The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Le Thi Ngoc Yen of Au Co, Phuong Phu Trung, Quan Tan Phu, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 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 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2012. On August 25, 2012, the Center received an email communication from the Respondent stating: “Dear, I received your email, I agree not to use this domain and agree to transfer it. If there is any problems about transfer procedures, please inform to me soon. Thanks”. The Center informed the parties of such communication. The Complainant requested the suspension of the proceedings on August 31, 2012 and its re-institution on September 24, 2012. The new date for the Response was October 5, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on October 10, 2012.
The Center appointed Masato Dogauchi as the sole panelist in this matter on October 17, 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.
The Panel was originally required to render its decision by October 31, 2012 in accordance with Rules, Paragraph 15. However, the parties were notified that the due date for the decision was extended to November 23, 2012. 4. Factual Background
Whereas the Respondent has not submitted any contentions, the followings are found the factual background of this case.
The Complainant is a limited company incorporated in Denmark, with its principal place of business in Denmark.
According to the Registrar, the Respondent is a person who resides in Viet Nam.
This dispute concerns the disputed domain name identified , registered by the Respondent on January 17, 2012.
The Complainant is the owner of LEGO, and all other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in Viet Nam and elsewhere. The Complainant holds a Vietnamese trademark registration with No. 287.932.
According to the records of the present proceeding, at the date the Complaint was filed, the website at the disputed domain name was used to sell LEGO products as well as to include third parties websites. 5. Parties’ Contentions A. Complainant
The Complainant asserts as follows:
The Complainant and its licensees (collectively “the LEGO Group of Companies” or “the LEGO Group”), through their predecessors, commenced use of the LEGO trademark 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. By way of example, the revenue for the LEGO Group in 2009, was more than USD 2.8 billion. 2010 was another good year for the LEGO Group. Its global market share rose from 4.8% at the close of 2009 to approximately 5.9% at end of 2010. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Viet Nam.
The Complainant is also the owner of more than 2,400 domain names containing the term “lego”. It is the strict policy of the Complainant that all domain names containing the word “lego” should be owned by the Complainant. The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO trademark on all products, packaging, displays, advertising, and promotional materials. Indeed, the LEGO trademark and brand have been recognized as being famous.
The Complainant asserts in essence as follows:
(1) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights;
(2) The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name;
(3) The disputed domain name was registered and is being used in bad faith.
With regard to the item (1) above, the Complainant is the owner of the well known trademark LEGO. The disputed domain name is clearly confusingly similar to the Complainant’s registered trademark LEGO. The suffix “saigon” does not detract from the overall impression of the disputed domain name, it is rather fitted to strengthen the impression that the disputed domain name belongs to, or are affiliated with the Complainant and must therefore be considered to be confusingly similar with the Complainant’s trademark.
With regard to the item (2) above, the Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed 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 names. Consequently the Respondent may not claim any rights established by common usage.
With regard to the item (3) above, 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 awareness of the trademark LEGO is considered, in the whole community in general, to be significant and substantial. In addition, 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 trademark as to the source, sponsorship, affiliation or endorsement of the website. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. However, the Respondent sent an informal email communication on August 25, 2012 stating that “Dear, I received your email, I agree not to use this domain and agree to transfer it. If there is any problems about transfer procedures, please inform to me soon. Thanks”. 6. Discussion and Findings
According to the Rules, paragraph 15(a), a UDRP panel shall decide a case 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.
In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:
(1) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the dispute domain name;
(3) The disputed domain name has been registered in bad faith and is being used in bad faith. A. Identical or Confusingly Similar
The fame of the trademark LEGO is obvious to the Panel. It has been confirmed in numerous previous UDRP decisions. See LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840 (“LEGO is clearly a well-known mark”), Juris A/S v. Domain Administrator,WIPO Case No. D2010-1260 LEGO, (“In the present case, the disputed domain names incorporate the Complainant’s well-known registered trademark LEGO”), 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.”)
Furthermore, the suffix “Saigon” gives reference to the city in Viet Nam. In PepsiCo, Inc. v. QWO,WIPO Case No. D2004-0865, the panel discussed the insertion of the country name “Afghanistan” to the trademark “PEPSICO”; “in the Panel’s view, forming a domain name, such as the disputed domain name here, by appending a country name (here Afghanistan) to a complainant’s mark (here being “PEPSICO”) is completely insufficient to dispel user confusion from inevitably occurring. In fact, doing so very likely exacerbates rather than ameliorates the confusion. The simple reason is that, given well-known and widely followed naming conventions in forming domain names, Internet users in a given country or who have an interest in that country and desire to reach a website of a corporation or other entity operating in that country would likely think to construct a domain name by simply appending the name of the country to the name or mark associated with that corporation or entity followed by the general commercial gTLD “.com”.”
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 determine the confusing similarity between the Complainant’s trademark and the disputed domain name.
The Panel therefore finds that the disputed domain name is confusingly similar to the trade mark in which the Complainant has rights. Paragraph 4(a)(i) of the Policy is accordingly satisfied. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests.
It is not found that the Respondent has rights or legitimate interests in respect of the dispute domain name. If not, the Respondent should have submitted evidence to show its interests. In his communication of August 25, 2012 the Respondent stated that “Dear, I received your email, I agree not to use this domain and agree to transfer it. If there is any problems about transfer procedures, please inform to me soon. Thanks”. This is further evidence of the Respondent’s lack of rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(a)(ii) of the Policy is accordingly satisfied. C. Registered and Used in Bad Faith
In consideration of the fame of the Complainant’s trademark, 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 found that the Respondent is using the disputed domain name in order to generate traffic to an online shop which is maintained in Vietnamese. The links displayed connects to shopping websites for toys manufactured by the Complainant and it also displays links to third party websites. By doing this, the Respondent is using the LEGO trademark and misleading Internet users to commercial web sites.
The Panel therefore finds that the disputed domain name has been registered in bad faith and is being used in bad faith. For this reason, the Panel finds that paragraph 4(a)(ii) of the Policy is accordingly satisfied.
Accordingly, all three cumulative requirements as provided for in the Policy, paragraph 4(a), are determined to be satisfied. 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.
Masato Dogauchi
Sole Panelist
Date: November 15, 2012
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