The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is cheng cheng of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Shanghai Yovole Networks, Inc. (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 Domain Name. On August 13, 2012, the Registrar 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 August 15, 2012 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 August 15, 2012. On August 15, 2012, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of proceedings. On August 15, 2012, the Complainant confirmed their request that English be the language of the proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
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 formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2012.
The Center appointed Karen Fong 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 a company based in Denmark and is the owner of the LEGO brand of construction toys and other “Lego” products. The Complainant has licensees who are authorized to exploit the Complainant’s trade mark rights in LEGO all over the world including China. The use of LEGO commenced in 1953 in the United States of America and this has been continuous since that date. The Lego Group of Companies earned revenue of more than USD 2.8 billion in 2009. Lego products are sold in more than 130 countries including China. The flagship store in China was opened in September 2007 at the World Shopping Mall in Beijing.
The Complainant has trade mark registrations for LEGO all over the world in a variety of classes since at least 1974. The Complainant is also the owner of more than 2,400 domain names containing the term “lego”. It maintains a website connected to the domain name . LEGO was recognized by Superbrands UK as the eighth most famous brand in the world. Panels have recognized LEGO as a well-known trade mark in many UDRP decisions.
The Domain Name was registered on December 12, 2011. It was initially registered in the name of a privacy service. After the Complaint was filed, it was revealed by the Registrar that the Respondent who appears to be Chinese is the underlying registrant. The Domain Name is not connected to an active website at the date of the Decision. It was connected to a Chinese website consisting of an online shop offering for sale a variety of products from clothing, watches, books and magazines, to beauty products and other fashion items. None of the goods offered for sale were appeared to be Lego products. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the LEGO trade mark; the Respondent has no rights or legitimate interests with respect to the Domain Name; and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith. B. Preliminary Procedural Issue – Language of the Proceedings
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceedings 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 proceedings. According to the information received from the Registrar, the language of the Registration Agreement is Chinese.
The Complainant submits in paragraph 10 of the Complaint that the language of the proceedings should be English. The Complainant contends that the Respondent has never responded to the Complainant’s cease and desist letter and subsequent reminders, ignoring all attempts to solve the issue amicably therefore making it necessary for the filing of the Complaint. It would therefore be cumbersome and to the Complainant’s disadvantage to be forced to translate the entire Complaint into Chinese.
Considering all these circumstances the Panel accepts the Complainant’s submission regarding the language of the proceedings. The Respondent has in its conduct shown no interest in engaging in this proceeding. Despite the Center’s emails explaining the proceeding in both English and Chinese, the Respondent has not shown any attempt to participate in the proceeding.
The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceedings. C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the name LEGO through use and registration that pre dates the Domain Name registration.
The Domain Name integrates the Complainant’s registered trade mark LEGO with the numerals “998” and the generic “.com” domain name suffix. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain name suffix. Further, the addition of the numerals “998” does not negate the confusing similarity encouraged by the Respondent’s complete integration of the LEGO trade marks in the Domain Name.
The Panel finds that the Domain Name is confusingly similar to the LEGO trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled. D. Rights or Legitimate Interests
The Complainant contends that the Respondent does not have any registered trade marks or trade names corresponding to the Domain Name. The Complainant has not given the Respondent any right or authorization to use the LEGO trade mark. The Respondent is not an authorized dealer of the Complainant’s products. Nor has it ever had a business relationship with the Complainant. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Panel finds the Domain Name has been used for a commercial website using a name based on a well-known registered trade mark with which it has intentionally chosen so as to mislead Internet users to the Website. From the above, the Respondent has not shown that it has rights or legitimate interests in the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
The LEGO trade mark has been used and registered long before the registration of the Domain Name. The LEGO trade mark is also one of the world’s best known trade marks. The Complainant opened its flagship store in China some time prior to the registration of the Domain Name. The Respondent either knew or ought to have known of the Complainant’s use and rights in the LEGO trade mark and the Panel is satisfied that the Respondent must have been aware of the Complainant’s mark when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant’s well-known trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Name is in bad faith. The website connected to the Domain Name was one which offered for sale non Lego products. There is a clear intention to the Panel 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 clearly bad faith under paragraph 4(b)(iv) 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.
Karen Fong
Sole Panelist
Dated: October 11, 2012
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