporates a complainant's distinctive and well-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4. There is no doubt that the Respondent was aware of the Complainant and the value of the LEGO trade mark, at the point of registering the disputed domain name. page 6 The Respondent has not denied the Complainant's allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith. Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 be transferred to the Complainant. /Sok Ling MOI/ Sok Ling MOI Sole Panelist Date: November 16, 2022
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