LEGO Juris A/S v Cai Jinhuang
WIPO Case No. D2024-5122
•12-03-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Cai Jinhuang
Case No. D2024-5122
1. The Parties
The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB,
Sweden.
The Respondent is Cai Jinhuang, China.
2. The Domain Name and Registrar
The disputed domain name <legovipstore.com> (“Disputed Domain Name”) is registered with Vantage of
Convergence (Chengdu) Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2024. On December 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 20, 2024, 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 (not disclosed and unavailable) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 20, 2024, 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 December 23, 2024.
| Registration Agreement for the Disputed Domain Name is Chinese. On December 23, 2024, the | On December 20, 2024, the Center informed the Parties in Chinese and English, that the language of the comment on the 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”). |
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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 December 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2025. On December 28, 2024, an email communication was received by the Center from the email address previously shown on the website at the Disputed Domain Name, indicating “We have received your complaint and are no longer running.” The Center sent the possible settlement email to the Parties on January 2, 2025. On January 6, 2025, the proceedings were suspended at the Complainant’s request. On February 5, 2025, the Complainant requested the reinstitution of the proceedings, which were reinstituted on February 6, 2025, with the new Response due set for February 16, 2025. The Respondent did not send any communication to the Center. The Center informed the Parties that it would proceed with the panel appointment on February 19, 2025.
The Center appointed Rosita Li as the sole panelist in this matter on February 26, 2025. 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
Based in Denmark, the Complainant is the owner of LEGO trademarks used in connection with construction toys and other products under the LEGO brand. The Complainant has subsidiaries and branches worldwide, with LEGO branded products sold in over 130 countries, including in China and in the European Union. The Complainant owns close to 5,000 domain names containing the term Lego, including <lego.com> which addresses the official Lego website.
The Complainant is the owner of an extensive portfolio of trademark registrations for LEGO, including but not limited to the following:
1) Chinese Registration No. 75682 for LEGO registered on December 22, 1976;
2) Chinese Registration No. 4112295 for LEGO & Device registered on April 14, 2007;
3) European Union Registration No. 000039800 for LEGO registered on October 5, 1998; and
4) European Union Registration No. 000039834 for LEGO & Device registered on November 9, 1998.
(collectively, the “LEGO Trademarks”).
The Complainant submits that the LEGO Trademarks are among the best-known trademarks due to its extensive advertising over the past decades. The LEGO Trademarks and LEGO brand have been recognized as the number 1 consumer superbrand by Superbrands UK in 2019. It was also ranked first by the Reputation Institute as the most reputable global companies of 2020, and being named the most influential toy of all time by TIME in 2014.
The Disputed Domain Name was registered by the Respondent on November 11, 2024.
As of the date of filing this Complaint, the Disputed Domain Name resolved to a website being an online
shop selling discounted clothing products without any apparent reference to the Complainant. The
Complainant submits that, prior to the Complainant’s partners performing a takedown of the Disputed
Domain Name’s website, the Disputed Domain Name resolved to an online shop which displayed the
Complainant’s LEGO Trademarks and purportedly offered for sale the Complainant’s LEGO products.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. A summary of the Complainant’s submission is as follows:
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(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant contends that:
- The dominant part of the Disputed Domain Name comprises the term Lego, which is identical to the LEGO Trademarks registered by the Complainant;
| - | The Disputed Domain Name is confusingly similar to the Complainant’s LEGO Trademarks, where |
past UDRP decisions have found that the LEGO Trademarks are well-recognized and world famous
trademarks;
- The Disputed Domain Name comprising the suffix “vip store” does not diminish the confusing similarity
with the LEGO Trademarks as it is a generic suffix;
- The addition of the Top-Level Domain “.com” does not impact the overall impression of the Disputed
Domain Name and is irrelevant in determining the confusing similarity between the Disputed Domain Name
and the LEGO Trademarks;
- There is an obvious association by the Disputed Domain Name with the LEGO Trademarks, and the
reputation of the LEGO Trademarks would create considerable risk for the public to perceive the Disputed
Domain Name as a domain name owned by the Complainant or there is a commercial relation with the
Complainant;
| - | The Respondent’s use of the Disputed Domain Name exploits the goodwill and image of the LEGO |
Trademarks, which may result in dilution and damage to the LEGO Trademarks;
- The Respondent used the Disputed Domain Name to host a website featuring the LEGO Trademarks,
purportedly offering the Complainant’s products, and impersonating an online store of the Complainant,
which further evidences the use of the Disputed Domain Name by the Respondent is to further cause
consumer confusion.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant contends that:
| - | The Respondent has not registered any trademarks or trade names corresponding to the Disputed |
Domain Name, nor used the term Lego in any manner that would grant them legitimate rights;
| - | The Complainant has not granted any license or authorization to the Respondent for the use of the |
LEGO Trademarks;
| - | The Respondent is not an authorized dealer of the Complainant’s products and has never had a |
business relationship with the Complainant;
- The Respondent is not commonly known by the Disputed Domain Name, and cannot be regarded as having acquired rights to or legitimate interests in the Disputed Domain Name;
| - | The Respondent is neither using the name LEGO as a company name nor holding any other legal |
rights to it, and the Respondent is trying to benefit from the Complainant’s famous LEGO Trademarks;
| - | Before a takedown request by the Complainant’s partners, the Respondent was not using the |
Disputed Domain Name for a bona fide offering of goods or services. Instead, the Respondent selected the
Disputed Domain Name to generate traffic and income through an unauthorized website offering the
Complainant’s LEGO products for sale;
- The Respondent is not an authorized reseller and does not meet the Oki Data test criteria, which
require accurate disclosure of the Respondent’s relationship with the Complainant. The Respondent has not
adequately disclosed this relationship, or lack thereof, creating a false impression of authorization for the
Respondent to use the LEGO Trademarks;
| - | The Respondent declared on the Disputed Domain Name website that it is the distributor of LEGO |
products, which is not the case;
| - | The Respondent has used the Complainant’s logotype without consent to create a false link to the |
Complainant; and
- The Respondent is using the LEGO Trademarks in order to mislead Internet users to the website hosted by the Disputed Domain Name.
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(iii) The Disputed Domain Name was registered and is being used in bad faith. The Complainant
contends that:
- The LEGO Trademarks, associated with the Complainant’s toy products, possess substantial goodwill and are well known and reputable globally;
- The prominence of the LEGO Trademarks has historically attracted domain name infringers, leading to significant unauthorized domain name registrations comprising the LEGO Trademarks;
- The Respondent registered the Disputed Domain Name decades after the Complainant had registered
the LEGO Trademarks in the European Union, China, and elsewhere. The Respondent was clearly
motivated by the fame of the LEGO Trademarks and could not claim to be unaware of the Complainant’s
rights to the LEGO Trademarks;
| - | The incorporation of the well-known LEGO Trademarks into the Disputed Domain Name by the |
Respondent indicates bad faith registration;
| - | The Respondent used the Disputed Domain Name to attract Internet users to an unauthorized |
commercial website offering Complainant’s LEGO products for commercial gain, by creating confusion with
the Complainant’s LEGO Trademarks as to the source, sponsorship, affiliation or endorsement;
- As of the date of filing the Complaint, the Disputed Domain Name directs to a website selling unrelated
discounted clothing products, which misleads Internet users into believing they are visiting the Complainant’s
website, only to find that the website is unconnected to the Complainant;
- The Respondent employed a privacy service to conceal their identity, which is additional evidence of bad faith registration and use;
- The Respondent was aware of the rights and value of the Complainant in the LEGO Trademarks; and
noncommercial or fair use, but is used to misleadingly divert consumers for the Respondent’s own
commercial gain.
| - | The use and registration of the Disputed Domain Name by the Respondent is not for a legitimate |
B. Respondent
Apart from an email communication received from an email address previously shown on the website at the
Disputed Domain Name (see section 4 above), the Center did not receive any email communication from the
Respondent’s email address as disclosed in the Registrar’s verification email.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that a complainant must satisfy each of the following three elements in a complaint:
(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.
6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name 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.
The Complaint and the amended Complaint were filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that:
1) The Complainant is unable to communicate in Chinese, and the translation of the Complaint would
unfairly disadvantage and burden the Complainant, delay the proceedings and adjudication of the matter;
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2) Additional delay in the proceedings poses a continuing risk to the Complainant and unsuspecting consumers due to the abusive nature of the Disputed Domain Name and its website;
3) The Disputed Domain Name is comprised of Latin characters;
4) The Disputed Domain Name resolved to a website which features English phrases; and
5) The term “Lego”, which is the dominant portion of the Disputed Domain Name, does not have any specific meaning in Chinese.
The Respondent did not make any 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).
Having considered all the matters above and the fact that:
(i) English is the primary language for the content displayed on the site of the Disputed Domain Name;
(ii) Even though the Center has used English and Chinese in the relevant correspondences with the Parties, the Respondent has not filed any formal response and did not comment on the language of the proceeding; and
(iii) Translating this Decision will not be prejudicial against the Respondent nor will it result in considerable costs to the Respondent;
the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be
English.
6.2. Substantive Issues
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 materials, the Panel finds the 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 Trademarks is reproduced within the Disputed Domain Name. the Policy. WIPO Overview 3.0, section 1.7.
Although the addition of other terms here, “vip” and “store”, may bear on 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 Name and the LEGO Trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
Based on the available materials, 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.
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Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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 available materials, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence
demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the
Policy or otherwise.
In accordance with WIPO Overview 3.0, section 2.5.1, where a domain name consists of a trademark plus an additional term (at the second or top level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Based on the available materials, the landing page of the Disputed Domain Name, prior to a takedown request made by the Complainant’s partners, displayed several references to the Complainant and the LEGO Trademarks. The Respondent also displayed the Complainant’s LEGO products on the website for sale. Further, the Disputed Domain Name included the Complainant’s LEGO Trademarks in its entirety, and the additional terms “vip” and “store” would be easily interpreted as the Disputed Domain Name leads to an official vip online store of the Complainant’s LEGO products.
Panels have held that the use of a domain name for illegal activity, where the Respondent attempted to selling discounted clothing products. Although the clothing products are not directly related to the core products offered by the Complainant, using the Complainant’s well-recognized LEGO Trademark in its entirety in the Dispute Domain Name and failing to disclaim the relationship, or lack thereof, on the Disputed Domain Name website is free-riding on the reputation of the Complainant and creating an impression that the Respondent may be associated with the Complainant.
impersonate the Complainant, can never confer rights or legitimate interests on a respondent. WIPO
Overview 3.0, section 2.13.1. By misrepresenting and impersonating itself as “Lego” in a statement
displayed under the “About Us” tab on the website resolved under the Disputed Domain Name, the
Respondent falsely associated with the Complainant and/or impersonated the Complainant.
Given the above, the Panel finds it apparent that the Respondent had the intention to divert consumers not to be for a legitimate noncommercial or fair use of the Disputed Domain Name.
seeking to find the Complainant, or to tarnish the Complainant’s LEGO Trademarks. It is clear that the use
of the Disputed Domain Name, which incorporates the LEGO Trademarks in its entirety, is an attempt by the
Based on the available materials, 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 the Respondent’s registration of the Disputed Domain Name
incorporates the LEGO Trademarks in its entirety. The Panel also notes that the time of registration of the
Disputed Domain Name on November 11, 2024 is well after the registration of the Complainant’s LEGO
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Trademarks. The Complainant has provided supporting documents to show that the LEGO Trademarks are well known and reputable amongst the general public, including evidence showing the global rankings of the reputation for the LEGO brand. The Panel accepts that the Complainant has been continuously using its
LEGO Trademarks and finds that it would not be plausible for the Respondent to claim that it was unaware of LEGO Trademarks. WIPO Overview 3.0, section 3.2.2. Accordingly, the Panel finds that the Respondent’s registration of the Disputed Domain Name, which is confusingly similar to the well-known and earlier registered LEGO Trademarks, is a clear indication of bad faith.
the Complainant and the LEGO Trademarks particularly considering the previous use of the LEGO
Trademarks on the website at the Disputed Domain Name. The Panel is prepared to find that the
In accordance with paragraph 4(b)(iv) of the Policy, if by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to 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, is an indicator of bad faith on the part of the Respondent. As elaborated in the previous section 6.2.B. and in the paragraph above, the Disputed Domain Name formerly resolved to a website offering the Complainant’s LEGO products for sale. The website gave the false impression that it was operated by, or affiliated with, the Complainant. In view of this, the Panel is of the view that the Respondent has registered and used the Disputed Domain Name in bad faith.
The Panel notes the Disputed Domain Name initially resolved to a webpage offering the Complainant’s
goods, and subsequently resolved to a webpage offering clothing products. The change in the use of the
Disputed Domain Name does not affect the Panel’s assessment of the Respondent’s use of the Disputed
Domain Name in bad faith, as the available materials indicate the Respondent has attempted to mislead
Internet users to the origin of the Disputed Domain Name or otherwise misrepresented the Respondent’s
purported association with the Complainant in bad faith by adopting the LEGO Trademarks in the Disputed
Domain Name in its entirety.
Based on the available materials, the Panel finds that the Complainant has established the third element 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 <legovipstore.com> be transferred to the Complainant.
/Rosita Li/
Rosita Li
Sole Panelist
Date: March 12, 2025
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