LEGO Juris A/S v fen huang

WIPO Case No. D2024-1087

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. fen huang

Case No. D2024-1087

1. The Parties

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

Sweden.

The Respondent is fen huang, China.

2. The Domain Name and Registrar

The disputed domain name <legoozone.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2024. On March 14, 2024, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On March 14, 2024, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 15, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the

Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint on

March 19, 2024.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on March 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2024. The Respondent did not submit any response.

Accordingly, the Center notif ied the Respondent’s default on April 12, 2024.

page 2

The Center appointed Alfred Meijboom as the sole panelist in this matter on April 18, 2024. The Panel f inds 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 the owner of many “Lego” trademarks worldwide, including the word mark LEGO
registered in China (Reg. No. 75682 of December 22, 2016) in class 28 for, inter alia, toys (the “LEGO
mark”). The Complainant is also the owner of nearly 6,000 domain names containing the term “Lego”. The
Complainant has subsidiaries and branches throughout the world, and “Lego” products are sold in more than
130 countries, including in China.

The Respondent registered the disputed domain name on November 3, 2023. The disputed domain name resolves to a website in English which offers “building block model kits” for sale. The Complainant alleges that the Respondent intentionally provided false details in the WhoIs record upon registration because Respondent’s street address has been listed as “jihgytf ” and the city as “fyz”.

The Complainant contacted the Respondent on December 1, 2023, through a cease-and-desist letter which advised the Respondent that the unauthorized use of the LEGO trademark in the disputed domain name violated the Complainant’s rights in said trademark, and requested a voluntary transfer of the disputed domain name while offering compensation for the expenses of registration and transfer fees. In spite of the reminders, the Respondent has never replied.

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.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the well-known LEGO trademark, because “Lego” is the dominant part of the domain name and the suf f ix “ozone” in the disputed domain name does not serve to distinguish the disputed domain name, rather it suggests the type of services or products provided.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent is not known under the disputed domain name, is not an authorized dealer of the Complainant, was not licensed or authorized to use the LEGO mark in a domain name, and did not use the disputed domain name in connection with a bona f ide of fering of goods or services, but the Respondent has rather intentionally chosen the disputed domain name based on the famous LEGO trademark in order to generate traf f ic and income through a website selling products that compete directly with those of the Complainant.

According to the Complainant the disputed domain name was registered in bad faith, because the Respondent must have been aware of the famous LEGO trademark at the time of registration of the disputed domain name as the LEGO trademark has the status of a well-known and reputable trademark with a substantial and widespread goodwill throughout the world. Furthermore, the Complainant alleges that the Respondent’s use of the disputed domain name to offer products which compete with the products of the Complainant is an intentional attempt to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the LEGO trademark as to the source, sponsorship, affiliation or endorsement of the website. And further, the Complainant alleges that the Respondent’s attempt to conceal its true identify by providing blatantly false contact information is further evidence of its bad faith registration and use of the disputed domain name.

page 3

B. Respondent

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

6. Discussion and Findings

The Respondent did not file a Response. However, as set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3, the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4(a) of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in this proceeding. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the panel shall draw such inferences as it considers appropriate f rom a failure of a party to comply with a provision or requirement of the Rules. The Panel f inds that in this case there are no such exceptional circumstances.

Under the Policy, the Complainant must prove that:

(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.

A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the LEGO trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

Based on the available record, the Panel f inds the f irst element of the Policy has been established. The Panel f inds the LEGO trademark is wholly incorporated and recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the LEGO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The addition of the term “ozone” does not prevent a f inding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel f inds the f irst 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.

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 of ten 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 satisf ied the second element. WIPO Overview 3.0, section 2.1.

page 4

Having reviewed the available record, 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.

More notably, the Respondent has not refuted the Complainant’s allegations that the Respondent has not been commonly known by the disputed domain name, that the Respondent’s use of the LEGO trademark was not authorized or licensed by the Complainant, and that the Respondent had not been an authorized dealer of the Complainant. Further, the Respondent’s use of the disputed domain name to of fer products which compete with LEGO branded products of the Complainant, and the Respondent’s use of false contact information does not constitute a bone fide offering of goods and services. WIPO Overview 3.0, section 2.5.3.

The Panel f inds 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.

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.

In the present case, the Panel finds that the Respondent, when it registered the disputed domain name, must have been aware of the LEGO trademark, which, as many UDRP panels have found, has a worldwide reputation, especially for constructions toys. Moreover, the Panel infers f rom the fact that the disputed domain name resolves to a website which prominently displays “LeeGoo Building Blocks Zone” while offering “building block model kits” for sale, that the Respondent must have intentionally registered the disputed domain name with the LEGO trademark in mind. This constitutes registration of the disputed domain name in bad faith, and said offering of products which compete with those of the Complainant also constitutes use of the disputed domain name in bad faith.

The Panel f inds 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 <legoozone.com> be transferred to the Complainant.

/Alfred Meijboom/
Alfred Meijboom
Sole Panelist
Date: April 29, 2024