Complainant is LEGO Juris A/S, Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Stockholm, Sweden.
Respondent is lolimoe, Foshan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2011. On November 18, 2011, the Center transmitted by email to FastDomain, Inc a request for registrar verification in connection with the disputed domain name. On November 19, 2011, FastDomain, Inc. transmitted by email to the Center a partial verification response, and on November 23, 2011, a further verification response, confirming that Respondent is listed as the registrant and providing Respondent’s 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 Respondent of the Complaint, and the proceedings commenced on November 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 23, 2011.
On January 6, 2012, the Center reminded the registrar of its obligation under Paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy to retain control of the domain name pending the outcome of the UDRP proceeding notwithstanding the domain name’s scheduled February 21, 2012 expiration date. The Registrar responded, on January 11, 2012, confirming its obligation and reporting that the registration had been extended out by one year.
The Center appointed Seth M. Reiss as the sole panelist in this matter on January 27, 2012. 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
Complainant is LEGO Juris A/S, a limited company incorporated in Denmark with its principal place of business in Billund, Denmark. Complainant claims ownership of the LEGO mark in respect to construction toys and other LEGO branded products. According to Complainant, it first used the LEGO mark in the United States in 1953. Over the years sales of LEGO branded toys have grown remarkably to more than US $2.8 billion in 2009. Complainant has subsidiaries and branches throughout the world and LEGO branded products are sold in more than 130 countries, including in China. Complainant’s LEGO branded products have been sold in China for 15 years and Complainant opened its flagship store in China in September 2007.
Complainant has had registrations for its LEGO mark for toys and related products in the United States, since 1975, throughout the European Community since 1996, and in China since 2006. Complainant is also the owner of more than 1000 domain names containing the term LEGO. The LEGO brand was ranked as number eight worldwide among the most famous brands according to the Superbrands UK top 500 Superbrands survey for the years 2009-2010.
Respondent is an individual or company going by the name of Iolimoe and having an address in Forshan, China. Respondent registered the disputed name on February 21, 2011, for a period of one year.
On March 31, 2011, Complainant wrote Respondent a cease and desist letter offering to reimburse Respondent its expenses in exchange for the transfer of the disputed domain name. Respondent responded, on April 4, 2011stating it did not understand English and requesting details regarding the reimbursement on offer. Complainant replied, with a Chinese translation, and also sent a reminder letter on May 13, 2011, but received no further correspondence from Respondent.
Appended to the complaint are print outs taken on November 17, 2011 of a Chinese language website pointed to by the domain name that exhibits the LEGO mark in a non-authorized logotype, and that contains images of LEGO construction toy figures in the background. The pointed to website, “www.”, contained links to English language sites that offer LEGO products as well as other products, including high end brand watches with descriptions such as “replica watches”, suggesting the products might not be authentic.
The disputed domain name continued to point to the same Chinese language website when checked by the Center following the filing of the complaint in this case. By the time this Panel was appointed, the disputed domain name pointed instead to a promotional page for Bluehost, a hosting company affiliated with the FastDomain registrar. 5. Parties’ Contentions A. Complainant
Complainant contends that it is the owner of the well known and famous trademark LEGO, that Respondent’s domain name is confusingly similar to Complainant’s registered LEGO trademark, and that the prefix “our” and suffix “.com” does not detract from the overall impression or serve to distinguish the domain name from Complainant’s famous LEGO mark. Complainant further contends that Respondent has never been given permission to use Complainant’s LEGO mark in the disputed domain name or otherwise, Respondent is not an authorized licensee of Complainant and there is no other basis by which Respondent might establish some right or legitimate interest in respect of the domain name. Finally, Complainant submits that Respondent is using the disputed domain name in bad faith in that Respondent could not have been unaware of Complainant and its LEGO mark when Respondent registered the domain name, and because Respondent was using the disputed domain name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s LEGO mark.
By way of remedy, Complainant requests that the disputed domain name be transferred to it. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
2) the respondent has no rights or legitimate interests in respect of the domain name; and,
3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has provided more than sufficient evidence demonstrating that it holds valuable rights in the LEGO mark and brand. Registrations generally satisfy the requirement of establishing that a complainant has rights in the registered mark, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 21.1, and Complainant has numerous registrations dating back to 1975. In addition, the fame of the LEGO trademark has been commented upon by several previous panels. LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator,WIPO Case No. D2010-1260; LEGO Juris A/S v. Reginald Hastings Jr ,WIPO Case No. D2009-0680.
The addition of a generic or descriptive term to a trademark is normally insufficient in itself to avoid a finding of confusion. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 1.9. In the context of a famous mark, it is well established that the addition of generic or descriptive terms fail to distinguish the resulting domain name from the mark or dispel the resulting confusion. Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja,WIPO Case No. D2000-1409. Panels have long held that the addition of the gTLD suffix is irrelevant in an examination of confusing similarity. Credit Management Solutions, Inc. v. Collex Resource Management,WIPO Case No. D2000-0029. That the LEGO mark is fanciful and highly distinctive renders it even less likely that the addition of words to the term “lego” in the context of a domain name could lessen the likelihood of confusion between the domain name and Complainant’s mark.
The Panel finds that the domain name at issue is confusingly similar to the LEGO mark in regard to which Complainant has rights, and that the first element of Paragraph 4(a) of the Policy has been established. B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, 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 UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case, Complainant has alleged that Respondent has no rights or legitimate interests in the domain name at issue. Respondent is not an authorized dealer of Complainant’s products, has never had a business relationship with Complainant, and is not otherwise authorized by Complainant to use Complainant’s LEGO mark. This establishes a prima facie case and shifts the burden to Respondent to demonstrate rights or legitimate interests in the domain name. Sony Kabushiki Kaisha v. S,WIPO Case No. D2000-1074. By not submitting a response, Respondent has failed to invoke some circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that Respondent holds some right or legitimate interest in the disputed domain name. Ahead Software AG v. Leduc Jean,WIPO Case No. D2004-0323.
Respondent was clearly aware of Complainant and its LEGO mark at the time Respondent registered the domain name. This is demonstrated by Respondent’s imitation of the LEGO logotype and use of LEGO product images on the “www.” Chinese language website pointed to by the domain name. Being aware of Complainant and its famous LEGO mark at the time the disputed domain name was registered renders it that much more unlikely that Respondent would be able to demonstrate some right or legitimate interest in respect of the disputed domain name. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.,WIPO Case No. D2001-1314.
The Panel finds that respondent has no right or legitimate interest in respect of the disputed domain name and that the second element of the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy is plainly implicated by the facts of this case. As explained above, Complainant’s mark is very well known internationally. Also as explained above, that Respondent was aware of Complainant and its LEGO mark when it registered the disputed domain name is established by Respondent’s use of a simulated LEGO logotype and LEGO toy figures on its “www.” website homepage. These circumstances demonstrate that Respondent undoubtedly registered the domain name at issue to profit from the recognition value of Complainant’s LEGO mark.
Moreover, where a domain name “is so obviously connected with such a well-known product[,] its very use by someone with no connection with the product suggests opportunistic bad faith”. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra.
Respondent’s “www.” website contained prominent links that took the Internet user to websites offering for sale and selling non LEGO products. This demonstrates a clear intention on the part of Respondent to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its LEGO mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and/or the products being offered on or through the website. Such conduct establishes both bad faith registration and bad faith use for purposes of the third element, Paragraph 4(a)(iii), of the Policy. Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946. The same conclusion was reached on similar facts in LEGO Juris A/S v. Song Jiapeng,WIPO Case No. D2011-0788 ().
Insofar as the Panel is satisfied that the domain name was registered and is being used by Respondent in bad faith, the third and final element of Paragraph 4(a) of the Policy has been established. 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 Complainant.
Seth M. Reiss
Sole Panelist
Dated: February 7, 2012
Full & Egal Universal Law Academy