The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is lanhongying of Taiyuan, Shanxi, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 10, 2012. On October 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 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.
On October 12, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On October 15, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit its comments.
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 October 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2012.
The Center appointed Jonathan Agmon as the sole panelist in this matter on November 20, 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 is a Denmark based company and is the owner and licenser of trademarks that are used in connection with the LEGO brands.
The Complainant has subsidiaries and branches throughout the world. The LEGO products are sold in more than 130 countries, including in China.
The Complainant and its affiliates own numerous trademark registrations for the mark LEGO. For example: Chinese trademark registration No. 75682 – LEGO, with the registration date of December 22, 1976; United States of America (“United States”) trademark registration No. 2245652 – LEGO, with the registration date of May 18, 1999; United States trademark registration No. 1018875 – LEGO, with the registration date of August 26, 1975; Community trademark registration No. 00039800 – LEGO, with the registration date of October 5, 1998, and many more.
The Complainant and its affiliates have also developed a formidable presence on the Internet and are the owners of numerous domain names consisting of the mark LEGO. For example: , , , , , , , and many more.
The disputed domain name was registered by the Respondent on April 8, 2012.
The disputed domain name leads Internet users to a website that offers information on “Lego education Center”. 5. Parties’ Contentions A. Complainant
The Complainant argues that the Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the United States during the year 1953 to identify construction toys made and sold by them.
The Complainant further argues that the revenue for the Complainant and its affiliates in 2009 was more than USD 2.8 billion.
The Complainant further argues that the LEGO mark is among the best-known trademarks in the world, due in part to decades of extensive advertising.
The Complainant further argues that the Complainant and its affiliates have expanded the use of the LEGO mark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant further contends that its LEGO mark is a well known mark, as defined by the Paris convention.
The Complainant further argues that the disputed domain name is confusingly similar to the Complainant’s LEGO mark. The Complainant contends that the addition of the suffix “ty”, which is an abbreviation of the city or province "Taiyuan”, is not relevant and will not have any impact on its overall impression.
The Complainant further argues that the Respondent is not commonly known by the name “Lego” or any variation thereof.
The Complainant further argues it had not licensed or otherwise permitted the Respondent to use its
LEGO trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent was aware of the Complainant when registering the disputed domain name, and that the disputed domain name was registered to divert Internet traffic from the Complainant’s website for commercial gain. The Complainant further contends that the Respondent is using the Complainant’s “LEGO Education” website in the disputed domain name without permission.
The Complainant further argues that the Complainant first tried to contact the Respondent on April 30, 2012 through a cease and desist letter, in which the Complainant requested the immediate transfer of the disputed domain name and offered compensation for the expenses of registration and renewal fees. The Complainant further contends that two reminders were sent on May 7 and May 30, 2012 and that the Respondent never replied.
The Complainant further argues that the Respondent is using the Complainant’s own photographs, images, marks and logos on the website under the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issue – Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“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.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this 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 abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
Upon deciding on the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain name consists of English letters, rather than Chinese characters or words;
b) The website under the disputed domain name displays the logo “Lego Education” in a prominent location and in English;
c) The website under the disputed domain name displays a copyright notice partially in English;
d) The Respondent did not object to the Complainant’s request that English be the language of proceeding.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its Decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant and its affiliates own numerous trademark registrations for the mark LEGO. For example: Chinese trademark registration No. 75682 – LEGO, with the registration date of December 22, 1976; United States trademark registration No. 2245652 – LEGO, with the registration date of May 18, 1999; United States trademark registration No. 1018875 – LEGO, with the registration date of August 26, 1975; Community trademark registration No. 00039800 – LEGO, with the registration date of October 5, 1998, and many more.
The disputed domain name differs from the registered LEGO trademark by the addition of the two letters “ty” and the generic Top Level Domain (gTLD) “.com”. The disputed domain name integrates the Complainant’s LEGO trademark in its entirety, as a dominant element.
The Panelists finds the addition of the letters “ty” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s LEGO trademark, as it may indicate a geographical location - Taiyuan, which according to a WhoIs search, is the Respondent’s residence, and a potential market for the Complainant’s products.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
And, “the addition of the geographical indicator “China” is insufficient to avoid confusing similarity as it is a non-distinctive element that is somewhat connected with the Complainant is markets its products in among other countries, in China. The most prominent element in the domain name is clearly the term “grundfos”, which lacks dictionary meaning in both English and Chinese, and may cause the public to view it as connected to the GRUNDFOS trademark.”(Grundfos A/S v. WangShuLi,WIPO Case No. D2010-1575; see also Wal-Mart Stores, Inc. v. Su Rong Ye,WIPO Case No. D2002-0771).
Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
Furthermore, the Panel finds that the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the
Complainant has not licensed or otherwise permitted the Respondent to use its LEGO trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.
The Panel finds no other basis on the evidence to conclude that the Respondent has any rights or legitimate interests in the disputed domain name, especially in light of the inclusion of the Complainant’s marks and images on the website at the dispute domain name without any disclaimers or other clarifying language.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Being Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant had owned a registration for the LEGO trademark since at least the year 1975. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate its trademark's goodwill. The Panel cites the following with approval; “The Respondent’s selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence… Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent’s registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.
Furthermore, previous UDRP panels have determined that incorporating a widely-known trademark, such as the Complainant’s LEGO trademark, as a domain name is a clear indication of bad faith (see Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441).
The disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Panel also notes that the Respondent failed to respond to the cease and desist letter and reminders that were sent by the Complainant. It is well established and accepted that failure to respond to cease and desist letters without legitimate reason may be further evidence supporting the inference of bad faith registration and use (Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022).
Finally, a review of the website under the disputed domain name shows the use of the Complainant’s trademark in association with goods similar or identical to the goods sold by the Complainant – interlocking bricks which can be assembled together to create structures, as well as links to third-party websites of a commercial nature.
In light of the Complainant’s highly distinctive and famous registered trademark, the Respondent’s use of a confusingly similar disputed domain name and the Respondent’s lack of response to the Complainant’s cease and desist letter, and in view of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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.
Jonathan Agmon
Sole Panelist
Dated: December 4, 2012
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