ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Yang Zhi Chao (杨智超 Case No. D2023-0053 1. The Parties Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. Respondent is Yang Zhi Chao (杨智超), China. 2. The Domain Names and Registrar The disputed domain names , and (the "Domain Names") are registered with eName Technology Co., Ltd. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 5, 2023. On January 5, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 6, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 6, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 9, 2023. On January 6, 2023, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On January 9, 2023, Complainant confirmed its request that English be the language of the proceeding. 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"). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 17, 2023. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 8, 2023. page 2 The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on February 16, 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 Complainant, based in Denmark, manufactures and sells construction toys, computer hardware and software, books, videos and robotic construction sets under the LEGO trademark. Complainant has subsidiaries and branches throughout the world, and Complainant's products are sold in more than 130 countries, including in China. Complainant is the owner of numerous registered trademarks for the LEGO mark globally, including: - Danish registered trademark no. VR195400604 for LEGO word mark, registered on May 1,1954; and - Chinese registered trademark no. 135134 for LEGO word mark, registered on January 5, 1980. Complainant is also the owner of many domain names containing the LEGO mark, including . The Domain Names were each registered on April 16, 2022. They each revert to a respective webpage with commercial Pay-Per-Click ("PPC") advertising page links, such as: "Steam Education", "Stem Steam" and "Steam Learning". The Domain Names and are also each being offered for sale on the same domain marketplace site "Afternic" for by now price of USD 7,999. Complainant sent a cease-and-desist letter to Respondent on June 1, 2022 by e-mail, indicating that Respondent's unauthorized use of the LEGO trademark within each of the Domain Names violated Complainant's trademark rights. Complainant requested a voluntary transfer of the Domain Names and offered compensation for the expenses of registration and transfer fees. Despite of the cease and desist letter and its reminders, Respondent did not reply. Complainant then filed the current proceeding. 5. Parties' Contentions A. Complainant Complainant contends that (i) the Domain Names are each identical or confusingly similar to Complainant's trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Names; and (iii) Respondent registered and is using the Domain Names in bad faith. In particular, Complainant contends that it has trademark registrations for LEGO and that Respondent registered and is using the Domain Names with the intention to confuse Internet users looking for bona fide and well-known LEGO products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant's trademark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Names. Rather, Complainant contends that Respondent has acted in bad faith in registering and setting up the Domain Names, when Respondent clearly knew of Complainant's rights. B. Respondent Respondent did not reply to Complainant's contentions. page 3 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, 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. Complainant submitted its original Complaint in English. In its email dated January 9, 2023, and amended Complaint, Complainant confirmed its request that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement for each of the Domain Names is Chinese. Complainant asserts that they are unable to communicate in Chinese, that each of the Domain Names is registered in Latin characters, that each of the Domain Names resolve to a website providing content in English, and that the term "lego" which is the dominant portion of each of the Domain Names, does not have any specific meaning in the Chinese language, that the Respondent is using Domain Names that are confusingly similar to Complainant's LEGO trademarks and targeting English speaking consumers seeking Complainant or its products. Complainant also contends that holding the proceeding in Chinese would cause undue delay, considerable expense, unfair disadvantage and burden Complainant as well as the dispensation of the current matter. Complainant also contends that it had sent a cease and desist letter to Respondent with ample time for Respondent to request communications in Chinese, and Respondent did not reply. In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Names, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time and costs. The Panel accepts Complainant's submissions regarding the language of the proceeding. The Panel notes that the Center notified the Parties in Chinese and English of the language of the proceeding as well as notified Respondent in Chinese and English of the Complaint. Respondent chose not to comment on the language of the proceeding, nor did Respondent choose to file a Response. The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English be the language of the proceeding. 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name was registered and is being used in bad faith. page 4 Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states that failure to respond to the complainant's contentions would not by itself mean that the complainant is deemed to have prevailed; a respondent's default is not necessarily an admission that the complainant's claims are true. Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the LEGO trademarks, as noted above. Complainant has also submitted evidence which supports that the LEGO trademarks are widely known and a source identifier of Complainant's products and services. Complainant has therefore proven that it has the requisite rights in the LEGO trademarks. With Complainant's rights in the LEGO trademarks established, the remaining question under the first element of the Policy is whether each of the Domain Names, typically disregarding the Top-Level Domain ("TLD") in which it is registered (in this case, ".com"), is identical or confusingly similar to Complainant's trademark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. Here, each of the Domain Name is confusingly similar to Complainant's LEGO trademark. These LEGO trademarks are recognizable in each of the Domain Names. In particular, each the Domain Name's inclusion of Complainant's trademark LEGO in its entirety, with an addition of a misspelling of the term "education" spelt: "educatin", "educaton" and "educaion" in the respective Domain Names, does not prevent a finding of confusing similarity between each of the Domain Names and the LEGO trademarks. See WIPO Overview 3.0 at section 1.8: "Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element." Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its LEGO trademarks, and does not have any rights or legitimate interests in the Domain Names. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the LEGO trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with the LEGO trademarks, and there is no evidence showing that Respondent has been commonly known by the Domain Names. In addition, Respondent has not used the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, they each revert to a webpage with commercial PPC advertising page links, including "Steam Education", "Stem Steam" and "Steam Learning". The Domain Names and are also each being offered for sale on the same page 5 domain marketplace site "Afternic" for a price of USD 7,999. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Names. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Names. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Names and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent's actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: "(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 on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location." The Panel finds that Complainant has provided ample evidence to show that registration and use of the LEGO trademarks long predate the registration of the Domain Names. Complainant is also well established and known. Indeed, the record shows that Complainant's LEGO trademarks and related products and services are widely known and recognized. Therefore, Respondent was likely aware of the LEGO trademarks when it registered the Domain Names, or knew or should have known that each of the Domain Names was confusingly similar to Complainant's trademarks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. The Panel therefore finds that Respondent's awareness of Complainant's trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007. Further, the registration of the Domain Names incorporating Complainant's LEGO trademark in its entirety suggests Respondent's actual knowledge of Complainant's rights in the LEGO trademarks at the time of registration of the Domain Names and its effort to opportunistically capitalize on the registration and use of the Domain Names. page 6 Moreover, the Domain Names each revert to a webpage with commercial PPC advertising page links, including "Steam Education", "Stem Steam" and "Steam Learning". The Domain Names and are also each being offered for sale on the same domain marketplace site "Afternic" for by now price of USD 7,999. Such use of the Domain Names demonstrates that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with Complainant's LEGO trademark. Finally, the Panel also notes the reputation of the LEGO trademarks, and the failure of Respondent to submit a response to the cease and desist letter, any of the corresponding reminders and the Complaint. Accordingly, the Panel finds that Respondent has registered and is using the Domain Names in bad faith and Complainant succeeds under the third element of 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 Domain Names, , , and be transferred to Complainant. /Kimberley Chen Nobles/ Kimberley Chen Nobles Sole Panelist Date: February 27, 2023
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