WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Xu Yan Mei（徐艳梅)

Case No. D2021-2209

1. The Parties

The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Xu Yan Mei（徐艳梅）, China.

2. The Domain Name and Registrar

The disputed domain name <shoplegoshop.com> (the “Disputed Domain Name”) is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2021. On July 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 13, 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 14, 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 15, 2021.

On July 14, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On July 15, 2021, 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 July 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2021.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on August 23, 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.

4. Factual Background

The Complainant is a Denmark company that manufactures construction toys and other toy products around the world.

The Complainant is the owner of LEGO series trademarks including:

China trademark LEGO, registration number 75682, registered since December 22, 2016;
China trademark LEGO, registration number 135134, registered since January 5, 1980;
China trademark LEGO, registration number 671899, registered since December 28, 1993;
China trademark LEGO, registration number 1112413, registered since September 28, 1997;
China trademark LEGO, registration number 3850440, registered since December 28, 2006.

The Complainant is the owner of European Union trademark HOUSE HOME OF THE BRICK, registration number 015893357, registered since January 31, 2017.

HOUSE Home of the Brick
HOUSE Home of the Brick
HOUSE Home of the Brick
HOUSE Home of the Brick

The Complainant is the owner of <lego.com> and close to 5,000 other domain names containing the term “Lego”.

The Disputed Domain Name <shoplegoshop.com> was registered on January 18, 2021. The Disputed Domain Name formerly resolved to a website featuring the Complainant’s LEGO and HOUSE HOME OF THE BRICK trademarks and the Complainant’s official address in Denmark, and purportedly offering for sale the Complainant’s products as well as third party products. At the time of filing of the Complaint, the Disputed Domain Name was no longer active.

5. Parties’ Contentions

A. Complainant

The Complainant’s submissions may be summarized as follows:

(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.

The Complainant argues that the Disputed Domain Name is confusingly similar to its LEGO series trademarks. The Disputed Domain Name comprises the term “Lego”, which is identical to the LEGO trademark that the Complainant has registered around the world. The fame of the trademark has been confirmed in numerous previous UDRP decisions. In addition to the trademark LEGO, the Disputed Domain Name also comprises the word “shop” before and after the LEGO trademark, which does not diminish the confusing similarity between the Disputed Domain Name and the Complainant’s trademark. The addition of the Top-Level Domain (“TLD”) “.com” does not have any impact on the overall impression of the Disputed Domain Name and is therefore irrelevant to determine the confusing similarity between the trademark and the Disputed Domain Name.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Disputed Domain Name. The Respondent does not resemble the Disputed Domain Name in any manner. The Complainant has not licensed or authorized the Respondent to make any use of the trademark LEGO.

The Complainant argues that the Respondent was using the Disputed Domain Name to offer the Complainant’s toy products. The Respondent’s inclusion of Complainant’s LEGO and HOUSE HOME OF THE BRICK trademarks and logos on the website to which the Disputed Domain Name resolved was a direct effort to take advantage of the fame of the Complainant’s brand. Accordingly, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

The Complainant concludes that the Respondent’s activities do not correspond to any of the circumstances set forth in the Policy, paragraph 4(c).

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant argues that the Complainant’s LEGO trademark in respect of construction toys has the status of a well-known and reputable trademark throughout the world. The Complainant registered the LEGO trademark decades before the Respondent registered the Disputed Domain Name. Furthermore, the Respondent had created a likelihood of confusion with the Complainant and its trademarks by featuring the Complainant’s LEGO and HOUSE HOME OF THE BRICK trademarks and logos and the Complainant’s official address in Denmark on the website to which the Disputed Domain Name resolved. Although the Disputed Domain Name currently is not being used, passively holding a domain name does not prevent a finding of bad faith registration and use.

Moreover, the Respondent currently holds registrations for several other domain names that incorporate the trademarks of well-known brands and businesses. This fact demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is further evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “[u]nless 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.”

Paragraph 10(b) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”; and paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition.”

The language of the Registration Agreement for the Disputed Domain Name is Chinese. The Respondent resides in China. However, the Complainant requested that the language of the proceeding be English. The Disputed Domain Name previously resolved to a website on which all the content was in English, showing that the Respondent has the ability to present her case if the language of the proceeding is English. The Respondent was given an opportunity to comment on the language of the proceeding and failed to do so. In order to proceed in Chinese, the Complainant would have to retain specialized translation services which would add unnecessary time and expense to the proceeding.

Given the above considerations, the Panel decides that the language of the proceeding be English. The Panel believes that such decision is fair to both Parties while ensuring the proceeding takes place with due expedition.

7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present:

(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

The Disputed Domain Name is a combination of the Complainant’s LEGO trademark, the word “shop”, and the generic TLD “.com”. The Panel finds that the Disputed Domain Name incorporates the LEGO trademark in its entirety. The word “shop” before and after the LEGO trademark does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s LEGO trademark because the Complainant’s LEGO trademark is clearly recognizable in the Disputed Domain Name. The Panel further notes that “shop” is a word that is often used in connection with Lego branded products.

Generic TLDs generally are disregarded when evaluating the identity or confusing similarity between the disputed domain name and the complainant’s trademark. In the current case, the inclusion of the generic TLD “.com” does not prevent the confusing similarity between the Disputed Domain Name and the Complainant’s LEGO trademark.

For the reasons above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

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, the 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.”

The Complainant states that it has neither licensed nor authorized the Respondent to make any use of the Complainant’s LEGO series trademarks. According to the information provided by the Registrar, the Respondent’s name, “Xu Yan Mei（徐艳梅)”, does not appear to be related to the Disputed Domain Name. The Disputed Domain Name formerly resolved to a website displaying the Complainant’s LEGO and HOUSE HOME OF THE BRICK trademarks and logos, at which toy products that appear to bear the Complainant’s Lego brand were sold. The website also offered for sale third party products. Furthermore, the contact section on the website at the Disputed Domain Name included the Complainant’s official address in Denmark. Such use of the Disputed Domain Name is not a use in connection with a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the Disputed Domain Name.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, and the burden of production shifts to the Respondent. The Respondent has not submitted any argument or evidence in response.

Therefore, based on the above, the Panel concludes that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative dispute resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”

Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

[…]

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location”.

The Complainant’s LEGO trademarks have been registered in many countries around the world. The Complainant’s LEGO trademark is distinctive and has been recognized as well known by other UDRP decisions. The Disputed Domain Name was registered long after the Complainant’s LEGO trademarks have been registered. At the time the Disputed Domain Name was registered, the Complainant’s LEGO trademarks had already become famous worldwide. The Panel therefore finds that the Disputed Domain Name has been registered in bad faith.

The Disputed Domain Name previously resolved to a website featuring the Complainant’s LEGO and HOUSE HOME OF THE BRICK trademarks and logos. The contact section on the website at the Disputed Domain Name included the Complainant’s official address in Denmark. The website to which the Disputed Domain Name resolved appears to sell toy products bearing the Complainant’s LEGO trademark. The website also offered for sale third party products. The Panel finds that the Respondent’s use of the Disputed Domain Name attempts to attract, for commercial gain, Internet users to the website to which the Disputed Domain Name resolved by creating a likelihood of confusion with the Complainant’s trademarks. Although the website associated with the Disputed Domain Name was later deactivated, the passive holding of the Disputed Domain Name does not prevent a finding of bad faith. The Panel therefore concludes that the Disputed Domain Name has been used in bad faith.

Having considered the above, the Panel finds that the Disputed Domain Name has been registered and used in bad faith, and the Complainant has fulfilled the condition provided in paragraph 4(a)(iii) of the Policy.

8. 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 <shoplegoshop.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: September 6, 2021