The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Le Thi Kim Phuong of Hồ Chí Minh, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 10, 2012. On August 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2012, the Registrar 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 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2012.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on September 26, 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 is the owner of the LEGO trademark for construction toys and other products, which are sold in over 130 countries. The trademark LEGO is among the best-known trademarks in the world. The fame of the trademark has been confirmed in numerous prior UDRP decisions, including LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840 (”LEGO is clearly a well-known mark”) and LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680 (”LEGO is a mark enjoying high reputation as construction toys popular with children”). The Complainant owns numerous trademark registrations for the LEGO mark worldwide, including Registration Number 287.932 in Vietnam, the apparent country in which the Respondent resides. The Complainant and its licensees, through their predecessors, first used the LEGO mark in the United States of America to identify their construction toys in 1953. The disputed domain name was registered on May 22, 2012. 5. Parties’ Contentions A. Complainant
With respect to paragraph 4(a)(i) of the Policy, the Complainant alleges that:
The dominant part of the disputed domain name comprises the word “lego”, which is identical to the Complaint’s registered trademark.
The disputed domain name is confusingly similar to the Complainant’s world famous LEGO trademark. The addition of the prefix “thegioi” is not relevant and will not have any impact on the overall impression of the dominant part of the disputed domain name. The addition of the top-level domain (TLD) “.com” also fails to alter the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant in determining whether a confusing similarity exists between the LEGO trademark and the disputed domain name.
With respect to paragraph 4(a)(ii) of the Policy, the Complainant alleges that:
The Respondent does not have any registered trademark or trade name corresponding to the disputed domain name and has not been using the domain name in any way that would give him/her any legitimate rights in the name. The Complainant has given no license or authorization to the Respondent to use the LEGO trademark. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
As of August 10, 2012, the filing date of the Complaint, the Respondent was 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 the fame of the Complainant’s registered trademark in order to generate traffic to an online shop, which the Respondent maintains in Vietnamese but appears to offer competitive products. The links displayed connect to shopping sites for toys manufactured by the Complainant but also provide access to products offered by the Complainant’s competitors. Consequently, the Respondent is using the LEGO trademark in order to mislead Internet users to competitive commercial websites. 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”. Furthermore, the resulting website (at time of filing of Complaint) for the disputed domain name displays the stylized LEGO logotype.
The Respondent has no rights or legitimate interest in respect of the disputed domain name.
With respect to paragraph 4(a)(iii) of the Policy, the Complainant alleges that:
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 world.
The Complainant first tried to contact the Respondent on June 8, 2012 through a cease and desist letter requesting immediate transfer of the disputed domain name and offering compensation for the expenses of registration and renewal fees (not exceeding out of pocket expenses). No reply was ever received and reminders were sent on June 14, 2012 and June 19, 2012, respectively.
As stated earlier, the Respondent has chosen a domain name based on the goodwill of the registered LEGO trademark in order to generate traffic to the Respondent’s website where LEGO products and products from the Complainant’s direct competitors are sold. 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 the website(s). It is highly unlikely that the Respondent was not aware of the rights the Complainant owns in the LEGO trademark and the value of said trademark, at the time he/she registered the disputed domain name, particularly since the Respondent offers LEGO products.
Consequently, the Respondent should be considered to have registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; See paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”). 6. Discussion and Findings
A complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. (Policy, paragraph 4(a).) A. Identical or Confusingly Similar
Given the Complainant’s long-standing registrations and extensive use of the LEGO trademark both worldwide and particularly in Vietnam, the Panel finds that the Complainant has trademark rights in the LEGO mark.
The Panel also finds that the disputed domain name is nearly identical to or confusingly similar to the Complainant’s LEGO mark. The disputed domain name incorporates the Complainant’s entire trademark and differs from the Complainant’s registered LEGO mark only by adding what appears to be non-distinctive wording. It is well-established that the addition of generic or highly descriptive wording is “typically regarded as insufficient to prevent threshold Internet user confusion.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2. Prior UDRP panels have also consistently found that the mere addition of non-distinctive wording to well-known marks in domain names does not adequately alter the commercial impression of the domain name, and therefore will likely remain confusingly similar.
According to the Google® online language translation services, “the gioi LEGO” translates to “the world LEGO” or “LEGO world.” Although the Panel does not find the term “world” to be descriptive in connection with the Complainant’s goods, it is non-distinctive and does not alter the overall impression of the disputed domain name. See Burberry Limited v. Carlos Lim,WIPO Case No. D2011-0344 (“the addition of ‘world’ as a suffix to the BURBERRY mark … is not sufficient to dispel the confusing similarity between” the domain name, , and the BURBERRY mark); Harrods Limited v. Lawrence Colbert,WIPO Case No. D2008-1836 (“the disputed domain name [] incorporates a non-distinctive word and is confusingly similar to the Complainant’s trade marks.”).
The Panel accepts that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
In order for the Respondent to demonstrate rights or legitimate interests in the disputed domain name, it must show
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name. Further, the Complainant has never licensed or other otherwise permitted the Respondent to use its LEGO trademark or to apply for any domain name incorporating the mark. In fact, there is no known relationship between the Complainant and the Respondent.
With respect to 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate non-commercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services. In the present case, it is alleged that the Respondent is using the disputed domain name to generate traffic to an online shop with links to shopping sites for toys manufactured by the Complainant’s competitors as well as LEGO products.
It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a disputed domain name. National Construction Rentals, Inc. v. T, Inc.,WIPO Case No. D2009-0147. Because it is difficult to prove a negative assertion, the threshold is low. A complainant need only to make a prima facie showing on this element, at which point the burden shifts to the respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1. The ultimate burden of proof, however, remains with the complainant. Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141. The Panel finds that the above facts establish a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Moreover, the Respondent has not rebutted such a prima facie showing.
The Panel accordingly finds for the Complainant under the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant’s allegation of bad faith is not contested. Also, it is highly unlikely that the Respondent was unaware of the Complainant’s trademark rights when it registered the disputed domain name in 2012, when the LEGO mark has been continuously in use worldwide for more than 59 years prior thereto. Moreover, aside from the fact that the Complainant owns a registration for the LEGO mark in Vietnam, where the Respondent appears to reside, the Respondent certainly was aware of the Complainant’s trademark rights evidenced by the display of the LEGO mark on the resulting website and offering of LEGO products.
Under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Paragraph 4(b)(iv) of the Policy.
In the present case, it is alleged that the Respondent is using the disputed domain name to generate traffic to an online shop with links to shopping sites for toys manufactured by the Complainant’s competitors as well as LEGO products.
The Panel agrees that such action is evidence of bad faith registration and bad faith use. It is well-settled that the adoption of well-known trademarks without permission or rights therein, particularly when used to advertise competitive goods/services is evidence of bad faith registration and use. See Six Continents Hotels, Inc. v. Telmex Management Services,WIPO Case No. D2001-0996 (“the deliberate adoption of Complainant’s well-known trade marks without any apparent right or interest therein, raises a prima facie presumption of bad faith registration, and Complainant’s demonstrated use of the domain names to link to other [similar] service sites…demonstrates bad faith use”).
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore the Panel finds that the Complainant has proven the third and final element of 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 disputed domain name, be transferred to the Complainant.
Lawrence K. Nodine
Sole Panelist
Dated: October 10, 2012
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