The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is yyy666555 of China. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2011. On June 30, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On July 1, 2011, GoD, Inc.. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details and disclosing the registrant and contact information for the Disputed Domain Name. 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”).
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 July 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2011.
The Center appointed Alistair Payne as the sole panelist in this matter on August 11, 2011. 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 commenced use of its LEGO trade mark in the United States of America in 1953 and is the owner of a worldwide portfolio of trade mark registrations for the LEGO mark, including in particular Community Trade Mark registration 39966 for the LEGO word mark and 38504432 for its distinctive word and device mark in China. The Complainant also owns more than 1000 domain name registrations worldwide incorporating its LEGO mark.
The Respondent registered the Disputed Domain Name on January 20, 2011. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trademark rights in the LEGO mark as set out above which it and its licensees exploit worldwide, in relation to children’s toys and computer hardware and software, books, videos and computer controlled robotic construction sets. It says that its LEGO mark is one of the most well-known marks in the world and is famous and that subsidiaries and branches selling LEGO products are located throughout the world in more than 130 countries, including in China. The Complainant says that it opened its flagship store in China at the World Shopping Mall in Beijing in September 2007 and expects to be the market leader there by 2020. The Complainant notes that the worldwide revenues of the LEGO Group were more than USD 2,8 billion in 2009.
The Complainant submits that the fame of its LEGO trademark has been confirmed in numerous previous UDRP decisions, including LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator,WIPO Case No. 2010-1260 and Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680 LEGO and that the addition of the word “bet” does not distinguish the Disputed Domain Name and does not remove or reduce the risk of confusion or of false association with the Complainant’s mark and therefore the Disputed Domain Name is confusingly similar to its LEGO mark.
The Complainant says that it has not authorized or licensed the Respondent to use its LEGO mark and as far as it is aware the Respondent owns no trademarks for the mark and is not otherwise known by the mark and nor is it using the Disputed Domain Name in relation to a bona fide offering of goods or services. The Complainant says that the Respondent must have known of its famous LEGO mark when it registered the Disputed Domain Name in 2011 and that using the Disputed Domain Name to resolve either to a gaming website or to a website containing sponsored links to third party websites constitutes neither “bona fide offerings of goods or services” or in the circumstances a right or legitimate interest in the Disputed Domain Name.
The Complainant says that it sent a cease and desist letter to the Respondent to which it has had no response and which is indicative of the Respondent’s bad faith. In the circumstances of the fame of the Complainant’s mark and the recent registration of the Disputed Domain Name the Complainant submits that the registration was made in bad faith and that the Respondent is using the Domain Name to drive traffic to its website which appears to feature pay per click advertising. This says the Complainant amounts to the Respondent intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s LEGO mark as to the source, sponsorship, affiliation or endorsement of its website. Under paragraph 4(b)(iv) of the Policy and demonstrates both registration and use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant owns registered trade mark rights in the LEGO word mark as noted above, together with its well-known word and device mark in China of which the main feature is the word mark LEGO. The Panel considers that the Complainant’s LEGO mark is highly distinctive and that based on the evidence provided by the Complainant and following the decisions of previous UDRP panels (such as LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator, WIPO Case No. 2010-1260 and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680) the Complainant’s mark falls generally into the category of very well-known marks. In addition the Panel notes that the Complainant’s LEGO mark appears to enjoy considerable reputation in China.
The Panel does not consider that the addition of the common English word “bet” as a prefix to the well-known LEGO mark does anything to distinguish the Disputed Domain Name from causing Internet users to make an immediate association with the Complainant’s LEGO mark, which is entirely consistent with the panel’s finding in Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488, nor does the Panel find that registration of the Disputed Domain Name in the “info” domain name space assists in reducing such confusion. As a result the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
There is nothing before the Panel to suggest that the Respondent has any right or legitimate interest in the Disputed Domain Name. The Respondent appears to use the Disputed Domain Name for no other purpose than to attract Internet users to a pay-per-click advertising site. At the time that registration of the Disputed Domain Name was effected in 2011 the Panel infers that based on the renown attaching to the LEGO mark and the substantial use of the mark in the Chinese marketplace the Respondent must have been aware of the Complainant’s mark and additionally for the reasons set out below the Complainant has fulfilled the onus upon it of demonstrating the Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
As noted above the Panel infers that based on the renown attaching to the LEGO mark and the substantial use of the mark in the Chinese marketplace, the Respondent must have been aware of the Complainant’s mark upon the registration of the Disputed Domain Name in early 2011 and that it nevertheless purposefully registered the Disputed Domain Name.
There is nothing before the Panel to suggest that the Respondent has made any use of the Disputed Domain Name except in relation to the website which features pay-per-click advertising. While some previous UDRP panels have found that such advertising is not necessarily indicative of bad faith, a determination in relation to use that is otherwise passive must be made in the particular circumstances of the case (for example Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-013).
In the present case the Disputed Domain Name comprises an extremely well known mark together with a non-distinctive word as a prefix and appears to have been registered purposefully. There is nothing to suggest that the Respondent has or intends to make a bona fide use of the Disputed Domain Name and in addition the Respondent has singularly failed to respond to the Complainant’s cease and desist letter, or to the Complainant’s subsequent attempts to contact it. In these circumstances the Panel infers that the Respondent’s motivation for using the Disputed Domain Name featuring the LEGO mark was indeed calculated to drive Internet users to its site featuring sponsored links for the purposes of the Respondent’s financial gain and that this amounts to conduct under paragraph 4(b)(iv) of the Policy, which is indicative of both registration and use in bad faith.
Accordingly the Panel finds that the Respondent both registered and used the Disputed Domain Name in bad faith and that the Complaint succeeds under the third element 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 domain name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: August 18, 2011
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