WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. 李思恒 (li si heng)

Case No. D2021-2379

1. The Parties

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

The Respondent is 李思恒 (li si heng), China.

2. The Domain Name and Registrar

The disputed domain name <legosets.shop> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2021. On July 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 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 26, 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 27, 2021.

On July 26, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On July 27, 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 August 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2021.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on September 3, 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 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 remarkably. The Complainant currently has subsidiaries and branches throughout the world, and 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 75682 for the LEGO word mark, registered on December 22, 1976, and Chinese trademark registration number 135134 for the LEGO logo mark registered on January 5, 1980. The Complainant also owns a large portfolio of approximately 5,000 official domain names, including, <lego.com>, registered on August 22, 1995.

The disputed domain name was registered on December 6, 2020, and is therefore of a later date than the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain name previously directed to a website providing rankings of various sets of Lego-branded toys, allowing consumers to check the latest prices, and displaying a tab of “VISIT SITE”. However, the Panel notes that at the time of filing of the Complaint and on the date of this decision, the disputed domain name directs to an inactive webpage.

5. Parties’ Contentions

A. 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 that the Respondent was using the disputed domain name to direct Internet users to a commercial website offering for sale sets of Lego-branded toys, that there are no justifications for the use of its trademarks in the disputed domain name, and contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes use 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.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceeding

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.

The Complainant states that to the best of its knowledge, the language of the Registration Agreement 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 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 “sets” and that the website linked to the disputed domain name was exclusively in English (before it was taken down) from which the Panel deducts that the Respondent is capable of understanding and communicating in English; and, finally, the fact that Chinese as the language of this proceeding could lead to unwarranted delays of the proceeding and additional costs for the Complainant. In view of all these elements, the Panel grants the Complainant’s request, and the language of this proceeding shall be English.

6.2. Discussion and Findings on the merits

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:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the mark LEGO based on its intensive use and longstanding registration of the same as trademarks.

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 purely descriptive term “sets”. 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 trademarks for LEGO, which remains easily recognizable as its only distinctive feature, and that the addition of the term “sets” 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 trademark for LEGO, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case 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 in reply.

Upon review of the facts and evidence provided by the Complainant, the Panel notes that the disputed domain name previously directed to a website prominently showing the Complainant’s LEGO logo mark, without any disclaimer as to the Respondent’s (absence of) relationship with the Complainant, providing rankings of various sets of Lego-branded toys, allowing consumers to check the latest prices, and displaying a tab of “VISIT SITE”. The Panel finds that these elements show that the Respondent’s intention was not to be a bona fide provider of goods or services under the disputed domain name, nor making legitimate noncommercial use or fair use of the Complainant’s trademarks. Instead, the Respondent’s intention was to obtain possible unlawful commercial gains from creating confusion by incorporating the Complainant’s well-known LEGO trademark into the disputed domain name.

However, on the date of this decision, the disputed domain name directs to an inactive webpage. In this regard, the Panel finds that holding a domain name passively, without making any use of it, also 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).

Moreover, the nature of the disputed domain name carries a risk of implied affiliation with 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.

C. Registered and Used in Bad Faith

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 “sets”, 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 has owned registered trademarks in LEGO and has 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 previously directed to a website prominently showing the Complainant’s LEGO logo mark, without any disclaimer as to the Respondent’s (absence of) relationship with the Complainant, providing rankings of various sets of Lego-branded toys, allowing consumers to check the latest prices, and displaying a tab of “VISIT SITE”. The Panel accepts that this shows the intention on the part of the Respondent to obtain possible unlawful commercial gains from using the Complainant’s famous LEGO trademark in the disputed domain name.

However, on the date of this decision, 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 through the submission of reverse WhoIs records, from which it appears that the Respondent has registered a number 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.

Further, the Panel finds that the Complainant sufficiently proves that the Respondent has been engaged in a pattern of bad faith conduct through the submission of a number of prior UDRP decisions involving the Respondent (see for instance Johnson & Johnson v. 李思恒 (Li Si Heng), WIPO Case No. D2021-1258).

On the basis of the foregoing elements, the Panel finds that it has been demonstrated that the Respondent has registered and used 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.

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 <legosets.shop> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: September 17, 2021