ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. yangwen chao, qiangqiang Du Case No. D2023-0044 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. The Respondents are yangwen chao, China, and qiangqiang Du, China. 2. The Domain Names and Registrars The disputed domain name is registered with Realtime Register B.V. and the disputed domain name is registered with MAFF Inc. Realtime Register B.V. and MAFF Inc. are referred to below jointly and separately as the "Registrar". 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on January 5, 2023 regarding the disputed domain name . On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with that disputed domain name. On January 6, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for that 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 the same day providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the first amended Complaint in English on January 11, 2023, in which it requested the addition of the disputed domain name to the proceeding. On January 16, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with that additional disputed domain name. On January 18, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent qiangqiang Du is listed as the registrant of that additional disputed domain name and providing the contact details. On January 18, 2023, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant filed the second amended Complaint in English on January 20, 2023, in which it requested that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding. The Center verified that the Complaint together with the first and second amended Complaints satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the page 2 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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on January 25, 2023. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2023. Delivery of the Written Notice was refused at the address of the Respondent yangwen chao, and could not be delivered to the Respondent qiangqiang Du because the contact address in the Registrar's database is incomplete. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on February 15, 2023. The Center appointed Matthew Kennedy as the sole panelist in this matter on February 17, 2023. 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 the owner of LEGO, LEGOLAND and other trademarks used in connection with construction toys and other products sold in 130 countries, including China. The LEGOLAND trademark is also used in connection with ten theme parks owned by a subsidiary of the Complainant, including one in Japan. The Complainant is the owner of multiple trademarks including the following: - Chinese trademark registration number 75682 for LEGO, registered from December 22, 2016, specifying toys and other goods in class 28; - Chinese trademark registration number 206918 for 乐高 LEGO, registered on April 15, 1984, specifying toys and other goods in class 28; and - Chinese trademark registration number 257147 for LEGOLAND, registered from July 30, 1986, specifying scrabble; puzzles; toys; jigsaw puzzles; and board games in class 28. The above trademark registrations all remain current. The Complainant is also the registrant of many domain names that contain "lego", including , which resolves to a website providing information about the Complainant's toys, games, and other products. The Respondent qiangqiang Du is the registrant of the disputed domain name , created on November 18, 2020. The Respondent yangwen chao is the registrant of the disputed domain name , created on February 18, 2022. Both registrants are individuals ostensibly resident in China, although the contact address of qiangqiang Du is incomplete. The disputed domain names both resolve to websites in Chinese that display advertising for and hyperlinks to gambling websites, as well as material reproduced from a website of a third party, either a Chinese university or a Chinese chemical company. According to evidence presented by the Complainant, the registrant name and contact details for the disputed domain name are the same as those for the domain names and , and the contact email address for both disputed domain names is the same as that used for the domain names <518taobao.com> and . These four other domain names incorporate third party trademarks. 5. Parties' Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant's LEGO and page 3 LEGOLAND marks. The disputed domain name is confusingly similar to the Complainant's 乐高 mark. The Respondents have no rights or legitimate interests in respect of the disputed domain names. No license or authorization of any kind has been given by the Complainant to the Respondents to use the LEGO, 乐高 and LEGOLAND marks. The Respondents are not authorized dealers in the Complainant's products and have never had a business relationship with the Complainant. The disputed domain names have been registered and are being used in bad faith. The LEGO trademark has the status of a well-known and reputable trademark with a substantial and widespread goodwill throughout the world. The Respondents cannot claim to have been using the trademarks LEGO, 乐高 or LEGOLAND, without being aware of the Complainant's rights to them. The disputed domain names are connected to commercial websites featuring gambling content, not related to the Complainant in any way. The Respondent is using the disputed domain names intentionally to attempt to attract Internet users to their websites for commercial gain, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of their websites. B. Respondents The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Preliminary Issues A. Consolidation: Multiple Respondents The Complaint initiates disputes in relation to two nominally different domain name registrants. The Complainant alleges that the disputed domain names are under common control and requests consolidation of the disputes against them pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant's request. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant's request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.11.2. As regards common control, the Panel notes that both disputed domain name registrants use the same email contact address. The contact postal address for one registrant is incomplete and possibly fictitious. Further, the websites to which they resolve are similar. In these circumstances, the Panel is persuaded that the disputed domain name registrants are under common control. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (jointly and separately referred to below as "the Respondent") in a single proceeding. B. Language of the Proceeding Paragraph 11(a) of the Rules provides that "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 page 4 Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding". The Registrar confirmed that the Registration Agreement for the disputed domain name is in English and the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main argument is that translation of the Complaint into Chinese would unfairly disadvantage and burden it and delay the proceedings. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint and amended Complaints were filed in English. The Registration Agreement for one of the disputed domain names is also in English, which indicates that the Respondent understands that language, and the Panel has already found that the domain name registrants are under common control (see section 6.1A above). Further, despite the Center having sent an email regarding the language of the proceeding and Notification of the Complaint in English and Chinese, the Respondent has not commented on the issue of language nor expressed any interest in participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint would create an undue burden and delay. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements with respect to each disputed domain name: (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 Based on the evidence presented, the Panel finds that the Complainant has rights in the LEGO, 乐高 LEGO, and LEGOLAND marks. The disputed domain name wholly incorporates the Complainant's LEGO and LEGOLAND marks. It adds the letters "jp", which are an abbreviation for Japan, but this addition does not prevent a finding of confusing similarity because the LEGO and LEGOLAND marks remain clearly recognizable within the disputed domain name. See WIPO Overview 3.0, section 1.8. The disputed domain name incorporates "legao", a transliteration of the Chinese characters in the Complainant's 乐高 LEGO mark, which are a dominant feature of that mark and a phonetic transcription of LEGO. The disputed domain name adds the city name "Nanjing" as its initial element but this addition does not prevent a finding of confusing similarity because a dominant feature of the 乐高 LEGO mark remains clearly recognizable within the disputed domain name through transliteration. See WIPO Overview 3.0, sections 1.7 and 1.14. page 5 The only additional element in both disputed domain names is the generic Top-Level Domain ("gTLD") extension ".com". As a standard requirement of domain name registration, this element may be disregarded in the comparison between the disputed domain names and the Complainant's marks. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a 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. As regards the first and third circumstances set out above, the disputed domain names are confusingly similar to one or more of the Complainant's trademarks and resolve to websites that display advertising and hyperlinks to gambling websites. The Complainant submits that it has not licensed or authorized the Complainant to use its marks and that there has never been a business relationship between them. Nothing on the websites has any apparent connection to the disputed domain names. In view of these circumstances, the Respondent does not appear to be using the disputed domain names in connection with a bona fide offering of goods or services that would create rights of legitimate interests for the purposes of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain names. As regards the second circumstance set out above, the Respondent's names are listed in the Registrar's WhoIs database as "yangwen chao" and "qiangqiang Du", not the disputed domain names. Nothing on the websites associated with the disputed domain names indicates any other name by which the Respondent has been known. Nothing on the record indicates that the Respondent has been known by either of the disputed domain names. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint. Therefore, based on the record of this proceeding, the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows: page 6 (iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] web site or location or of a product or service on [the respondent's] website or location. As regards registration, the disputed domain names were registered in 2020 and 2022, decades after the registration of the Complainant's LEGOLAND and 乐高 LEGO marks, including in China, where the Respondent is ostensibly resident. The disputed domain name wholly incorporates LEGOLAND with the addition of "jp", which is an abbreviation of "Japan". LEGOLAND has no other apparent meaning than as a reference to the theme parks owned by a subsidiary of the Complainant, one of which is located in Japan. This disputed domain name gives the false impression that it will resolve to a website for the LEGOLAND theme park in Japan, which appears to be intentional. The disputed domain name combines the city name "Nanjing" with a transcription of 乐高, which is a dominant feature of the 乐高 LEGO mark and a phonetic transcription of LEGO. The Complainant has acquired a significant reputation in its 乐高 LEGO mark through longstanding use in China in connection with its construction toys and other products. This disputed domain name gives the false, or at least confusing, impression that it may resolve to a website for a Nanjing affiliate or reseller of the Complainant's 乐高 LEGO products. This appears to be intentional, an inference confirmed by the fact that the registrant of this disputed domain name is under common control with the registrant of the other disputed domain name that also incorporates one of the Complainant's marks. The Respondent provides no explanation for the choice of either disputed domain name. In view of these circumstances, the Panel finds that the Respondent was aware of the Complainant and its marks at the time that the disputed domain names were registered. As regards use, the disputed domain name combines the LEGOLAND mark with an abbreviation for Japan, giving the false impression that it will resolve to a website for the LEGOLAND theme park in Japan, while the disputed domain name combines the city name "Nanjing" with "legao", giving the false or at least confusing impression that it will resolve to a Nanjing reseller or affiliate of the Complainant's 乐高 LEGO products. However, both disputed domain names resolve to websites that display advertising for and hyperlinks to gambling websites, as well as material reproduced from an unrelated third party website. The Panel finds that the most likely explanation for the use of the disputed domain names is that they were intended to divert Internet users searching for information regarding the Complainant's theme parks and products, even if it would eventually be clear to those who reached the Respondent's websites that they were not the Complainant's websites. In view of these circumstances and the findings in Section 6.2B above, the Panel finds that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites within the terms of paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in 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 names and be transferred to the Complainant. /Matthew Kennedy/ Matthew Kennedy Sole Panelist Date: February 23, 2023
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