LEGO Juris A/S v 冷涵杰 (Leng Hanjie)
WIPO Case No. D2024-5242
•10-02-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. 冷涵杰 (Leng Hanjie)
Case No. D2024-5242
1. The Parties
Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is 冷涵杰 (Leng Hanjie), China.
2. The Domain Name and Registrar
The disputed domain name <lego.space> is registered with Xin Net Technology Corporation (the
“Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on
December 20, 2024. On December 20, 2024, the Center transmitted by email to the Registrar a request for
registrar verification in connection with the disputed domain name. On December 23, 2024, the Registrar
transmitted by email to the Center its verification response confirming that Respondent is listed as the
registrant and providing the contact details. The Center sent an email communication to Complainant on
December 23, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting
Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in
English on December 24, 2024.
On December 23, 2024, the Center informed the parties in Chinese and English, that the language of the registration agreement for the disputed domain name is Chinese. On December 24, 2024, Complainant confirmed its request that English be the language of the proceeding. Respondent did not submit any
comment on 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent in English and
Chinese of the Complaint, and the proceedings commenced on December 27, 2024. In accordance with the
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Rules, paragraph 5, the due date for Response was January 16, 2025. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 17, 2025.
The Center appointed Yijun Tian as the sole panelist in this matter on January 22, 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
A. Complainant
Complainant, LEGO Juris A/S, is an association incorporated in Denmark. It is a world leading company making and selling LEGO branded toys and other products. Complainant has subsidiaries and branches throughout the world and LEGO products are sold in more than 130 countries, including in China.
Complainant has exclusive rights in LEGO, and LEGO related marks (hereinafter “LEGO marks”). Complainant is the exclusive owner of numerous LEGO marks worldwide, including a Denmark trademark registration for LEGO registered on May 1, 1954 (Denmark trademark registration number VR 1954 00604); and a Chinese trademark registration for LEGO registered on December 28, 1993 (Chinese trademark registration number 671899). Complainant also owns and operates near 5,000 domain names which contain the LEGO mark in entirety.
B. Respondent
Respondent is 冷涵杰 (Leng Hanjie), China.
The disputed domain name <lego.space> was registered on March 2, 2015.
The disputed domain name leads to an inactive webpage (Annex 8 to the Complaint).
5. Parties’ Contentions
A. Complainant
Complainant contends that the disputed domain name is identical to Complainant’s trademark LEGO. The disputed domain name is comprised solely the mark LEGO. The addition of the Top-Level Domain (“TLD”) “.space” does not reduce the confusing similarity between the disputed domain name and Complainant’s
trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it.
B. Respondent
Respondent did not reply to Complainant’s contentions.
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6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreements 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.
From the evidence presented on the record, no agreement appears to have been entered into between proceeding for the following reasons:
Complainant and Respondent to the effect that the language of the proceeding should be English.
(a) Complainant is unable to communicate in Chinese, and requiring translation would impose an unfair burden, delaying the proceedings and adjudication of this matter.
(b) The disputed domain name consists entirely of Latin characters and solely comprises the well-known LEGO trademark, which has no specific meaning in the Chinese language.
| (c) | Complainant previously sent a cease-and-desist letter to Respondent (Annex 9 to the Complaint), yet |
Respondent neither responded nor requested that communications be conducted in Chinese. Given this, allowing Respondent to dictate the language at this stage would unfairly disadvantage Complainant.
Respondent did not make any specific submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, a 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).
Considering the following aspects, the Panel has decided that the language of the proceeding shall be worldwide, particularly English speaking countries; (c) Complainant previously sent a cease-and-desist letter to Respondent, yet Respondent neither responded nor requested that communications be conducted in Chinese; (d) the Center has notified Respondent of the language of the proceeding in both Chinese and English, and (e) Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding.
English: (a) the disputed domain name is registered in Latin characters, rather than Chinese script; (b) the
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Substantive Issues: Three Elements
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 record, the Panel finds 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.
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The Panel finds the entirety of the LEGO mark is reproduced within the disputed domain name. More
specifically, the disputed domain name is identical to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.
Based on the available record, 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.
While 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 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. WIPO Overview 3.0, section 2.1.
Having reviewed the record, the Panel finds Complainant has established a prima facie case that 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 specifically:
(i) there has been no evidence adduced to show that Respondent is using the disputed domain name in
connection with a bona fide offering of goods or services. Respondent has not provided evidence of reasons to justify the choice of the term “lego”, Complainant’s LEGO trademark, in the disputed domain name. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the LEGO marks or to apply for or use any domain name incorporating the LEGO marks;
| (ii) there has been no evidence adduced to show that Respondent has been commonly known by the trademark rights with respect to the disputed domain name. Respondent registered the disputed domain | disputed domain name. There has been no evidence adduced to show that Respondent has any registered marks; and |
| (iii) there has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the disputed domain name is currently resolved to an | |
| Based on the available record, 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 Respondent has registered and used the disputed domain name in bad faith. Complainant’s LEGO trademarks predate the registration of the disputed domain name. |
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Respondent has not provided evidence of the reason to register the disputed domain name. More likely than not, Respondent had Complainant’s trademark in mind while registering the disputed domain name.
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.
UDRP Panels 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. Having reviewed the record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3.
Having reviewed the record, the Panel notes the distinctiveness and reputation of Complainant’s trademark, that Respondent did not rebut any of Complainant’s contentions, and the composition of the disputed domain name targeting Complainant’s trademark, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.
Based on the available record, the Panel finds the third element of the Policy has been established.
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 <lego.space> be transferred to Complainant.
/Yijun Tian/
Yijun Tian
Sole Panelist
Date: February 10, 2025
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