The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is 刘营军 (Liu Ying Jun), China.
The disputed domain name <legoshop.shop> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2021. On June 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 2021, 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 July 3, 2021 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 July 6, 2021.
On July 3, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On July 6, 2021, the Complainant submitted 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”).
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 July 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2021.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on September 14, 2021. 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.
The Complainant is a multinational toy company headquartered in Denmark. The Complainant has a network of licensees which are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in China and elsewhere. Over the years, the Complainant’s business of making and selling LEGO-branded toys has grown considerably. The Complainant currently has subsidiaries and branches throughout the world, and the Complainant’s LEGO-branded products are currently sold in more than 130 countries, including in China. The Complainant provides evidence that its LEGO brand has received an array of awards and prizes, including recognition as the “number 1 Consumer Superbrand” by Superbrands UK in 2019. The Complainant also provides evidence that the LEGO brand was recognized as a well-known trademark by panels in various prior UDRP cases, such as LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715 and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680.
The Complainant provides evidence that it owns a large trademark portfolio for LEGO (word and logo marks), including, but not limited to, Chinese trademark registration number 10176429 for the LEGO word mark, registered on January 14, 2013. The Complainant also owns a large portfolio of approximately 5,000 official domain names, including, <lego.com>, registered on August 21, 1995. The disputed domain name was registered on November 5, 2020, and is therefore of a later date than the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain name directs to an inactive webpage.
The Complainant also provides evidence that it sent a cease-and-desist letter in English to the Respondent, via the Registrar’s contact portal, on February 12, 2021. The Respondent replied on February 13, 2021, in English, that it was willing to transfer the disputed domain name. Nevertheless, after this initial message, the Respondent did not respond to any of the follow-up messages from the Complainant.
The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for LEGO, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.
The Complainant claims that its trademarks are distinctive and well-known, and submits company and marketing information as well as a number of prior UDRP decisions which have recognized that the Complainant’s trademark for LEGO is well-known, see for instance LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715 and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680. The Complainant particularly contends that there are no justifications for the use of its trademarks in the disputed domain name, contends that the use made of the disputed domain name by the Respondent amounts to passive holding of the disputed domain name, which does not confer any rights or legitimate interests in respect of the disputed domain name and that the Respondent has registered, and is using the disputed domain name in bad faith. The Complainant also contends that the Respondent has engaged in a pattern of bad faith cybersquatting.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 11(a) of the Rules, 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.
According to the Registrar’s verification response of June 30, 2021, the Registration Agreement for the disputed domain name is in Chinese. Nevertheless, the Complainant filed its Complaint and its amended Complaint in English, and requests that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding and did not submit any arguments on the merits of this proceeding.
The Panel has carefully considered all elements of this case, and considers the following elements particularly relevant: the Complainant’s request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of this proceeding by the Respondent (the Panel notes that the Respondent was invited in a timely manner by the Center to present its response and arguments in either English or Chinese, but chose not to do so); the fact that the disputed domain name contains the Complainant’s trademark in its entirety and that the disputed domain name is written in Latin letters and not in Chinese characters; the fact that the disputed domain name contains the English word “shop” and that on February 13, 2021 the Respondent responded to the Complainant’s cease‑and-desist letter via an email in English, from which the Panel deducts that the Respondent understands and is able to communicate in English; and, finally, the fact that Chinese as the language of this proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel grants the Complainant’s request, and the language of this administrative proceeding shall be English.
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
The Panel finds that the Complainant has shown that it has valid rights in the LEGO mark, based on its intensive use and trademark registrations in a large number of jurisdictions.
As to confusing similarity of the disputed domain name with the Complainant’s marks, the Panel considers that the disputed domain name consists of the combination of two elements, respectively the Complainant’s LEGO trademark combined with the descriptive term “shop”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), 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”. The Panel concludes that the disputed domain name contains the entirety of the Complainant’s LEGO trademark, which remains easily recognizable as its only distinctive feature, and that the addition of the term “shop” therefore does not prevent a finding of confusing similarity. The Panel also notes that the applicable generic Top-Level Domain (“gTLD”) (“.shop” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks, and that the Complainant has satisfied the requirements of the first element under the Policy.
On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant; is not a bona fide provider of goods or services under the disputed domain name; and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent.
Upon review of the facts and evidence provided by the Complainant, the Panel notes that the disputed domain name directs to an inactive webpage and is not being used. In this regard, the Panel finds that holding a domain name passively, without making any use of it, does not confer any rights or legitimate interests in the disputed domain name on the Respondent (see in this regard earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691 and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685).
Furthermore, the nature of the disputed domain name, being confusingly similar to the Complainant’s LEGO trademark and including the descriptive term “shop”, carries a risk of implied affiliation and cannot constitute fair use, as it effectively impersonates the Complainant (see WIPO Overview 3.0, section 2.5.1).
On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.
The Panel finds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s well-known trademark, by using such trademark in its entirety in the disputed domain name, combined with the descriptive term “shop”, to mislead and divert consumers to the disputed domain name. Given the distinctiveness and well-established fame of the Complainant’s trademark, including in China, the Panel finds that the registration of the disputed domain name clearly targeted such well-known trademark, and that the Respondent knew, or at least should have known, of the existence of the Complainant’s well-known mark. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in LEGO and used these extensively, including in the Respondent’s jurisdiction, China. In the Panel’s view, the preceding elements establish the bad faith of the Respondent in registering the disputed domain name.
As to use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”. The Panel has reviewed all elements of this case, and attributes particular relevance to the following elements: the fact that the disputed domain name contains the entirety of the Complainant’s trademark, the high degree of distinctiveness and well-established fame of the Complainant’s trademarks, including in the Respondent’s jurisdiction, China, and the fact that the Complainant sufficiently provides evidence that the Respondent has been engaged in a pattern of trademark abusive registrations through the submission of a number of prior domain name recovery decisions where the Respondent was found to have registered and used domain names in bad faith (see for instance Dell Inc. v. liu ying jun, NAF Claim No. FA2101001928280 and Advance Auto Innovations, LLC v. liu ying jun, NAF Claim No. FA2103001934937) and through the submission of reverse WhoIs records, from which it is clear that the Respondent has registered an array of domain names incorporating famous third party brands. In these circumstances, the Panel considers that the passive holding of the disputed domain name by the Respondent constitutes use of the disputed domain name in bad faith. On the basis of the foregoing elements, the Panel finds that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.
Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under the Policy.
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 <legoshop.shop> be transferred to the Complainant.
Deanna Wong Wai Man
Sole Panelist
Date: September 20, 2021