The Complainant is LEGO Juris A/S, of Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Feng lingling of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2013. On October 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 October 26, 2013, the Center has transmitted communication by email to the parties in both English and Chinese about the language of proceedings. On October 28, 2013, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not submit any comments within the specified due date.
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 November 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2013.
The Center appointed Jonathan Agmon as the sole panelist in this matter on November 29, 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 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. In 2009 the LEGO group revenue was more than USD 2.8 billion.
The Complainant is the owner of numerous trademark registrations for the LEGO trademark around the world. For example: United States trademark registration No. 1018875 – LEGO, with the registration date of August 26, 1975; Chinese trademark registration No. 75682 – LEGO, with the registration date of December 22, 1976; International trademark registration No. 1006003 - LEGO, with the registration date of June, 17, 2009; European Community trademark registration No. 002829463 – LEGO, with the registration date of January 7, 2004, and many more.
The Complainant has also developed a formidable presence on the Internet and is the owner of numerous domain names consisting of the trademark LEGO. For example: , , , , , , and many more.
The disputed domain name was registered on June 26, 2013.
According to the evidence submitted by the Complainant, the disputed domain name leads Internet users to a website that offers adult products, which the Complainant does not want to be associated with. 5. Parties’ Contentions A. Complainant
The Complainant argues that the Complainant and its licensees, through their predecessors, commenced use of the LEGO trademark in the United States of America 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 a LEGO flagship store was opened in Beijing in September 2007. The Complainant further argues that LEGO products have been present in China for 15 years.
The Complainant further argues that the LEGO trademark 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 trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant further contends that its LEGO trademark is well known, as defined by the Paris convention.
The Complainant further argues that the disputed domain name is confusingly similar to itsLEGO trademark. The Complainant contends that the addition of the prefix “6688”, which is also one of Complainant’s brick sets, must be considered to be confusingly similar with the Complainant’s trademark.
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 in order to sell adult products. The Complainant further argues that it does not want to be associated with this type of products.
The Complainant further argues that the disputed domain name is a copy of Complainant's website and therefore, Internet users might believe the disputed domain name is managed by the Complainant.
The Complainant further argues that the Complainant first tried to contact the Respondent on August 13, 2013 through a cease and desist letter, in which the Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees. The Complainant further contends that a reminder was sent on October 17, 2013 and that the Respondent never replied.
The Complainant further argues that the Respondent registered and used the disputed domain name in bad faith. The Complainant further argues that the Respondent used the disputed domain name intentionally to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark.
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. Procedural 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.”
To the best of the Complainant’s knowledge, the language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings 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).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain name consists of English characters, rather than Chinese letters;
b) According to the evidence provided by the Complainant, the website under the disputed domain name resolves to an online marketplace, which offers English labeled products;
c) The Respondent failed to respond to the Complainant’s request that the language of the proceeding be in the English language.
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 shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the LEGO around the world. For example: United States trademark registration No. 1018875 – LEGO, with the registration date of August 26, 1975; Chinese trademark registration No. 75682 – LEGO, with the registration date of December 22, 1976; International trademark registration No. 1006003 - LEGO, with the registration date of June, 17, 2009; European Community trademark registration No. 002829463 – LEGO, with the registration date of January 7, 2004; and many more.
The Complainant is also the owner of numerous domain names which contain the LEGO trademark: , , , and many more.
The disputed domain name differs from the registered LEGO trademark by the additional prefix “6688” and the additional generic Top-Level Domain (“gTLD”) “.com”.
The disputed domain name integrates the Complainant’s LEGO trademark in its entirety, as a dominant portion.
The additional prefix “6688” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark. On the contrary, “6688” is a model number which the Complainant uses with one of its products. Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the disputed 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).
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. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the LEGO trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and 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) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the LEGO trademark since 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).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, the respondent had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed domain name resolved, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolved to.
The Panel finds that the Respondent has incorporated the LEGO trademark in the disputed domain name in order to attract consumers for commercial gain. 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, previous 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 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 Respondent’s use of the highly distinctive trademark of the Complainant in the disputed domain name is also suggestive of the Respondent’s bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the Complainant (see Swarovski Aktiengesellschaft v. fan wu,WIPO Case No. D2012-0065).
While the Respondent’s offering of adult content is not, in and of itself, considered as bad faith use of a domain name, in the present instance, such offering on a website resolving to the disputed domain name comprising a trademark primarily used in connection with children's toys is further evidence of bad faith use of the disputed domain name. Such use may suggest that the Respondent is associated with the Complainant and may lead to disparaging of the Complainant’s trademark. Such use may also lead children seeking the Complainant's 6688 Lego product to a website offering adult content. The Panel considered such use under the present circumstances as bad faith use.
A review of the website which resolved to the disputed domain name further showed that the adult content was offered for a fee. The Panel further cites with approval Red Bull GmbH v. Privacy P / EGE EKICI,WIPO Case No. D2013-1477 stating that “[t]he Panel is convinced that the Respondent must have been aware of the Complainant’s registered trademark, and that the Respondent has deliberately used the RED BULL trademark in the disputed domain name in order to divert Internet users seeking information on the Complainant to the Respondent’s adult content website for the sole purpose of monetary gain. The Panel believes that this does not constitute a bona fide offering of services under the Policy. ”
The Panel also notes that the Respondent failed to respond to the cease and desist letter and the reminder 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).
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 names be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: December 11, 2013
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