The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is crt000, chen rui ting, chen rui ting of Guangzhou, Guangdong, the People’s Republic of China (“China”) and PrivacyP, Domain Admin Moergestel, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2010. On September 10, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On September 19, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on September 21, 2010 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 amendment to the Complaint on September 21, 2010. The Respondent sent an email communication to the Center on September 24, 2010 in reply to his being copied to the Center communication of September 21, 2010.
The Center verified that 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”).
Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise. According to information from the concerned Registrar, the language of the registration agreement for the disputed domain name is English and hence the language of the administrative proceeding is English.
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 September 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2010. Except for the email of September 24, 2010 no formal Response was filed by the due date for Response. Accordingly, the Center notified the Respondent’s default on October 21, 2010.
The Center appointed Linda Chang as the sole panelist in this matter on October 28, 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.
Due to special circumstances, the Panel has extended the decision due date until November 23, 2010. 4. Factual Background
The Complainant is a Danish corporation and has subsidiaries and branches throughout the world, and its renowned construction toys and other branded products are sold in more than 130 countries, including in China. The Complainant is the owner of the trademark LEGO and all other trademarks used in connection with the famous LEGO brand of construction toys and other LEGO branded products.
The Respondent registered disputed domain name ; on May 20, 2010. The disputed domain name is used in connection with websites selling clothes. 5. Parties’ Contentions A. Complainant The Disputed Domain Name is Confusingly Similar to the Complainant’s Trademark
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark in which the Complainant has rights.
The Complainant states that it owns several registrations for the trademark LEGO and domain names in numerous countries all over the world, including more than 1000 domain names containing the term LEGO. Citing precedents: LEGO Juris A/S v. Level 5 Corp.,WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715; LEGO Juris A/S v. Reginald Hastings Jr.,WIPO Case No. D2009-0680 the Complainant stated that LEGO is a well-recognized, famous and distinctive trademark.
The Complainant asserts that the disputed domain name incorporates the Complainant’s registered trademark LEGO in full, deviating from the mark only with the addition of the letter “o” and a hyphen together with a duplication of the trademark. The Complainant contends that where a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish confusing similarity, despite the addition of other words to such marks. The Complainant alleges that the addition of an “o” and a hyphen together with a duplication of the trademark are not relevant and will not have any impact on the overall impression of the dominant part of the name, citing precedents: Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488. The Complainant also alleges that addition of the top-level domain (Tld) “COM” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the trademark and disputed domain name. The Respondent has No Rights or Legitimate Interests in the Disputed Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the basis of the following reasons:
Firstly, the disputed domain name does not correspond to a trademark registered in the name of the Respondent. Secondly, the Complainant states that it has never licensed or otherwise permitted the Respondent to use its trademarks or to apply for domain names incorporating its trademarks. Therefore, there is no relationship whatsoever between the Complainant and the Respondent, citing precedent: Guerlain S.A. v. Peikang, WIPO Case No. D2000- 0055 there is no disclaimer on the website describing the non-existent relationship with the Complainant, precedent: Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312. Thirdly, there is no evidence of any fair or noncommercial uses of the disputed domain names, citing precedent: Drexel University v. David Brouda, WIPO Case No. D2001-0067. Registered and Used in Bad Faith
The Complainant contends that the disputed domain name is registered and used in bad faith on the basis of the following reasons:
Firstly, the Complainant states that it is world renowned for its construction toys products and that its trademarks are distinctive and well-known internationally, citing the substantial increase in the number of cases where third parties registered domain names including the trademark LEGO in combination with other words over the last few years: Lego Juris A/S v. Hu Liang/Dolego,WIPO Case No. D2009-0848; LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Stop2Shop, G V, WIPO Case No. D2009-0784; LEGO Juris A/S v. Private, Registration / Dohe Dot,WIPO Case No. D2009-0753; LEGO Juris A/S v. EcomMutual,WIPO Case No. D2009-0685; LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680; LEGO Juris A/S v. Deng Yi Xia,WIPO Case No. D2009-0644; LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd,WIPO Case No. D2009-0564; Lego Juris A/S v. Gioacchino Zerbo;WIPO Case No. D2009-0500; LEGO Juris A/S v. Mike Morgan, WIPO Case No. D2009-0438; LEGO Juris A/S v. Bladimir Boyiko,WIPO Case No. D2009-0437; LEGO Juris A/S v. D and Compsys Domain Solutions Private Limited,WIPO Case No. D2009-0381; SunSpots Productions Inc. v. John Laprad,WIPO Case No. D2009-0184;WIPO Case No. LEGO Juris A/S v. P N S Enterprises,WIPO Case No. D2009-0170, LEGO Juris A/S v. David Palmer,WIPO Case No. D2008-1826; LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715; LEGO Juris A/S v. Level 5 Corp.,WIPO Case No. D2008-1692. Therefore, the Complainant contends that the Respondent knew or should have known of the existence of the Complainant's trademark LEGO prior to registering the disputed domain name and this prior knowledge constitutes bad faith in registration.
Secondly, the Complainant argues that the failure of the Respondent to respond to the Complainant’s attempts to contact it in the form of a cease and desist letter and subsequent reminders prior to filing the Complaint under the UDRP is also relevant in a finding of bad faith.
Thirdly, the Complainant asserts that the Respondent is using the website connected with the disputed domain name to a store selling clothes, which are not products produced by the Complainant. The Complainant alleges that the Respondent has intentionally attempted to divert present and potential new Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks and official website, citing precedent: McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1373. B. Respondent
The Respondent emailed the Center stating that she did not understand the situation on September 24, 2010. However, she did not reply directly to the Complainant’s contentions. 6. Discussion and Findings
Regarding the email from the Respondent stating that she did not understand the situation, given that the content of the website and the language of the registration agreement for the disputed domain name are in English, it appears that the Respondent has an understanding of the English language. Moreover, the Panel found that the Notification of Complaint, the Complaint and the cease and desist letter listed out the situation clearly to the Respondent.
There being no Response, under paragraphs 5(e) and 14(a) of the Rules, the Panel, in the absence of exceptional circumstances, decides the dispute on the basis of the Complaint.
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:
(A) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) the Respondent has no rights or legitimate interests in respect of the domain name; and
(C) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the registered owner of the trademark LEGO in many countries around the world. The Complainant has acquired substantial goodwill in this trademark.
Compared to the Complainant’s trademark, the disputed domain name completely reproduces the trademark with the only difference being an addition of an “o” and a hyphen together with a duplication of the trademark. Pursuant to the principle established by numerous prior decisions, the Panel holds that the addition of a generic term does not negate the confusing similarity between the disputed name and the Complainant’s trademarks. The close similarity to the trademark of the Complainant LEGO the domain name strongly suggests that is intentionally similar in appearance to the Complainant’s trademark, which will cause confusion among the present or potential new consumers.
Therefore, the Panel finds that the disputed domain name is clearly, intentionally and confusingly similar to the Complainant’s trademarks. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain name. There is nothing in the record to suggest the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, to suggest that it has been commonly known by the disputed domain name, or to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Therefore, the burden shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant’s claims.
The Panel bases its decision on the information and evidence submitted before it, and given the circumstances, finds it more likely than not that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has developed a reputation for the trademark LEGO in construction toys area since 1953, and the Complainant’s trademarked products are sold worldwide including in China. Given the distinctiveness of the Complainant’s trademark, the Panel finds it unlikely that the Respondent who sells clothes would be unaware of the trademark LEGO but incidentally chose it as the main part of its domain names.
In addition, the Respondent’s lack of rights or legitimate interests in the name LEGO as well as the fact that the disputed domain name is been used to sell products that are not produced by the Complainant, the Panel is convinced that the purpose of the Respondent’s registration of the domain name is to capitalize on the goodwill of the trademarks by merely registering the trademark as a domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating this consumer confusion on the source, sponsorship, affiliation or endorsement of its websites. This behavior constitutes bad faith registration and use of the domain name.
The Panel finds that the Complainant has established that the Respondent has registered and used the disputed domain name in bad faith and has met the requirements of 4(a)(iii) of the Policy. 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 domain name, be transferred to the Complainant.
Linda Chang
Sole Panelist
Dated: November 23, 2010
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