The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Onliyou of Yiwu, China. 2. The Domain Name and Registrar
The 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 August 19, 2011. On August 19, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On August 19, 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.
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 August 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2011.
The Center appointed Richard Tan as the sole panelist in this matter on September 27, 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 is a corporation based in Denmark and is the owner of the LEGO trademark and other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products which it manufactures. It owns trademark registrations around the world including in China of the LEGO mark.
The Complainant's licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in China and elsewhere. The Complainant and its licensees and through their predecessors, commenced use of the LEGO mark in the United States of America during 1953, in relation to construction toys made and sold by them. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in China. The Complainant opened its flagship store in China at the World Shopping Mall in Beijing in September 2007. The Complainant has been present in China for 15 years.
It is also the owner of more than 1,000 domain names containing the term LEGO.
The disputed domain name was registered on April 6, 2011. The disputed domain name currently resolves to a website that offers an online shop where clothes, toys and other products are offered, including adult toys. The website also offers sponsored links to other websites. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the trademarks in which it has rights.
In respect of its rights, the Complainant relies on the trademark registrations it owns around the world including China and the long and extensive use of its trademark. It contends that its 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. It contends that the LEGO trademark and brand have been recognized as being famous. It relies on its recognition for instance, as number 8 of the most famous trademarks and brands in the world in the list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK.
It has also expanded its use of the LEGO trademark to other goods, such as computer hardware and software, books, videos and computer controlled robotic construction sets. It argues that it also maintains an extensive website under the domain name .
It contends that its mark has substantial inherent and acquired distinctiveness and should be regarded and has acquired the status of a well-known trademark which provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO goes far beyond toys and goods similar to toys.
In this case, the dominant part of the disputed domain name comprises the word LEGO, which is identical to the registered trademark LEGO, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world.
It also relies on for example, LEGO Juris A/S v. Song Jiapeng ,WIPO Case No. D2011-0788, in which the Panel considered the domain name as identical or confusingly similar to the LEGO trademark and held that the addition of numerals does nothing to minimise the risk of confusion.
The addition of the prefix “93” in the disputed domain name does not render the disputed domain name less confusing. It is not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO, which is instantly recognizable as a world famous trademark. It argues that various panelists have held that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes.
Further, the addition of the top-level domain “.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 the disputed domain name.
The Complainant’s trademark also risks being tarnished by being connected to the Respondent’s website.
It further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in the name. Consequently the Respondent may not claim any rights established by common usage.
It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
The Respondent registered the disputed domain name on April 6, 2011. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.
The Complainant contends that it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name LEGO at the time of the registration. It must have been the fame of the trademark that motivated the Respondent to register the disputed domain name.
The Respondent is also not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen the disputed domain name based on a registered trademark in order to generate traffic to an online shop where clothes, toys and other products are offered. Further, the site also offers adult toys. As the Complainant is a toy manufacture, this would be a severe situation for the Complainant. Also, there are advertisements and links to various other shopping sites, which are sponsored links. The use of the website to obtain revenue from sponsored links is not a bona fide use of the disputed domain name.
No evidence has been found that the Respondent uses the disputed domain name as a company name or has any other legal right in the name LEGO.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith.
It relies on all the circumstances mentioned above and argues that the Respondent is using the dispute domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. B. Respondent
The Respondent did not submit any formal Response to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Paragraph 14(b) of the Policy further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences,” from the Respondent’s failure to comply with the Rules, “as it considers appropriate.” While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed: see for example, The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; and Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827. A. Identical or Confusingly Similar
The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Based on the evidence adduced by the Complainant as noted above, this Panel has no hesitation in finding that the Complainant’s LEGO mark is a famous and well-known trademark and one in which the Complainant has rights.
The Panel also accepts that the disputed domain name is confusingly similar to the Complainant’s LEGO mark as well as the domain name registered by the Complainant.
The disputed domain name reproduces the well-known LEGO mark in its entirety. It merely includes numerals by incorporating the prefix “93.”
The Panel finds that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
In this Panel’s view, this threshold test is satisfied. The LEGO mark is instantly recognizable as the dominant or principal component of the disputed domain name. The Panel accepts the evidence of the Complainant that the mark LEGO has acquired widespread fame and reputation around the world and is a well-known and famous mark.
The addition of the prefix “93” in the disputed domain name does not prevent the disputed domain name from being regarded as confusingly similar to the LEGO trademark. (see for example, LEGO Juris A/S v. Song Jiapeng,WIPO Case No. D2011-0788, in which the Panel held that the domain name was identical or confusingly similar to the LEGO trademark and that the addition of numerals does nothing to minimise the risk of confusion).
This is similar to other cases in which generic terms have been added to trademarks and the panels in those cases have found confusing similarity. See for example Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367.
Neither would the presence of the top-level suffix “.com” be sufficient to escape a finding of substantial or confusing similarity, since that is a technical requirement of registration.
In this Panel’s view, the test of confusingly similarity is clearly satisfied. This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s trademark in which the Complainant has rights. B. Rights or Legitimate Interests
As several panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests and once such a prima facie case is made, the 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.
In the absence of a Response, the Panel is entitled to draw certain adverse inferences against the Respondent that it has no rights or legitimate interests. The Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The evidence is that the Respondent registered the disputed domain name on April 6, 2011, which was long after the Complainant began using its well-known LEGO mark in the Internet and had its trademarks registered around the world, including in China, where the Respondent appears to be based.
There is no evidence that the Respondent was using the disputed domain name prior to notice of this dispute in connection with a bona fide offering of goods or services.
There is also no evidence that the Respondent is or has been commonly known by the disputed domain name or that the disputed domain name is in any other way identified with or related to any rights or legitimate interests of the Respondent.
On the evidence, the Complainant is in no way associated or affiliated with the Respondent nor is there any relationship between the Complainant and the Respondent that could give rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s mark.
The Panel accepts the Complainant’s contentions that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent is using the website as an online store for the sales of various goods and which contains sponsored links. It is clear that the Respondent has intentionally chosen the disputed domain name based on a very well-known registered trademark in order to generate traffic to its website where clothes, toys and other products are offered. Further, the website also offers adult toys. As the Complainant is a toy manufacture, this Panel accepts the Complainant’s argument that the Complainant would have severe cause for concern and that this cannot be regarded as a bona fide use. Also, there are advertisements and links to various other shopping sites, which are sponsored links. The use of the website to obtain revenue from sponsored links is not a bona fide use of the disputed domain name.
The Panel accepts that the use of a mark with an intention to derive advantage from user confusion is not legitimate use and does not confer any rights in favor of the Respondent.
The Respondent has not filed any formal Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain name. In the absence of a Response, the Panel is entitled to draw certain adverse inferences against the Respondent, namely, that it has no rights or legitimate interests in the disputed domain name.
The Panel therefore accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and used in bad faith.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The undisputed evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorization to use the Complainant’s trademark or a mark similar thereto.
The Respondent registered the disputed domain name well after the Complainant’s mark was in use and became well-known. The Panel finds that the LEGO trademark was and is a well-known mark based on the evidence adduced by the Complainant, which the Panel accepts. It is highly improbable that given the reputation and fame of the LEGO trademark, the Respondent was unaware of it at the time of the registration of the disputed domain name. The Respondent’s choice of the disputed domain name which was so similar to the Complainant’s mark could only have been deliberate to derive unfair monetary advantage. The Panel accepts the evidence of the Complainant that the Respondent’s website contains an online store and sponsored links from which the Respondent would derive revenue.
Accordingly, absent any Response from the Respondent, the Panel accepts the evidence offered by the Complainant that the Respondent registered the disputed domain name which was deceptively and confusingly similar to the Complainant’s trademark so as to intentionally attract for commercial gain Internet users to the website, by intentionally misleading them and creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website. Such acts constitute bad faith registration and use.
The Panel also notes that, as found by other panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product suggests opportunistic bad faith: see for example Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562.
Although the Respondent was given an opportunity to respond to the Complaint, the Respondent has not submitted any evidence to rebut the Complainant’s claims and assertions. In the absence of such evidence, and based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) 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 disputed domain name be transferred to the Complainant.
Richard Tan
Sole Panelist
Dated: October 8, 2011
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