The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is zhang dengfeng of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name (the “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 30, 2012. On March 30, 2012, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the Domain Name. On April 1, 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 April 2, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On April 3, 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 April 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2012.
The Center appointed Douglas Clark as the sole panelist in this matter on May 10, 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.
Language of the Proceedings
The Registration Agreement of the Domain Name being in Chinese, pursuant to Rules, paragraph 11, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement, i.e. the default language of the proceedings shall be Chinese. However, the Complainant submitted a request for English or alternatively, Chinese and English be the language of the proceedings on the grounds that 1) warning letters had been sent in English and no response received (citing Mammut Sports Group AG v. Deminzheng,WIPO Case No. D2011-0475) and 2) one factor to be considered by the Panel was the expense and time to be incurred in translating the Complaint.
The first reason is, in this Panel’s view, not satisfactory. This Panel notes in Mammut Sports Group AG v. Deminzheng, supra. there were other factors, not least that the website under the domain name was written in English to justify using English as the language of proceedings.
However, in this case, the Center has provided both parties with an opportunity to comment on the language of the proceedings by sending both parties a consolidated Language of Proceeding notification. The Complainant has provided submissions in its Complaint regarding the proper language of proceedings, while the Respondent did not raise any objection or reply thereto. This Panel concluded in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191:
“A Respondent’s failure to respond to these notices should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint [. . .] a clear default by a Respondent who has been informed in their own language of the proceedings, and of the preliminary acceptance of the Complaint in a particular language, would certainly be a strong factor in support of a Panel subsequently determining that there should be consistency between the language of the Complaint as originally accepted and the language of proceedings as ultimately determined by the Panel [. . .] a default by the Respondent after having been notified of the proceedings and being requested to comment or object to the language request should be a strong factor for the Panel to proceed in line with the Center’s decision on language.”
Considering that both parties have been given fair opportunities to present their cases and the Respondent has been given an opportunity to object to the proceedings being conducted in English but has not responded, the Panel finds that in the circumstances of this case, it would be unfair on the Complainant to translate the Complaint into Chinese. In the circumstances of this case, the Panel determines that English shall be the language of the proceedings. 4. Factual Background
The Complainant, based in Denmark, is the owner of LEGO, and other trademarks used in connection with the famous 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 (“United States”) 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. By way of example, the revenue for the Lego Group in 2009, was more than USD 2.8 billion. 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 a flagship shop in Beijing in 2007.
The Complainant is also the owner of more than 2,400 domain names containing the term ”lego”.
The Domain Name was registered in April 2011. Until recently, the Domain Name resolved to a page, which provides links to various “lifestyle products”, including electronic cigarettes and breast implants. 5. Parties’ Contentions A. Complainant Identical or confusingly similar
The Complainant contended 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, including in China.
The Complainant is the owner of the trademark LEGO. The Domain Name in question is clearly confusingly similar to the Complainant’s registered trademark LEGO. The suffix “61” does not detract from the overall impression and the Domain Name must therefore be considered to be confusingly similar with the Complainant’s trademark. No rights or legitimate interests
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the 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.
No license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, the panel stated that, “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.” The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. This was stated by the panel as a factor in the finding of non-legitimate interests of the respondent in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312. Registered and used in bad faith
The trademark LEGO in respect of toys belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world.
The website under the Domain Name is clearly commercial and by use of the Domain Name there is a clear intention to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s LEGO mark as a source, sponsorship, affiliation or endorsement. This is bad faith under paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint.
Under paragraph 4(a) of the Policy, the Complainant must prove the following three elements in order to make out a successful case:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has registered trademark rights in the trademark LEGO.
The Respondent has registered the Domain Name, which merely adds the number “61” to the trademark LEGO. The addition of the number “61” which does not appear to have any particular purpose and as such does not detract from the similarity of the Domain Name to the Complainant’s registered trademark.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s registered mark LEGO.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Domain Name was registered in 2011, after the Complainant registered its trademarks. The Respondent is not known by the Domain Name and has never been authorized by the Complainant to use the registered marks. The Panel notes that on the website that previously resolved to the Domain Name the Respondent used the name “乐购61”. The characters “乐购” are written “legou” in Pinyin, the standardized romanisation of Mandarin Chinese.
The Respondent has, however, not provided evidence of the type specified in paragraph 4(c) of the Policy giving rise to rights or legitimate interests in the Domain Name, nor has it sought to justify the use made in any way.
The Panel is satisfied from the evidence filed that the use made by the Respondent of the Domain Name is not bona fide, and cannot give rise to rights or legitimate interests on the part of the Respondent under paragraph 4(a) of the Policy.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Domain Name was registered long after the Complainant registered its trademarks and commenced use of the trademark LEGO worldwide, including China. This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel accordingly finds that the Domain Name was registered and is being used in bad faith.
Accordingly, the Complainant has satisfied the third element under paragraph 4(a) 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 Domain Name be transferred to the Complainant.
Douglas Clark
Sole Panelist
Dated: May 25, 2012
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