LEGO Juris A/S v Lu Zhi Tao

WIPO Case No. D2023-0177

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Lu Zhi Tao

Case No. D2023-0177

1. The Parties

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

Sweden.

The Respondent is Lu Zhi Tao, China.

2. The Domain Names and Registrars

The disputed domain name <legobuda.com> is registered with ! #1 Host Japan, Inc (the “Registrar”).

The disputed domain name <lego360.com> is registered with Free Dive Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2023. On January 13, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <lego360.com>. On January 18, 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 (Perfect Privacy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 19, 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 on January 24, 2023, adding the disputed domain name <legobuda.com> to the amended Complaint. On February 2, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <legobuda.com>. On February 6, 2023, the Registrar transmitted by email to the Center its verification response confirming the registrant details and contact information in the Complaint.

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 of the paragraph 5, the due date for Response was March 5, 2023. The Respondent did not submit any response.

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Accordingly, the Center notified the Respondent’s default on March 6, 2023.

The Center appointed Kaya Köklü as the sole panelist in this matter on March 15, 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 is the owner of the LEGO trademark commonly known in relation to construction toys. The Complainant has subsidiaries and branches throughout the world and its products are sold in more than 130 countries, including in China.

The Complainant owns a large number of word and figurative LEGO trademark registrations around the globe. According to the Complaint, the Complainant is, among many others, the registered owner of the Chinese Trademark Registration No. 75682 (registered on December 22, 1976) for LEGO (Annex 3 to the

Complaint).

The Complainant further operates its main website at <lego.com> (Annex 7 to the Complaint).

The disputed domain name <lego360.com> was created on May 6, 2022.
The disputed domain name <legobuda.com> was created on May 15, 2022.

The Respondent is reportedly from China, whereas its true identity remains unclear due to seemingly false or incomplete contact information.

As evidenced in Annex 8 to the Complaint, both disputed domain names resolve to websites with explicit adult content.

On May 20 and 30, and on June 7, 2022, the Complainant sent cease-and-desist letters to the Respondent
and tried in vain to solve the dispute amicably by requesting a transfer of the disputed domain name

<lego360.com> (Annex 9 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain names.

The Complainant is of the opinion that the disputed domain names are confusingly similar to its LEGO trademark.

It further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Finally, the Complainant is convinced that the Respondent has registered and is using the disputed domain names in bad faith.

B. Respondent

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

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6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the
Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i)        the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii)       the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii)      the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where
relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

For the evaluation of this case, the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views stated therein.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has registered trademark rights in the mark LEGO by virtue of various
trademark registrations, including in China, where the Respondent is reportedly located at (Annex 3 to the
Complaint).

The Panel further finds that the disputed domain names are confusingly similar to the Complainant’s registered LEGO trademark, as they fully incorporate the trademark. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within a disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. In the present case, the mere addition of “360” respectively “buda” does not, in view of the Panel, serve to prevent a finding of confusing similarity between the disputed domain names and the Complainant’s LEGO trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain names.

While the burden of proof on this element remains with the Complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the Respondent. Therefore, the Panel

agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the
burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed
domain names in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines
d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

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The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain names according to the Policy, paragraphs 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark LEGO in a confusingly similar way within the disputed domain names.

The Respondent has not submitted any evidence or arguments demonstrating relevant rights or legitimate interests, nor has it rebutted any of the Complainant’s contentions. There is also no evidence in the case record that the Respondent is commonly known by the disputed domain names, nor that there are any

circumstances or activities that would establish the Respondent’s rights or legitimate interests therein.

The Panel is rather convinced that the Respondent deliberately chose the disputed domain names in order to target Internet users who are searching for the products offered by the Complainant. In view of the Panel, there is a considerable risk that these Internet users may end up on the websites of the Respondent with explicit adult content. The Panel believes that this cannot be sufficient basis for assessing a bona fide offering of goods or services by the Respondent.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is convinced that the Respondent must have had the Complainant’s trademark in mind when registering the disputed domain names. In view of the Panel, the Respondent has registered the disputed domain names solely for the purpose of creating an association with the Complainant.

After having reviewed the Complainant’s screenshots of the websites associated to the disputed domain WIPO Case No. D2009-1187. Noting that the Respondent lacks any rights or legitimate interests in the disputed domain names, the use of the disputed domain names incorporating the Complainant’s LEGO trademark and misleading Internet users to websites with explicit adult content for commercial gain, is in view of the Panel sufficient evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.

names (Annex 8 to the Complaint), the Panel is convinced that the Respondent has intentionally registered
the disputed domain names in order to generate traffic to its own website with adult content. Such conduct is
known as “pornosquatting”, the practice whereby confusion with a famous trademark is used to divert
The Panel concludes that the disputed domain names were registered and are being used in bad faith and
that the Complainant has also satisfied the third element of the Policy, namely, 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 names, <legobuda.com> and <lego360.com>, be transferred to the
Complainant.

/Kaya Köklü/ Kaya Köklü Sole Panelist Date: March 29, 2023