The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Yangteng of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2012. On March 22, 2012, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On March 23, 2012, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 23, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On March 23, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
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 March 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2012.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on May 4, 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
The Complainant LEGO Juris A/S, based in Denmark, is the owner of the LEGO trademark, and all other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products.
The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the United States of America during 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown remarkably. The revenue for the Complainant and its licensees in 2009, was more than USD 2.8 billion. The Complainant also has subsidiaries and branches throughout the world, and Lego products are sold in more than 130 countries, including in China.
The Complainant is the registrant of more than 2,400 domain names containing the term “Lego”, among these . The Complainant claims that it is the policy of the Complainant that all domain names containing the word “Lego” should be owned by the Complainant.
As a result of decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials, the trademark LEGO is a well-known mark throughout many countries in the world and it has been recognized as a well-known mark in case authorities and brand ranking agencies.
The Complainant and its licensees have expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. It also maintains an extensive web site under the domain name .
The disputed domain name was registered on April 8, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The reasons are as follows:
1. The Complainant asserts that it is the owner of LEGO trade marks in numerous classes and in numerous countries including China.
2. The dominant part of the 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.
3. The fame of the trademark has been confirmed in numerous previous UDRP decisions; See e.g. LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator,WIPO Case No. D2010-1260; and LEGO Juris A/S v. Reginald Hastings Jr., WIPO Case No. D2009-0680.
4. The disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO. The prefix “house” is inconsequential to determine the similarity to the trademark. 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 the determination of the confusing similarity between the trademark and the disputed domain name. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark LEGO there is a considerable risk that the public will perceive the disputed domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. The trademark also risks being tarnished by being connected to the website at the disputed domain name. Persons seeing the disputed domain name, even without being aware of the content, are likely to think that the disputed domain name is in some way connected to the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:
1. There is no evidence to suggest that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. There is also no evidence that would suggest that the Respondent has been using the term “lego” in any other way that would give them any legitimate interests in the name. Thus, the Complainant contends that the Respondent may not claim any rights established by common usage.
2. It is clear that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO. Furthermore, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
3. The disputed domain name was registered on April 8, 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.
4. It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the trademark LEGO at the time of the registration. It is the Complainant’s contention that the fame of the trademark LEGO has motivated the Respondent to register the disputed domain name and thus, the Respondent cannot claim to have been using LEGO, without being aware of the Complainant’s rights. This, among other facts, proves that the Respondent’s interests cannot have been legitimate.
5. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Complainant contends that the Respondent has intentionally chosen domain names based on a registered trademark in order to generate traffic to their own commercial site. The website provides sale of various products such as televisions, bicycles, kitchens, and links to e.g. Baidu which is a Chinese web service company. In so doing, the Respondent is misleading Internet users to a commercial web site.
6. A reseller or distributor can be considered to be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements including: (1) the use of the website to sell only the trademarked goods and (2) the website’s accurate and prominent disclosure of the registrant’s relationship with the trademark holder. In the current case it is clear that the Respondent is not selling goods with the Complainant’s trademark and does not have any disclaimer on the web site. Therefore the Respondent does not fall within the fair use of the Policy.
7. There is no evidence that the Respondent uses the disputed domain name as a company name or has any other legal right in the name “Lego”.
The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:
1. The Complainant’s trade mark LEGO is famous worldwide. It is the Complainant’s contention that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. The LEGO trademark is a distinctive coined word with no apparent ordinary meaning other than the Complainant’s trademark. Given the recognized notoriety of the Complainant’s trademark and the registered rights in the trademark and effective constructive notice of these rights in China, and the Complainant’s presence in China, the Respondent must have been aware of the Complainant’s trademark rights when registering the disputed domain name.
2. There is no connection between the Respondent and the Complainant. By using the disputed domain name the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain.
3. The Respondent is not an authorized reseller of the Complainant’s Lego products and has not added a disclaimer to explain the non-relationship with the Complainant. In fact, no Lego related products are sold on the website upon which the disputed domain name resolves. The Complainant contends that the use of sponsored links to e.g. , and , could be a factor indicating bad faith as the disputed domain name was used for the purpose of attracting Internet users to the Respondent’s website in order to generate pay-per-click advertising revenues. Consequently, the Respondent is using the disputed 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. Pursuant to the Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:
1. The Complainant has sent the cease and desist letter in English, and the Respondent did not answer or reply to the issues raised in the letter, or state that he did not understand the content. If the Respondent had not understood the content of the cease and desist letter, he should have sent a short email stating that he did not understand the content of the letter and seek clarification. Instead, the Respondent has ignored all attempts to solve this issue amicably.
2. It would be cumbersome and to the Complainant’s disadvantage to be forced to translate the entire Complaint into Chinese. Moreover, the disputed domain name comprises the trademark LEGO and the English word “house” so the disputed domain name could be seen to target an English speaking audience.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel agrees with the Complainant that if the Respondent had experienced difficulty with the English language, he could have communicated this to the Center and the Panel will rule accordingly. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following Policy elements are satisfied:
1. the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the LEGO mark in numerous classes of goods in many countries in the world. Furthermore, the Panel finds that the Complainant has rights in the LEGO mark registered in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant’s LEGO mark is a well known mark for construction toys made and sold by the Complainant. Over time, the Complainant has expanded its use of the LEGO trademark to, amongst other things, computer hardware and software, books, videos and computer controlled robotic construction sets. The Panel finds that the Complainant has rights and continues to have such rights in the relevant LEGO mark.
In assessing the degree of similarity between the Complainant’s trade mark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.
The disputed domain name consists of Complainant’s mark LEGO in its entirety coupled with a prefix in the form of the descriptive word “house” followed by the top level domain suffix “.com”. The most prominent and distinctive part of the disputed domain name is the word “lego” which is identical to the Complainant’s registered trademark. Given the fame and notoriety of the Complainant’s LEGO mark, the addition of the descriptive word “house” as a prefix does not provide sufficient distinction from the Complainant’s mark. Furthermore, it is also an accepted principle that the addition of suffixes such as “.com” or “.net” being the generic top-level domain is not a distinguishing factor.
Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant’s LEGO mark as a result of its fame and notoriety; (b) the distinctive character of the Complainant’s LEGO mark; and (c) the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the LEGO mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1. the Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “houselego” in its business operations;
2. there was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the LEGO mark;
3. there is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;
4. the Complainant and its LEGO mark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in the construction toys sector and is a registered trade mark in many countries all over the world, including China. Consequently, in the Panel’s opinion, in the absence of contrary evidence from the Respondent, the LEGO mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Panel finds the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him or her. In particular, the Respondent has failed to make submissions to demonstrate that he or she has rights to or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by the respondent in the appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trade mark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. Taking into account the worldwide reputation of the Complainant and its LEGO mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trade mark rights at the time of the registration of the disputed domain name. Furthermore, the Complainant has established a substantial presence in the Internet. It is the owner of more than 2,400 domain names containing the term “Lego” and maintains an extensive web site dedicated to the Chinese market under the domain name . A simple search on the Internet would reveal the presence of the Complainant’s trade mark and domain name. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trade mark and where the mark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. In fact, no Lego related products are sold on the website. In this regard, the Panel finds that the Respondent has not provided any plausible explanation.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website under paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant’s LEGO mark and a lack of plausible explanation for the choice of incorporating the Complainant’s famous mark in the disputed domain name, the use of sponsored links by the Respondent to , and , is a relevant factor indicating bad faith. The lack of response from the Respondent in explaining and defending the registration and use of the disputed domain name when contacted by the Complainant requesting for a transfer of the said domain name is a further indication of bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test. 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.
Susanna H.S. Leong
Sole Panelist
Dated: May 18, 2012
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