LEGO Juris A/S v Kristin Johnson

WIPO Case No. D2023-1978

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Kristin Johnson

Case No. D2023-1978

1. The Parties

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

Sweden.

The Respondent is Kristin Johnson, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <legocitytoyssale.com> is registered with Gname.com Pte. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2023. On May 4, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2023, 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 (Redacted For Privacy) and contact information in the Complaint.
The Center sent an email communication to the Complainant on May 5, 2023, 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 May 9, 2023.

On May 5, 2023, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 9, 2023, the Complainant submitted 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 May 10, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2023.

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The Center appointed James Wang as the sole panelist in this matter on June 8, 2023. 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, based in Denmark, is the owner of LEGO and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products.

The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the United States, China, and elsewhere. Over the years, the business of making and selling LEGO branded toys has grown remarkably.

The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States and China.

The LEGO trademark and brand have been recognized as being famous. The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.

The Complainant has obtained numerous LEGO trademark registrations in different jurisdictions, including but not limited to the following:

- United States trademark registration No. 1018875, registered on August 26, 1975; and

- China trademark registration No. 135134, registered on January 5, 1980.

The Complainant is the owner of close to 5,000 domain names containing the term “Lego”.

The disputed domain name was registered on March 28, 2023, and resolved to a website purportedly offering the Complainant’s LEGO products for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contended as follows:

The disputed domain name is identical or confusingly similar to the LEGO trademark in which the domain name. The disputed domain name was registered and is being used in bad faith.

The Complainant requested that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to the Rules, paragraph 11, unless otherwise agreed by the parties, the default language of the

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proceeding is the language of the registration agreement, subject to the authority of the panel to determine
otherwise.

In this case, while the language of the Registration Agreement is Chinese, the Complainant has requested that English be the language of the proceeding. Considering the Center has already sent case-related communications in Chinese and English to the Parties, including communications regarding the language of the proceeding, and thereby given the Respondent an opportunity to comment on or to oppose the Complainant’s language request and arguments, and considering the Respondent’s default and lack of reaction after having been given a fair chance to comment or oppose, together with the fact that the disputed domain name consists of only Latin letters instead of Chinese characters, and resolved to a website in English, as well as the Respondent appears to be located in the United States, the Panel finds it would not be unfair to proceed in English as requested by the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1.

6.2 Substantive Elements

According to paragraph 4(a) of 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; 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 Complainant has provided evidence that it has obtained numerous LEGO trademark registrations across different jurisdictions. The Complainant is also the owner of numerous domain names consisting of or containing the term “Lego”.

The disputed domain name incorporates the entirety of the LEGO trademark. As the LEGO trademark is recognizable within the disputed domain name, the disputed domain name is confusingly similar to the Complainant’s LEGO trademark. The addition of the terms “city”, “toys”, and “sale” into the disputed domain name does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8.

The Panel therefore finds that the Complaint has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.

The disputed domain name resolved to a website purportedly offering the Complainant’s LEGO products for sale. According to the Complaint, no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO. Further, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.

While it is possible for resellers, distributors, or service providers to use a complainant’s trademark in a domain name to make a bona fide offering of goods and services, and thus have a right or legitimate interest

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in such domain name; in this case, it is clear that the Respondent has failed to accurately and prominently
disclose the Respondent’s lack of relationship with the Complainant on the website associated with the
disputed domain name. Accordingly, the Respondent does not have a right or legitimate interest in the
disputed domain name. See WIPO Overview 3.0, section 2.8.

Moreover, the nature of the disputed domain name, which incorporates the Complainant’s LEGO trademark with additional terms related to the Complainant’s products and businesses, carries a risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.

The Respondent submitted no response or evidence to rebut the allegations of the Complainant, or to establish that the Respondent is making a bona fide use, or a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent failed to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

The Panel therefore finds that the Complaint has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has provided evidence that the Complainant’s LEGO trademark has been registered for nearly 50 years and is among the best-known trademarks in the world. A simple online search could reveal that the trademark LEGO is in wide use by the Complainant.

Given the above, it would be inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant or the LEGO trademark at the time of the registration. Moreover, the use of the disputed domain name supports this finding. The Panel therefore finds that the disputed domain name was registered in bad faith.

Meanwhile, the Complainant’s evidence shows that the disputed domain name resolved to a website purportedly offering the Complainant’s LEGO products for sale, which indicates that the Respondent is seeking to cause confusion for the Respondent’s commercial benefit or has an intent to profit in some fashion from the Complainant’s trademark. The Panel therefore finds that the Respondent is using the disputed domain name in bad faith. See WIPO Overview 3.0, section 3.1.4.

The Panel finds that the Complaint has satisfied paragraph 4(a)(iii) 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 <legocitytoyssale.com> be transferred to the Complainant.

/James Wang/ James Wang Sole Panelist Date: June 22, 2023