The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Chen Wenjie of Putian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2011. On July 27, 2011, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On July 28, 2011, I Corp. 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”).
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 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2011. On August 19, 2011, the Center notified the Respondent’s Default. On August 22, 2011, the Center received an email communication from the Respondent.
The Center appointed David Levin Q.C. as the sole panelist in this matter on August 25, 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 has been since 1953 and is currently the owner of numerous trademark registrations relating to the LEGO products, including registration in China. LEGO products are regularly sold in about 130 countries around the globe including China. The Complainant is also the owner of more than 1,000 domain names containing the term “lego”, including, for example, , , , , , and . Almost all of these domain names include the LEGO trademark as the first four characters of what is usually a composite domain name.
The disputed domain name was registered on April 1, 2011. 5. Parties’ Contentions A. Complainant
The Complainant has provided documentary evidence of numerous trademark registrations in many countries including in China. The Complainant has been operating commercially itself and through licensees in China for 15 years.
The Complainant opened its flagship store in China at the World Shopping Mall in Beijing in September 2007 and Mr. Knudstorp who is the president of the Complainant expects that the Complainant will be the market leader by 2020. The Complainant has been present in China for 15 years. The Chinese trademark registration matured into registration as early as in 2004, which is 7 years prior to when the disputed domain name was registered.
The trademark of LEGO is one of the world’s most recognized marks, listed by Superbrands UK in its 2009/10 assessment as the 8th most famous trademark and brand in the world. The Complainant maintains that by reputation and statutory recognition it is entitled to protection with the right to prevent any use of the well-known trademark or a confusingly similar representation of it in connection with any products or services, even beyond those classes for which it has been formally registered.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. The Complainant contends that it meets these requirements in that, on the evidence:
(i) the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights;
(ii) the Respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) the Respondent registered and uses the disputed domain name in bad faith.
The Complainant maintains that on the evidence produced it has established each of the three elements required. B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, the Respondent sent an email communication to the Center on August 22, 2011 requesting “please use the Chinese language”. 6. Discussion and Findings A. Identical or Confusingly Similar
The dominant part of the disputed domain name comprises the word “lego”, which is identical to the registered trademark LEGO, a mark registered by the Complainant in and as part of numerous trademark registrations and domain names throughout the world. The use of the Complainant’s world renowned mark, LEGO as the initial four characters of the disputed domain name makes the disputed domain name confusingly similar to the Complainant’s trademark. Given its reputation, the impression conveyed by the Respondent’s use of LEGO mark is that the website resolving from the disputed domain name is in some manner authorized by or connected with the Complainant, which the Panel is satisfied is a completely false conclusion.
The addition of the suffix “sonic” does nothing to reduce the confusion of the similarity in the disputed domain name and the Complainant and its marks and products. It has no impact on the overall impression of the dominant part of the name, LEGO, instantly recognizable as a world famous trademark. In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488 it was stated that it is a long-established precedent that confusing similarity is generally recognised when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. The word “sonic” has come to be associated with speed and space: for example in the word “supersonic” to connote an aeroplane which can fly faster than the sound barrier. Its use as a suffix does not remove the confusion as to whether the disputed domain name is part of or has a connection to the Complainant’s business.
The Panel determines that the disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO. B. Rights or Legitimate Interests
There is no evidence that the Respondent has any rights to or legitimate connection with the mark of the Complainant or that the Respondent has rights or legitimate interests in the disputed domain name. The Respondent does not assert any such entitlement and the Panel finds that it has no rights or legitimate interests to use the mark LEGO in or in connection with its business or domain name. The Panel accepts the contention advanced by the Complainant that in circumstances where its mark is so well-known throughout the world, it is very likely that any use of it by the Respondent cannot be a bona fide use.
The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel accepts the evidence that on entering the website resolving from registration and the disputed domain name there are sponsored links displayed which redirect the user, upon clicking the html links, to different online shops where the Complainant’s products, as well as its competitors’ products, and other consumer products are offered. The inference which the Panel draws, in the absence of any response from the Respondent, is that the Respondent derives income to itself once a visitor clicks on the links. This is an example of bad faith use. Given the reputation of the LEGO brand around the world and in China and the unlikelihood of the Respondent selecting the disputed domain name for registration by chance the Panel infers that the registration of the site intended to draw income from the improper use of the connection to the Complainant was registration in bad faith.
In Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946, the panel stated,
“It follows from what has been said about legitimacy that the Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internauts to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).”
The Panel accepts the same logical inference applies in this case and finds both bad faith registration and use.
The Complainant has established that it attempted to make contact with the Respondent to encourage it to voluntarily give up the registration of the disputed domain name. No response was ever received to a series of attempts at obtaining a transfer of the disputed domain name, notwithstanding that the Complainant was generously prepared to offer compensation in the form of repayment of the Respondent’s expenses of registration and transfer fees (not exceeding out of pocket expenses).
In the circumstances the Panel is reinforced in its conclusion that the registration of the disputed domain name was undertaken in bad faith and the continued use of the disputed domain name is also 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 name be transferred to the Complainant.
David Levin Q.C.
Sole Panelist
Dated: September 4, 2011
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