The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services of Sweden.
The Respondent is Kangjing ding, ding kang jing of Hangzhoushi, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd (“the Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2010. On September 14, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2010, the Registrar 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 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 Chinese. On September 20, 2010, the Center transmitted by email to the parties in both Chinese and English a communication regarding the language of proceedings. On September 21, 2010, the Complainant submitted a request that English be the language of proceedings. On September 23, 2010, the Respondent submitted a request that Chinese be the language of proceedings.
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 27, 2010. With respect to the language of proceedings, the Center indicated in its Notification of Complaint email as follows:
“The Complainant has submitted a request that English be the language of the proceedings, to which the Respondent has objected. Given the provided submissions and circumstances of this case, the Center has decided to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. Having provided both parties with an opportunity to comment, any subsequent communications received by the Center from the parties regarding the language issue will be a matter for consideration at the discretion of the Panel (on appointment). The Panel may choose to write a decision in either language, or request translation of either party’s submissions.”
In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2010. On September 30, 2010 and October 8, 2010 the Center received email communications from the Respondent regarding the possibility of transferring the disputed domain name. With the absence of a request for suspension from the Complainant, the Center continued to proceed with the case. The Respondent did not submit any formal response by the due date for Response. Accordingly, the Center notified the Respondent’s default on October 18, 2010.
The Center appointed Linda Chang as the sole panelist in this matter on October 25, 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.
The Panel notes that all of the communications from the Center to the parties have been transmitted in both Chinese and English. The Panel notes that the Respondent stated in its request for the language of proceedings on September 23, 2010 that his mother tongue is not English. However, the Panel also notes that the email communication from the Respondent to the Center on September 30, 2010 included comments on the content of the Complaint, which was submitted in English, so it appears that the Respondent has an understanding of the English language. Given the provided submissions and circumstances of this case, the Panel chooses at its discretion to render the decision in English.
Due to special circumstances, the Panel has extended the decision due date until November 15, 2010. 4. Factual Background
The Complainant is a Danish company 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 the People’s Republic of 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 disputed domain name was registered on April 3, 2010. At the time the Complaint was filed the disputed domain name was used in connection with a website selling baby and family 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 to which the Complainant has rights.
The Complainant states that it owns several registrations for the trademark LEGO and 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, deviates from the mark only with the addition of the prefix “you”. 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 the prefix “you”, 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 “net” does not have any impact on the overall impression of the dominant portion of the domain name and is therefore irrelevant to determine the confusing similarity between the trademark and 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 non-commercial 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 was registered and used in bad faith on the basis of the following reasons:
Firstly, the Complainant states that it is a 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 name 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; LEGO Juris A/S v. Zhijun Guo, WIPO Case No. D2009-0184; 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, citing the precedents: News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2009-1623; Nike, Inc. v. Azumano Traveland,WIPO Case No. D2000-1598; America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460 the Complainant argues that the failure of a respondent to respond to the Complainant’s attempts to contact in the forms of a cease and desist letter and subsequent reminders prior to file a complaint according to the UDRP process 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 sell baby and family 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:WIPO Case No. 1353 McDonald’s Corporation v. ZusCom. Moreover, citing precedentWIPO Case No. D2009-1611, the Complainant claims that the fact that the Respondent has chosen to translate the Chinese name of its website to reflect the LEGO trademark showed bad faith in registration. B. Respondent
The Respondent stated in an email to the Center on September 30, 2010 that the domain name is the transliteration of the Chinese domain name “游乐购”. However, the Respondent did not reply directly to the Complainant’s contentions. 6. Discussion and Findings
There being no formal 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 a word “you”. Pursuant to the principle established by numerous prior decisions, the Panel holds that the addition of the word “you” does not negate the confusing similarity between the disputed domain name and the Complainant’s trademarks. The close similarity to the trademark of the Complainant LEGO gives the domain name a similar appearance to the Complainant’s trademark, which is likely to cause confusion among the present or potential new consumers.
Therefore, the Panel finds that the disputed domain name is 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 interests 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 rebut the Complainant’s prima facie showing. 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 the People’s Republic of China. The Panel notes that at the time the Complaint was filed the website connected to the disputed domain name was selling mainly children’s clothing. In other words, the customers or potential customers of the Respondent are of the same consumer group, namely children and their parents. Given the distinctiveness and reputation of the Complainant’s trademark as well as the fact that both parties share the same target consumers, the Panel is convinced that the purpose of the Respondent’s registration of the domain names 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 under the UDRP.
The Panel additionally notes the Complainant’s argument regarding the transliteration of the website’s title, however the Panel is not persuaded by this argument. The Panel notes however, that the Complainant has successfully made its case with regards to the third element of the Policy.
Accordingly, the Panel finds that the Complainant has established that the Respondent has registered and used the disputed domain names 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 15, 2010
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