ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. liu li hua Case No. D2023-2134 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. The Respondent is liu li hua, China. 2. The Domain Name and Registrar The disputed domain name is registered with Gname.com Pte. Ltd. (the "Registrar"). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on May 15, 2023. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2023, 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 (Redacted for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 24, 2023, 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 May 25, 2023. On May 24, 2023, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 25, 2023, 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 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 English and Chinese of the Complaint, and the proceedings commenced on May 30, 2023. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 21, 2023. page 2 The Center appointed Matthew Kennedy as the sole panelist in this matter on June 28, 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 trademarks used in connection with construction toys and other products. The Complainant is the owner of multiple trademarks including Chinese trademark registration number 75682 for LEGO, registered on December 22, 1976, specifying toys and other goods in class 28; Chinese trademark registration number 671899 for a semi-figurative LEGO mark (the "LEGO logo"), registered on December 28, 1993, specifying clothing, footwear and headgear and other goods in class 25; and Greek trademark registration number F26031 for LEGO, registered on September 18, 1961, specifying games, parts and accessories thereof, in class 28. Those trademark registrations remain current. The Complainant has also registered many domain names that contain "lego" including that it uses with a website that provides information about its LEGO toys, games, and other products. The Respondent is an individual based in China. The disputed domain name was registered on November 18, 2022. It resolves to a website in Greek purportedly offering for sale children's toys of various brands including PLAYMOBIL, PLAY-DOH, and LEGO. The website header begins with "LEGO". The website prominently displays a logo and tagline that ends with "LEGO". The menu bar formerly displayed tabs with labels including LEGO City, LEGO Classic, LEGO Technic, and LEGO Disney. The LEGO logo is displayed in a product image. Under the heading "About Us", the message includes the following statement: "We hope you like the LEGO Store Deals". The Complainant sent a cease-and-desist letter to the Respondent on December 19, 2022. 5. Parties' Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant's LEGO mark. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Registrar identified the Respondent's name as "liu li hua", which does not resemble the disputed domain name in any manner. No license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO. The Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant. The Respondent does not satisfy the criteria laid down in the Oki Data Test for a bona fide offering of goods or services. The disputed domain name was registered and is being used in bad faith. LEGO is a famous trademark worldwide. It is clear that the Respondent was aware of the rights the Complainant has in its trademarks at the time of registration of the disputed domain name. The disputed domain name is connected to an unauthorized commercial website offering for sale toys, including the Complainant's LEGO products. B. Respondent The Respondent did not reply to the Complainant's contentions. page 3 6. Discussion and Findings 6.1 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 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 Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that it is unable to communicate in Chinese, translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings, such additional delay would pose a continuing risk to the Complainant and unsuspecting consumers seeking the Complainant or its products, and the disputed domain name is comprised of Latin characters. Paragraphs 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; and Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293. The Panel observes that the Complaint and amended Complaint in this proceeding were filed in English. Despite the Center having sent an email regarding the language of the proceeding, and the notification of Complaint, in both Chinese and English, the Respondent did not comment on the language of the proceeding or express any interest in otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting the Complaint in English does not cause prejudice to either Party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed. 6.2 Analysis and Findings Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (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 mark. The disputed domain name wholly incorporates the LEGO mark as its initial element. It adds the letters "sney" (as in "Disney") and "gr" (an abbreviation for "Greece"). However, the addition of these letters does not prevent a finding of confusing similarity because the LEGO mark remains clearly recognizable within the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), sections 1.7 and 1.8. page 4 The only other element in the disputed domain name is a generic Top-Level Domain ("gTLD") extension (".com"). As a standard requirement of domain name registration, this element may be disregarded in the comparison between a domain name and a mark, unless it has some impact beyond its technical function, which is not the case here. See WIPO Overview 3.0, section 1.11.1. Therefore, the Panel finds that the disputed domain name 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 circumstance set out above, the disputed domain name resolves to a website that offers for sale children's toys, including the Complainant's LEGO toys. The Complainant submits that it has not licensed or authorized the Respondent to use the trademark LEGO and that the Respondent is not an authorized dealer of the Complainant's products. The Panel notes that, although the disputed domain name incorporates the LEGO mark (combined with other letters), the associated website sells not only LEGO toys but other brands as well, such as PLAYMOBIL and PLAY-DOH. Further, the website does not clarify that it has no relationship with the Complainant; on the contrary, under the heading "About Us", it claims to offer "LEGO Store Deals" as if it were a Complainant-authorized store. In view of these circumstances, the Panel does not find that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Accordingly, the Panel does not find that the Respondent's use falls within the first circumstance of paragraph 4(c) of the Policy. As regards the second circumstance set out above, the Registrar verified that the Respondent's name is "liu li hua", not the disputed domain name. Nothing in the record indicates that the Respondent has been commonly known by the disputed domain name. As regards the third circumstance set out above, the disputed domain name resolves to an online store. That is not a legitimate noncommercial or fair use of the disputed domain name. 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 she 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. page 5 C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: (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] website or location or of a product or service on [the Respondent's] website or location. As regards registration, the disputed domain name was registered in 2022, decades after the registration of the Complainant's LEGO trademarks, including in China where the Respondent is based. The disputed domain name wholly incorporates the LEGO mark as its initial element and resolves to a website that displays the LEGO mark, the LEGO logo, names of the Complainant's product ranges (such as LEGO City and LEGO Classic), and images of the Complainant's toys. In view of these circumstances, the Panel finds that the Respondent had the Complainant's LEGO mark in mind when it registered the disputed domain name. As regards use, the disputed domain name, which is confusingly similar to the Complainant's LEGO mark, resolves to an online store that sells not only the Complainant's toys but also toys of other brands. The website does not clarify that it has no relationship with the Complainant. In view of these circumstances, the Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her website, by creating a likelihood of confusion with the Complainant's LEGO mark as to the source, sponsorship, affiliation, or endorsement of her website and of products on that website within the terms of paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the disputed domain name has been registered and is 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 name be transferred to the Complainant. /Matthew Kennedy/ Matthew Kennedy Sole Panelist Date: July 5, 2023
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