The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Zheng Zheng of Quzhou Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with T, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2013. On May 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 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.
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 June 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2013
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on July 17, 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
Evidence of registration certificates for the Complainant’s LEGO trademark in many countries around the world including China is attached to the Complaint.
The disputed domain name was registered on July 14, 2012. 5. Parties’ Contentions A. Complainant
The Complainant is the owner of the LEGO trademarks, and also of over 1000 domain names incorporating the mark LEGO. The Complainant asserts that it has subsidiaries and branches in more than 130 countries, including China. The Complainant contends that the LEGO trademark is among the most well-known in the world. Its use of the trademark has been expanded from toys to now also include computer hardware and software, books, videos and computer controlled robotic construction sets. In the list of the top 500 most famous brands for 2012 provided by Superbrands UK, which is attached to the Complaint, the LEGO trademark appears at number 31.
The Complainant contends that the inherent and acquired distinctiveness of the LEGO trademark and its status of well-known mark provide it with the right to prevent any use of LEGO or a confusingly similar denomination in connection with any products or services.
The Complainant contends that the dominant part of the disputed domain name is the mark LEGO, to which the disputed domain name is therefore confusingly similar. The fame of the LEGO mark has been confirmed in many previous Panel decisions, some of which are cited in the Complaint. The addition of “51” is of no consequence in terms of the recognition and overall impression of the disputed domain name according to the Complainant. The Complainant contends that it is well-established precedent that confusing similarity follows where generic terms are added to a well-known trademark in a domain named, and that there is a considerable risk that the trade public will perceive the disputed domain name either as owned by the Complainant or that some kind of commercial relationship with the Complainant exists. The Respondent is exploiting the goodwill of the Complainant and diluting the LEGO trademark in the process, according to the Complaint.
Further the Respondent does not own any trademarks or trade names corresponding with the disputed domain name, according to the Complainant’s searches, nor has the Respondent been using the disputed domain name in any manner that would give rise to rights or a legitimate interest. No license or authorization was granted to the Respondent by the Complainant, nor is the Respondent an authorized dealer or ever in any business relationship with the Complainant. According to the Complainant the Respondent cannot have been using the disputed domain name in ignorance of the Complainant’s rights, as the LEGO mark is famous, and therefore no rights or legitimate interests can vest in the Respondent. There is also no bona fide offering of goods or services by the Respondent, as the website to which the disputed domain name resolves offers it for sale. Accordingly, the Respondent is misleadingly directing internet users to a commercial website and consequently tarnishing the trademark LEGO. The Respondent is thus attempting to sponge off the Complainant’s famous LEGO trademark.
Further the Complainant asserts that the LEGO trademark is so famous around the world that third party domain name registrations comprising the trademark LEGO in combination with other words have grown substantially in the last few years. This is most likely due to the considerable value of the goodwill and reputation attached to the LEGO trademark. The Complainant’s letter and reminders to the Respondent requesting transfer of the disputed domain name and offering to meet expenses went unanswered, such failure to respond being a recognized indicator of bad faith. The construction page used by the Respondent currently offers the disputed domain name for sale, which is one of the enumerated instances of bad faith. In the circumstances, the Complainant contends that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s LEGO registered trademark. However, the LEGO trademark is distinctive and attracts substantial goodwill around the world, and is included as a prominent part of the disputed domain name. The addition of the generic numbers ”51”, in themselves meaningless in the context, neither creates a new word with an inherently different meaning nor does it do anything to detract from the suggestion inherent in the disputed domain name that there is some legitimate connection between it and the Complainant. Such a connection does not in fact exist.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark. B. Rights or Legitimate Interests
The Respondent is not known under the disputed domain name, nor does anything before the Panel indicate that it carries on any legitimate business under the disputed domain name or the term “51lego”. The Complainant has not authorized the Respondent to use the LEGO trademark in any way or to incorporate it in a registered domain name. The Respondent is also not a reseller or authorized dealer in LEGO products. The website to which the disputed domain name resolves does not engage in any form of business that could be considered legitimate; rather, the disputed domain name is there offered for sale, together with a list of other domain names. None of these facts are consistent with any rights or legitimate interests arising in the Respondent in relation to the disputed domain name. Rather, they are consistent with an illegitimate attempt to turn a domain name incorporating a well-known trademark with considerable goodwill to account in a manner that potentially damages the Complainant and detracts from its legitimate control of its well established trademark LEGO.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The LEGO trademark of the Complainant is inherently distinctive in relation to toys and the like, and has acquired very considerable goodwill over the years in many countries around the world. In the circumstances it is close to inconceivable that the Respondent should have registered the disputed domain name in ignorance of the Complainant’s LEGO trademark. The addition of the number “51” does nothing to detract from this conclusion, and the fact that the disputed domain name is offered for sale further implies that it was acquired in full knowledge of the Complainant’s trademark rights, which would have led the Respondent to expect some commercial gain from its potential on-sale.
Further, the fact that the disputed domain name, incorporating such a well-known and distinctive trademark is offered for sale, indicates that the disputed domain name is being used in bad faith. Nothing on the facts before the Panel suggests otherwise.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith. 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.
WiIliam A. Van Caenegem
Sole Panelist
Date: July 31, 2013
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