The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Leo Wang of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on June 14, 2013. On June 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 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 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2013.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on July 18, 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 is the owner of the registered trademark LEGO, and attaches proof of registrations of that trademark in a large number of countries to the Complaint. The Complainant registered the LEGO trademark in China in 1994 (Registration No. 3850443).
The disputed domain name was registered on March 20, 2013. 5. Parties’ Contentions A. Complainant
The Complainant asserts that its licensees are authorized to exploit its rights in the LEGO trademark in China and in other countries. The Complainant and its licensees have used the LEGO trademark in the United States of America since 1953 in relation to construction toys. The revenue of the Complainant in 2009 was more than USD 2.8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in China. According to the Complainant, LEGO has been present in China for 15 years and its flagship Chinese store was opened in the World Shopping Mall in Beijing in September 2007. The Complainant also asserts that it owns more than 2,400 domain names incorporating the LEGO trademark, and its aim is to own all domain names that incorporate the trademark. The Complainant asserts that it has for decades engaged in extensive advertising in relation to the LEGO trademark, and that the LEGO trademark is famous, being listed at number 8 in the list of brands provided by Superbrands UK for 2009/2010.
Further, the Complainant asserts that the LEGO trademark is a well-known mark and therefore protected against any confusing use even in connection with unrelated goods or services.
Further the Complainant contends that the disputed domain name is confusingly similar to the LEGO trademark, which is incorporated within it as its dominant part. According to the Complainant it is well established that a disputed domain name that incorporates a wellknown and distinctive trademark is confusingly similar to that trademark. The Complainant asserts that any person who sees the disputed domain name will mistake it for a name of the Complainant, and that the likelihood of confusion includes an obvious association with the trademark of the Complainant. The Complainant contends that there is a considerable risk that the trade public will perceive the disputed domain name as either the property of the Complainant or that there is a commercial relationship with the Complainant. The Complainant contends that by using the trademark as the dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of its LEGO trademark.
Further, the Complainant asserts that it has not found that the Respondent has any registered trademarks or business names that correspond with the disputed domain name, or that the Respondent has used the disputed domain name in any manner that would give rise to rights or legitimate interests. The Respondent has not been authorized or licensed in any way by the Complainant, nor is the Respondent an authorized dealer. The mere registration of a domain name does not give rise to such rights or interests.
Further the Complainant asserts that the Respondent does not use the disputed domain name for a bona fide offering of goods or services, but rather to display sponsored links to “A” online toy sales. Nor does the Respondent qualify according to the Oki Data principles. Even though the Respondent is not an authorized reseller, if the principles were nonetheless applied to the present facts, the Respondent would fail to comply, as the real relationship with the Complainant is not displayed, and the relevant website has links to another website where competing products are also offered, including unrelated products. Furthermore the Complainant asserts that the Respondent uses the disputed domain name for commercial gain, in the form of sponsored links, which does not amount to bona fide use.
Further, the Complainant asserts that the LEGO trademark is wellknown or famous around the world, which partly explains the recent rise in unauthorized registrations of domain names incorporating it. The Complainant also asserts that it contacted the Respondent requesting transfer of the disputed domain name with refund of expenses, and sent several reminders, but did not receive any reply. Failure to respond to such letters has been construed as evidence of bad faith in earlier Panel decisions, according to the Complainant. Consequently, the Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to the relevant website, by creating a likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation or endorsement, according to the Complainant.
It is irrelevant, the Complainant contends, that the Respondent itself is not obtaining revenue from selling products at the website. The Respondent need not reap the benefits of its actions itself for bad faith to be established, and in any case was in control of the contents of the website concerned, according to the Complainant. This has been held by past panels, such as in Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912. 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 trademark. However, it incorporates the trademark in its entirety and as its most prominent first part. The addition of “pic” is simply the addition of a generic term, which would most likely be understood to be shorthand or ordinary usage for the word “picture”. The addition of this term does not dispel the suggestion of some legitimate connection between the disputed domain name and the Complainant. The terms “lego” and “pic” do not combine to form an existing real word of the English language with its own inherent meaning or significance. The LEGO trademark is also distinctive and has been known around the world for many years as a brand for toys.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark. B. Rights or Legitimate Interests
This Panel is satisfied that the Respondent is not known by the name ”legopic”, or ”www.”, nor is there any evidence before the Panel that it does any legitimate business by reference to the name ”legopic”, or owns trademarks or business names of that description. The Complainant asserts that the Respondent has not been authorized or licensed to use its LEGO trademark or incorporate it in any domain name. The Respondent is also not an authorized reseller or vendor of LEGO products. The website to which the disputed domain name resolves makes available Lego products and also other products for purchase via “www.a”. When accessed by the Panel the central panel of the website listed hyperlinked “lego” product numbers and selected “lego” product descriptions with prices and a “Buy from amazon” -button against a prominent background of colorful “lego” blocks, with the words ”lego pictures” in small print at the top. Thus the disputed domain name and the associated website at the disputed domain name give the false impression of being that of the Complainant or an authorized reseller or licensee of the Complainant. Causing a false and misleading representation such as this is not apt to vest rights or any legitimate interests in the Respondent. Rather it represents an illegitimate attempt to draw financial advantage from the false impression of some legitimate relationship between the Complainant and the disputed domain name.
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 is distinctive and has a very considerable reputation in relation to toys and the like in many countries. The Complainant has established that a large amount of advertising and promotion is undertaken in relation to the LEGO trademark, and that it sells trademarked goods to a very considerable total value. It is inconceivable that upon registration the Respondent was not aware of the reputation of the Complainant and the distinctive reputation of the LEGO trademark. The nature of the links that appear on the website to which the disputed domain name resolves further supports the conclusion that the Respondent was fully aware of the Complainant’s trademark rights and reputation at the time of registration. The combination of “lego” and “pic” does not result in some other word by reference to which the Respondent intended to or is conducting a legitimate business. Rather, the Respondent has used the disputed domain name to attract Internet users to a website where links to Lego products to be supplied via “www.a” are available. Other products are also offered for sale at that website. The facts before the Panel are consistent with an attempt by the Respondent to take financial advantage of the LEGO trademark’s reputation by giving the false impression of sponsorship, endorsement or authorization, or of the status of an official reseller to Internet users who are attracted to the website by the nature of the disputed domain name. The website to which the disputed domain name resolves displays features that further aim to reinforce the impression of some legitimate connection with the Complainant, in particular the prominent featuring of Lego building blocks in the background, and the very long list of product reference numbers on which an Internet user can click.
Nor has the Respondent replied in any manner to the legitimate attempts of the Complainant to contact it and resolve the matter amicably.
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: August 1, 2013
Full & Egal Universal Law Academy