The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Stockholm, Sweden.
The Respondents are Jiahong Zhu, of Guangdong, China and Domains By Proxy, Inc. of Scottsdale, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with GoD, Inc.. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2011. It requested that the Domain Name be transferred to the Complainant. The named Respondent was Registration Private, Domains by Proxy, Inc., based on a WhoIs search which listed the registrant organization as Domains By Proxy, Inc, and provided that that organization was located at DomainsByP, with a street address in Scottsdale, Arizona, USA. On November 2, 2011, the Center transmitted by email to GoD, Inc a request for registrar verification in connection with the Domain Name. On November 2, 2011 GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 3, 2011 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 November 3, 2011 listing Jiahong Zhu as Respondent.
The Center verified that the Complaint, together with the amendment to 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 sent the required documents to the addresses of the Respondents and the proceedings commenced on November 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 1, 2011.
The Center appointed Thomas L. Creel as the sole panelist in this matter on December 20, 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.
It is essential to dispute resolution proceedings that fundamental due process requirements are met. Such requirements include that a respondent has notice of proceedings that may substantially affect his or her rights. The Policy and Rules establish procedures designed to employ reasonably available means to achieve actual notice to a respondent. Thus, a respondent is to be given adequate notice of the proceedings initiated against him or her and a reasonable opportunity to respond.
The Panel notes that the notices were all sent to the correct addresses of both Respondents, but did not specifically include the name Domains By Proxy, Inc. as one of the addressees (but rather “DomainsByP”). The record shows, however, that delivery was made to the proper Scottdale, Arizona address for Domains By Proxy, Inc.. Furthermore, counsel for the Complainant, prior to filing the complaint, sent a cease and desist communication, and follow-ups, to the Respondent Domains By Proxy, Inc. at the e-mail address available from the WhoIs search report, which address was presumably supplied by that Respondent.
There is no record in the proceedings indicating that any of the communications to the Respondent Jiahong Zhu were delivered. Nevertheless, the notification procedures used were reasonably available means calculated to achieve actual notice and were the procedures set forth in the Policy and the Rules. That is enough for the Panel to exercise jurisdiction. It should be noted that a registrant is required to provide accurate locator information to the Registrar so that notification, such as attempted here, can be made. Furthermore, it has been determined that supplying false information can, itself, be additional evidence of bad faith. See Oxygen Media, LLC v. Primary Source,WIPO Case No. D2000-0362. 4. Factual Background
The Complainant LEGO Juris A/S is the owner of the trademark LEGO used in connection with LEGO brand construction toys and other LEGO branded products. The Complainant has licensees which are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in the United States and elsewhere (hereinafter collectively the “LEGO Group”). The LEGO Group has expanded the use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets
The LEGO Group, through their predecessors, commenced use of the LEGO mark in the U.S. during 1953. Their use of the LEGO mark has been extensive, exclusive and continuous since 1953. Over the years, the business of making and selling LEGO brand toys has grown substantially. The Complainant has subsidiaries and branches throughout the world. LEGO products are sold in more than 130 countries, including in the United States.
The 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. The LEGO trademark and brand have been recognized as being famous. The Complainant has registered the LEGO trademark throughout the world and is also the owner of more than 1000 domain names containing the term “lego”. The LEGO Group also maintains an extensive website under the domain name .
The Respondents’ Domain Name was registered on January 19, 2011. The Domain Name is currently connected to a website displaying sponsored links. The Complainant has alleged that it has not found that the Respondents have any registered trademarks or trade names corresponding to the Domain Name. It also asserts that no license or authorization of any other kind, has been given by the Complainant to the Respondents to use the trademark LEGO and that the Respondents are not authorized dealers of the Complainant’s products and have never had a business relationship with the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the mark LEGO is in possession of substantial inherent and acquired distinctiveness, is famous, is widely used around the world on a variety of products and is registered in many countries. It is otherwise contended that:
(i) the Domain Name is deceptively similar or identical to the Complainant’s mark;
(ii) the Respondents have no right or legitimate interests in the Domain Name; and
(iii) the Respondents registered and use the Domain Name in bad faith. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the dominant part of the Domain Name comprises the word “lego” and that word is identical to the registered trademark LEGO, which has been registered by the Complainant as a trademark in numerous countries around the world. LEGO is a famous trademark. This has been confirmed in previous UDRP decisions. See, e.g., LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840: “LEGO is clearly a well-known mark”.
The Panel finds that the addition of the suffix “-reg” does not make the Domain Name distinctive from the use of LEGO alone. LEGO is 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 recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. The same is true of the addition of the top-level domain “.info”. This addition does not have any impact on the overall impression of the dominant LEGO portion of the Domain Name.
In this Panel’s view, there may be considerable risk that the trade public will perceive the Domain Name either as a domain name owned by the Complainant or that there is some kind of commercial relationship with the Complainant. The trademark also risks being tarnished by being connected to the website. By using the trademark as a dominant part of the Domain Name, the Respondents exploit the goodwill and the image of the trademark, which may result in dilution and other damage to the Complainant’s trademark. Persons seeing the Domain Name, even without being aware of the content, are likely to think that the Domain Name is in some way connected to the Complainant.
The Panel finds that the Domain Name is identical or confusingly similar to a trademark or
service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant represents that it has not found anything that would suggest that the Respondents have been using LEGO in any way that would give them any legitimate interests or rights in the name. It has not itself given any right to use the LEGO mark to Respondents. As stated in Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.”
Nor is there a disclaimer on the website. This was stated by the panel as a factor in finding an absence of respondent’s legitimate interest in Dr.Ing. h.c. F. Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312.
The Respondents’ website displays sponsored links. Many of these have nothing to do with any LEGO products. This too has been previously found to be a factor showing non-legitimate use. See the WIPO case involving the LEGO trademark, LEGO Juris A/S v. J.h.Ryu, WIPO Case. No. D2010-1156 (“Further, Respondent’s use of the Disputed Domain Name to sponsor links to paid advertising is not use of the Disputed Domain Name in connection with a bona fide offering of goods or services”). This was also discussed in LEGO Juris A/S v. Jan Cerny,WIPO Case No. D2010-0707.
Based on the proof presented and in the absence of any contrary evidence at all, it is found that the Respondents registered the Domain Name to trade on the Complainant’s world famous trademark. This too is a factor in a showing of non-legitimate interest. See Drexel University v. David Brouda,WIPO Case No. D2001-0067. There the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.”
The Panel finds that the Respondents have no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Panel finds that LEGO is a well-known trademark worldwide and that thus the Respondents must have known of the Complainant’s legal rights in the name LEGO at the time of the registration. The fame of the trademark no doubt motivated the Respondents to register the Domain Name. The Respondents cannot claim to have been using LEGO without being aware of the Complainant’s rights to it. Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc., WIPO Case No. D2001-1314, established that any use of such a trademark in a domain name would violate the rights of the trademark owner. There the panel stated that "given the notoriety of the Complainant's Deutsche Bank Mark, any use which the Respondents would make of any domain name, as here, that incorporated the Complainant's Deutsche Bank Mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the Complainant has long held in its mark".
The Complainant first tried to contact the first Respondent through a cease and desist letter, in which that Respondent was informed that the unauthorized use of the LEGO trademark within the Domain Name violated the Complainant’s rights in the LEGO trademark. The Complainant requested a voluntary transfer of the Domain Name. No reply was received. Two reminders were thereafter sent before the Complaint was filed. The failure of a respondent to respond to a cease and desist letter, or a similar attempt of contact, has been considered relevant in a finding of bad faith, (see e.g. News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623; Nike, Inc. v. Azumano TravelWIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460).
The Domain Name is currently connected to a website containing sponsored links. Consequently, the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. Whether or not the Respondents have influenced what links should be included on the sites is irrelevant for the finding of bad faith. It is also without relevance whether or not the Respondents are actually receiving revenue from the pages. See, e.g., Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912, where the respondent claimed that the website was created by the registrar, that he had no knowledge of the content and that he had actually not received any
money from the website. The panel stated that “these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.” The Panel finds that these circumstances apply in this case as well.
Thus, the Panel finds that the Domain Name was registered and is being used in bad faith. 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.
Thomas L. Creel
Sole Panelist
Dated: January 3, 2012
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