ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. 戚绮梅 (Pergr kellss), 吕寒松 (dwe jhgy) Case No. D2024-1953 1. The Parties Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden. Respondents are 戚绮梅 (Pergr kellss), China and United States of America (hereinafter “USA”), and 吕寒松 (dwe jhgy), China and USA. 2. The Domain Names and Registrar The disputed domain names and are registered with West263 International Limited (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2024. On May 10, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 11, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (N/A) and contact information in the Complaint. The Center sent an email communication to Complainant on May 13, 2024, 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 in English on May 16, 2024. On May 16, 2024, the Center informed the parties in Chinese and English, that the language of the Registration Agreement for the disputed domain names is Chinese. On May 16, 2024, Complainant confirmed its request that English be the language of the proceeding. Respondent did not submit any comment on Complainant’s submission. 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 Respondent of the Complaint in Chinese and English, and the proceedings commenced on May 28, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 25, 2024. The Center appointed Yijun Tian as the sole panelist in this matter on July 3, 2024. 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 A. Complainant Complainant, LEGO Juris A/S, is an association incorporated in Denmark. It is a world leading company making and selling LEGO branded toys and other products. Complainant has subsidiaries and branches throughout the world and LEGO products are sold in more than 130 countries. Complainant has exclusive rights in LEGO, and LEGO related marks (hereinafter “LEGO marks”). Complainant is the exclusive owner of numerous LEGO marks worldwide, including a Denmark trademark registration for LEGO registered on May 1, 1954 (Denmark trademark registration number VR 1954 00604); and a Chinese trademark registration for LEGO registered on December 22, 1976 (Chinese trademark registration number 75682). Complainant also owns and operates near 5,000 domain names which contain the LEGO mark in entirety. B. Respondents Respondents are 戚绮梅 (Pergr kellss) and 吕寒松 (dwe jhgy). - The disputed domain name was registered by 戚绮梅 (Pergr kellss), China and USA, on April 1, 2024. - The disputed domain name was registered by 吕寒松 (dwe jhgy), China and USA, on March 31, 2024. The disputed domain names were originally directing users to fraudulent websites in the English language. These websites replicated Complainant’s LEGO trademarks and logo, purportedly selling Complainant’s products with unauthorised discounts. The disputed domain names currently lead to an inactive webpage (passive holding) (Annex 8 to the Complaint). 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain names are confusingly similar to Complainant’s trademark LEGO. The dominant part of the disputed domain names comprises the mark LEGO, identical to the trademarks LEGO. Additionally, the disputed domain names incorporate the generic terms “shop”, “sale”, and “us”, which do not reduce the confusing similarity between the disputed domain names and Complainant’s trademark. Complainant contends that Respondents lack rights or legitimate interests in the disputed domain names. Complainant contends that the disputed domain names were registered and are being used in bad faith. Complainant requests that the disputed domain names be transferred to it.
page 3 B. Respondents Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding The language of the Registration Agreements for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondents to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons: (a) Complainant cannot communicate in Chinese, and translating the Complaint would unfairly burden Complainant and delay the proceedings. (b) Such delays, given the evidently abusive nature of the disputed domain names and their websites (Respondents have registered two confusingly similar disputed domain names and used them to sell Complainant’s products while using Complainant’s logo and website layout), pose ongoing risks to Complainant and unsuspecting consumers. (c) The disputed domain names consist of Latin characters. (d) The websites previously associated with the disputed domain names were entirely in English. (e) The term “lego”, which is the dominant portion of the disputed domain names, has no specific meaning in Chinese. (f) The other terms in the disputed domain names, “shop” and “sale”, are English language terms. This indicates that Respondents are competent in English. (g) Given Respondents’ use of the disputed domain names and the burden of translation on Complainant, the proceedings should continue in English. Respondents did not make any specific submissions with respect to the language of the proceeding. In exercising its discretion to use a language other than that of the registration agreement, 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 (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1). Considering the following aspects, the Panel has decided that the language of the proceeding shall be English: (a) the disputed domain names are registered in Latin characters, particularly containing English terms (e.g., “shop”, “us”, and “sale”), rather than Chinese script; (b) the generic Top-Level Domain (“gTLD”) of the disputed domain names is “.shop”, so the disputed domain names seem to be prepared for users worldwide, particularly English speaking countries; (c) the webpages, which the disputed domain names resolved to, were in the English language; (d) the Center has notified Respondents of the language of the proceeding in both Chinese and English, and (e) Respondents have indicated no objection to Complainant’s request that English be the language of the proceeding. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
page 4 6.2. Consolidation: Multiple Respondents The amended Complaint was filed in relation to nominally different domain name registrants. Complainant alleges that the domain name registrants are under common control. Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on 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. In addressing 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 3.0, section 4.11.2. As regards common control, the Panel finds that Complainant has provided sufficient evidence to establish that the disputed domain names or corresponding websites are subject to common control, for the following reasons: (a) All disputed domain names used to resolve similar fraudulent webpages (see Annex 8 to the Complaint). (b) All disputed domain names share a common structure linking the LEGO trademark with English generic terms like “shop”, “us”, and “sale”, commonly used in supermarket/hypermarket contexts or commercial activities, which are Complainant’s fields of activities. (c) The registration dates of all disputed domain names were very close, occurring on March 31, 2024 and April 1, 2024. (d) All disputed domain names were registered with the same Registrar, but have different email addresses and postal addresses. The physical addresses of both named Respondents do not point to a searchable location. (e) Nevertheless, based on the information provided by the Complaint, the disputed domain name was used to redirect back to the disputed domain name , resolved to the similar fraudulent webpage, indicating a lack of coincidence (Annex 8 to the Complaint). As regards fairness and equity, the Panel sees no reason why consolidation of the disputed domain names would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “Respondent”) in a single proceeding. 6.3 Substantive Issues: Three Elements A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. Based on the available record, the Panel finds Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the LEGO mark is reproduced within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
page 5 While the addition of other terms “shop”, “us”, and “sale” may bear on the assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. More specifically: (i) there has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of reasons to justify the choice of the term “lego”, Complainant’s LEGO trademark, in the disputed domain names. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the LEGO marks or to apply for or use any domain name incorporating the LEGO marks; (ii) there has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. Respondent registered the disputed domain names in 2024, long after the LEGO marks (registered as a trademark since 1954 in Denmark and 1976 in China) became widely known. The disputed domain names are confusingly similar to Complainant’s LEGO marks; and (iii) there has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, all disputed domain names used to resolve to websites purporting to be authorised online stores for Complainant’s products, and the websites were in the English language, contained the contents copied from the original website of Complainant, and purported to offer Complainant’s goods for sale at extreme discounts. It seems that Respondent is making profits through the Internet traffic attracted to the websites under the disputed domain names. (See BKS Bank AG v. Jianwei Guo, WIPO Case No. D2017-1041; and Pet Plan Ltd. v. 权中俊 and 李金梁 (Li Jin Liang), WIPO Case No. D2020-3358.) Panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorised account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.
page 6 Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that Respondent has registered and used the disputed domain names in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Regarding the disputed domain names, UDRP panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds Respondent’s registrations and use of the disputed domain names constitute bad faith under the Policy. Based on the information provided by Complainant, the Panel finds that Complainant has a widespread reputation in the LEGO marks with regard to its products and services. It is not conceivable that Respondent would not have had Complainant’s trademark in mind at the time of the registration of the disputed domain names (in 2024), which are inherently misleading. This has been reinforced by the fact that each disputed domain name incorporates Complainant’s LEGO trademark. Respondent has used the websites resolved by disputed domain names for displaying the contents copied from the original website of Complainant, and purports to offer Complainant’s goods for sale at extreme discounts. Thus, the Panel concludes that Respondent is currently using confusingly similar disputed domain names with the intention to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant. Such use constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy. Based on the available record, the Panel finds the third element of the Policy has been established. 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 Complainant. /Yijun Tian/ Yijun Tian Sole Panelist Date: July 17, 2024
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