The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Anson’s studio of Guangzhou, China. 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 April 12, 2013. On April 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2013, 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 April 15, 2013, the Center received an email communication from the Complainant requesting suspension of the administrative proceeding. On April 19, 2013, the Center notified the suspension of the proceeding. On May 28, 2013, the Complainant requested the reinstitution of the proceeding. During the suspension, the Center was copied to several email communications from both parties.
On May 30, 2013, the Center sent an email communication to the Complainant inviting it to amend the Complaint indicating the correct Registrar of the disputed domain name. The Complainant filed an amendment to the Complaint on May 31, 2013.
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 May 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on June 21, 2013.
The Center appointed Keita Sato as the sole panelist in this matter on June 26, 2013. 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 limited company incorporated in Billund, Denmark. The Complainant has registered LEGO trademarks in many countries in class 28, including in Denmark on May 1, 1954 (registration number 604-1954), China on December 22, 1976 (registration number 75,682), and so on.
The disputed domain name was registered on January 24, 2013. 5. Parties’ Contentions A. Complainant
The Complainant requests transfer of the disputed domain name to the Complainant as a relief for its allegation of the Respondent’s bad faith. The Complainant’s allegation is based on three requirements of the Policy. Firstly, the dominant part of the disputed domain name comprises the word “lego” which is confusingly similar to the Complainant’s registered trademark LEGO. Trademark LEGO is registered in many countries, including China, and the fame of the trademark has been confirmed in numerous previous UDRP decisions, contended by the Complainant. Secondly, the Respondent has no rights or legitimate interests in the disputed domain name, since no license or authorization of any other kind has been given by the Complainant to the Respondent, and the Respondent could not claim no actual or contemplated bona fide or legitimate use of the disputed domain name. Thirdly, the Respondent should have known of the Complainant’s legal rights in LEGO at the time of the registration and it registered the disputed domain name in order to generate traffic to a website with sponsored links relating to LEGO. By using the disputed domain name, the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain, under the Complainant’s contention. The Complainant insisted based on these contentions, the Respondent registered and used the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The Panel notes that the Respondent sent emails to the authorized representative of the Complainant confirming transfer the disputed domain name. The first email, dated April 12, 2013, said “That you can transfer the domain”. The consecutive email dated April 23, 2013, said, “Yes, help me transfer domain, pls.” The third email dated May 16, 2013, said, “Hey, all, I said yes already. I don’t know how many confirm that I need! And NOW, here: “I agree the transfer.” ” Although these emails have been sent by the Respondent, the Respondent apparently failed to confirm transfer to the Registrar’s satisfaction. 6. Discussion and Findings
Before the discussion, the Panel considers whether the consent apparently demonstrated by the Respondent has an influence on the Panel’s findings. Prior UDRP panels stated that a panel may at its discretion order transfer of the domain name on the basis of the respondent’s unilateral and unambiguous consent on the record to the remedy sought by the complainant without examining substantive requirements of paragraph 4(a) of the Policy (see, paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). However, the Panel rather decides to proceed to a substantive determination of the merits, since the Respondent’s consent is ambiguous in the present case, and as explained in section 5B., the Respondent did not send a confirmation of its consent to the Registrar.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(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. A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s trademark LEGO. However, the Panel finds that the second level portion of the disputed domain name, namely “legobox”, is confusingly similar to the Complainant’s trademark LEGO, since it contains the Complainant’s trademark in its entirety adding a generic term to it. The panel in a prior UDRP decision stated, “[p]ast UDRP panel decisions have developed the principle that generic suffixes or prefixes added to a domain name which incorporates a trademark in its entirety does not serve to distinguish the domain name from the trademark.” (Prada S.A. v. Chen Zhan,WIPO Case No. D2011-1779 (finding confusingly similar to PRADA trademark)). And LEGO is a registered trademark which covers many countries, as explained section 4 above. In this present case, the Panel finds that the disputed domain name consists of the LEGO mark and a generic term. The Panel thus finds that the first element of the Policy is made out. B. Rights or Legitimate Interests
As the Complainant states in its Complaint, the Complainant has never given permission or authorization to the Respondent to use trademark LEGO, since the Complainant follows a strict policy that all domain names incorporating LEGO should only be registered by the Complainant and has made out a prima facie case that the Respondent lacks rights or legitimate interests. Under this circumstance, the Respondent has burden of production to demonstrate rights or legitimate interests, as such as the Respondent making a bona fide offering of goods or services (paragraph 4(c)(i) of the Policy). In this regard, several prior UDRP panels recognized the respondent may have, for the purpose of paragraph 4 of the Policy, a legitimate interest in the domain name even if the respondent has not been authorized to use a trademark for the domain name related matter (see, e.g., Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). However, such is not the case here, since the Respondent failed to submit any formal Response Taking into consideration the Respondent’s default and its circumstance, the Panel can infer that the Complainant’s allegations are true where appropriate to do so (see, Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009).
Accordingly, the Panel finds the second element of the Policy is made out. C. Registered and Used in Bad Faith
According to Annex 12 of the Complaint, the Panel notes that the Respondent sent an email to the Complainant dated February 20, 2013, which said “I am a LEGO fans from China, and I am a iOS developer. I want to make iOS app for LEGO Fans club, so I register this domain name.” The Complainant has registered LEGO trademark in many countries, including in China (the location of the Respondent) long before registration of the disputed domain name, as explained in Section 4 above. Under this circumstance, it is highly unlikely that the Respondent did not know about the trademark LEGO on the registration date of the disputed domain name. The Panel thus finds that the disputed domain name was registered in bad faith.
Also, the Panel finds that the Respondent uses it in bad faith. The Respondent’s website contains several links offerring LEGO products, such as “Cheap LEGO Bricks”, “LEGO Toys for Sale”, or related services (the screen shot of the website1 as provided in Annex 11 to the Complaint). The Panel finds that this conduct falls in the category that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship or affiliation of the Respondent’s website or a product on the Respondent’s website, and meets paragraph 4(b)(iv) of the Policy which shows an example of a use in bad faith. Normally, the website having sponsored links makes its revenue when Internet users click such links. It is highly likely that the aim of the Respondent’s website is to get such revenue. This also supports the Panel’s findings.
The Panel thus decides that the third element of the Policy is made out. 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.
Keita Sato
Sole Panelist
Date: July 10, 2013
1 The Complainant states in the explanation of Annex 11 that the sponsored links on the Respondent’s website were disabled after a cease and desist letter was sent. However, the Panel finds those links still functional on July 7, 2013.
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