WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Ho Nim Case No. D2010-0931 1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Corporate Brand Services AB, Sweden.
The Respondent is Ho Nim of Shanghai, People's Republic of China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , and are registered with A, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2010. On June 8, 2010, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the disputed domain names, with the exception of one later-added domain name, . On June 9, 2010, A, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on June 11, 2010, adding the disputed domain name . On June 11, 2010, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the disputed domain name . On June 15, 2010, A, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 6, 2010.
The Center appointed Daniel Peña as the sole panelist in this matter on July 12, 2010. 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 trademark LEGO and all other trademarks used in connection with the LEGO brand 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 People's Republic of China and elsewhere.
LEGO opened its flagship store in the People's Republic of China at World Shopping Mall in Beijing in September 2007.
The Complainant and its licensees, through their predecessors commenced use of the LEGO mark in the United States (“U.S.”) during 1953, to identify construction toys made and sold by them.
Over the years, the business of making and selling LEGO branded toys has grown. For instance, the revenue for the LEGO Group in 2008 was more than USD 1.8 billion.
The Complainant has subsidiaries and branches throughout the world.
LEGO products are sold in more than 130 countries, including in the People's Republic of China.
The Complainant is also the owner of more than 1000 domain names containing the term “Lego”.
The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.
The LEGO Group maintains an extensive web site under the domain name . 5. Parties' Contentions A. Complainant
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. Indeed, the LEGO trademark and brand have been recognized as being famous. For instance, the LEGO mark has been named the 8th most famous trademark and brand in the world, according to a list of the official top 500 Superbrands for 2009/10.
The disputed domain names are confusing similar to the Complainant's world famous trademark LEGO.
The fame of the trademark LEGO has been confirmed in numerous previous UDRP decisions. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain names transferred, the Complainant must show the following per the Policy, paragraph 4(a):
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Complainant bears the burden of proof for each of these elements. A. Identical or Confusingly Similar
The Complainant has evidenced registrations for the trademark LEGO in several countries including the People's Republic of China, apparently the country of domicile of the Respondent. The Complainant's trademarks are registered mainly in international class 28 for construction toys.
The disputed domain names contain the Complainant's distinctive trademark LEGO in its entirety. Neither the addition of the prefixes and suffixes nor the inclusion of the generic denomination “.com” alters the fact that the domain names are confusingly similar to the Complainant's trademark.
Most prefixes and suffixes used together with the expression LEGO in the disputed domain names have individually a meaning resembling actual activities, licenses or clubs used by LEGO. For example, the Complainant has product lines named “Ben 10” and “Power Miners”, as well as an online shop and a fan club named “LEGO Club” with its own homepage. The Complainant also has an agreement with Lucasfilm Ltd to develop and sell “LEGO® Indiana Jones™” products. Furthermore, the BIONICLE line is a LEGO selling theme. The LEGO Group has applied for and/or registered the BIONICLE mark in over 30 countries.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant's registered trademarks. Therefore, the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by any of the disputed domain names.
With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and has not used the disputed domain names, or a name corresponding to them, in connection with a bona fide offering of goods or services.
In the Panel's view, the Complainant has provided evidence that the Respondent has knowingly acted so as to harm the Complainant's business, for its own commercial gain, by use of the disputed domain names to mislead Internet users in many cases to active web sites where information about the Complainant's LEGO products and links to Complainant's competitors are provided.
The Respondent has adopted the Complainant's trademarks for its own use and incorporated them into its domain names without any authorization or license.
In the absence of a Response, the Panel accepts the arguments and evidence advanced by the Complainant and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Considering the undisputed wide use of the Complainant's trademarks and in the absence of contrary evidence, the Panel finds that the Respondent had actual knowledge of the Complainant's trademarks when the disputed domain names were registered. Furthermore, considering the quantity of disputed domain names all consisting of the Complainant's trademarks the Respondent must have known of the Complainant's rights in said marks, and the registrations are done with this in mind. In addition, the Respondent failed to respond to a cease and desist letter, which was sent by the Complainant.
There is no connection between the Respondent and the Complainant. By using the disputed domain names in the present manner the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain.
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent's web site 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 site or of a product or service offered on the respondent's site. Policy paragraph 4(b)(iv).
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain names in bad faith. 7. Decision
For all 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, , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Daniel Peña
Sole Panelist
Date: July 23, 2010
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