LEGO Juris A/S v 杨智超 (Yang Zhi Chao)
WIPO Case No. D2023-5384
•06-03-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. 杨智超 (Yang Zhi Chao)
Case No. D2023-5384
1. The Parties
The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB,
Sweden.
The Respondent is 杨智超 (Yang Zhi Chao), China.
2. The Domain Name and Registrar
The disputed domain name <legoeducations.com> is registered with eName 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 28, 2023. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, 2023, the Registrar
transmitted by email to the Center its verification response disclosing registrant and contact information for registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On January 5, 2024, the Center informed the parties in Chinese and English, that the language of the registration agreement for the disputed domain name is Chinese. The Complainant filed an amended Complaint in English on January 8, 2024, including its request that English be the language of the proceeding. The Respondent did not submit any comment on the language of the proceeding.
the disputed domain name which differed from the named Respondent and contact information in the
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 Chinese and English of the Complaint, and the proceedings commenced on January 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2024. The Respondent did not submit
any response. Accordingly, the Center notified the Respondent’s default on February 2, 2024.
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The Center appointed Matthew Kennedy as the sole panelist in this matter on February 21, 2024. 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 part of the LEGO Group, which produces construction toys, and has expanded into computer hardware and software, books, videos, and computer controlled robotic construction sets. LEGO Education, which is part of the LEGO Group, works with teachers and educational specialists to deliver playful learning experiences. The Complainant holds trademark registrations in multiple jurisdictions, including the following:
| - | Chinese trademark registration number 10176429 for LEGO, registered from January 14, 2013, specifying goods in class 28; and |
| - | Chinese trademark registration number 17247873 for LEGO EDUCATION, registered from August 14, 2016, specifying goods in class 16. |
The above trademark registrations remain current. The Complainant has also registered over 5,000 domain names that incorporate “lego”, including <lego.com>, that it uses in connection with a website where it provides information about itself and its products. LEGO Education provides a wide range of hands-on and digital educational resources that are promoted through the subdomain <education.lego.com>.
The Respondent is an individual resident in China. According to evidence presented by the Complainant,
numerous panels in prior proceedings under the Policy have found that the Respondent had registered and
was using other domain names in bad faith, including Language Line, LLC v. Yang Zhi Chao（杨智超),
WIPO Case No. D2023-4244; Barracuda Networks, Inc. v. Yang Zhi Chao（杨智超), WIPO Case No.
D2023-4163; Skyscanner Limited v. 杨智超 (yang zhi chao), WIPO Case No. D2023-3983; The White
Company (U.K.) Limited v. 杨智超 (yang zhi chao), WIPO Case No. D2023-3118; and Taojing International
Ltd. Zenni Optical, Inc. v. 杨智超 (yang zhi chao), WIPO Case No. D2023-2215.
The disputed domain name was registered on August 26, 2023. According to evidence provided by the Complainant, the disputed domain name is offered for sale on a domain name broker’s website for USD 7,950. The disputed domain name resolves to a parking page displaying Pay-Per-Click (“PPC”) links for “steam education”, “stem steam”, and “steam learning”. These are evidently references to the educational
approaches of STEM (an acronym for “science, technology, engineering, and mathematics”) and STEAM (an
acronym for “science, technology, engineering, the arts, and mathematics”).
The Complainant sent a cease-and-desist letter dated September 20, 2023 to the Respondent care of the Registrar, in which the Complainant offered to reimburse out-of-pocket expenses in exchange for a transfer of the disputed domain name. The Complainant sent a reminder on September 27, 2023 to which an agent of the Registrar replied on the following day, asking how much the Complainant could accept to buy the disputed domain name. The Complainant sent follow-up emails on October 4, 11, and 19, 2023, to no avail.
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.
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Notably, the Complainant contends that the disputed domain name is confusingly similar to its LEGO mark. The Respondent has no rights or legitimate interests in respect of the disputed domain name. No license or authorization has been given by the Complainant to the Respondent to use the LEGO mark. The disputed
domain name was registered and is being used in bad faith. The LEGO mark is a famous mark. The a pattern of cybersquatting. The Respondent is currently offering to sell the disputed domain name for valuable consideration in excess of his out-of-pocket expenses. The disputed domain name resolves to a page displaying sponsored links.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 amended Complaint were filed in English. The Complainant requested that the language
of the proceeding be English. Its main reasons were that translation of the Complaint would unfairly
disadvantage and burden the Complainant; the disputed domain name is composed of Latin characters;
and pre-Complaint correspondence between the Complainant and the Registrar was conducted in English.
Despite the Center having sent an email regarding the language of the proceeding, and the notification of complaint, in both English and Chinese, the Respondent did not comment on the language of the proceeding or express any interest in otherwise participating in this 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, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. The Panel would have accepted a Response in Chinese, but none was filed.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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.
The burden of proof of each element is borne by the Complainant.
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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. See WIPO Overview 3.0, section 1.7.
The Complainant has shown registered rights in respect of the LEGO and LEGO EDUCATION trademarks.
See WIPO Overview 3.0, section 1.2.1.
The entirety of the LEGO and LEGO EDUCATION marks are reproduced within the disputed domain name. The disputed domain name also includes the plural “s” (and, after the LEGO mark, the word “education”) but both marks remain recognizable within it. The additional element is a generic Top-Level Domain (“gTLD”)
extension (“.com”) which, as a standard requirement of domain name registration, may be disregarded in the
assessment of confusing similarity for the purposes of the Policy. Accordingly, the Panel find that the
disputed domain name is confusingly similar to the Complainant’s marks for the purposes of the Policy. See
WIPO Overview 3.0, sections 1.7, 1.8, and 1.11.
Therefore, 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.
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. See WIPO Overview 3.0, section 2.1.
In the present case, the disputed domain name resolves to a parking page displaying PPC links. The PPC links relate to educational approaches. The PPC links operate for the commercial gain of the Respondent, if he is paid to direct traffic to the linked websites, or the commercial gain of the operators of the linked websites, or both. The Complainant submits that it has not given any license or authorization to the Respondent to use its mark. The Panel does not consider that this constitutes a use of the disputed domain name in connection with a bona fide offering of goods or services for the purposes of the Policy, nor is it a legitimate noncommercial or fair use of the disputed domain name. Further, the Registrar has verified that the Respondent’s name is 杨智超 (“Yang Zhi Chao”), which does not resemble the disputed domain name at all. Nothing in the record indicates that the Respondent has been commonly known by the disputed domain name.
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.
Based on the record, the Panel finds the second element of the Policy has been established.
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C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first and fourth circumstances are as follows:
“(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] acquired the
domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name
registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs
directly related to the [disputed] domain name;” and
“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for
commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a
likelihood of confusion with the Complainant’s mark as to the 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.”
The disputed domain name was registered in 2023, years after the registration of the Complainant’s LEGO and LEGO EDUCATION marks, including in China, where the Respondent is based. The LEGO mark is not a dictionary word and the combination of LEGO and “education” is not a common phrase. The disputed domain name wholly incorporates both marks, adding only a plural “s”, which indicates an awareness of the marks. The Respondent offers no explanation for his registration of the disputed domain name. In these circumstances, the Panel finds that the Respondent targeted the Complainant’s marks when he registered the disputed domain name.
With respect to use, the disputed domain name is listed for sale on a domain name broker’s website for USD 7,950. The Panel considers it likely that this sum exceeds the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. While the disputed domain name is listed for sale, it resolves to no active website other than a parking page displaying PPC links. The Respondent offers no explanation of any actual or potential good faith use of the disputed domain name. These circumstances indicate that the Respondent registered the disputed domain name primarily for the purpose of selling the domain name registration to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name within the meaning of paragraph 4(b)(i) of the Policy.
While the disputed domain name is for sale, it resolves to a parking page displaying PPC links related to educational approaches. The disputed domain name operates by attracting Internet users searching for the Complainant’s LEGO EDUCATION products and diverting them to the Respondent’s parking page and the sites linked to it. This use is for commercial gain, for the reasons given in section 6.2B above. Accordingly, the Panel finds that the facts of this case also fall within the terms of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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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 <legoeducations.com> be transferred to the Complainant.
/Matthew Kennedy/
Matthew Kennedy
Sole Panelist
Date: March 6, 2024
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