Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Ma Ying Jo of Shanghai, China; Domain Admin, Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Media Elite Holdings Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2014. On May 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 20, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 20, 2014.
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 Respondent of the Complaint, and the proceedings commenced on May 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2014. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2014.
The Center appointed Mark Partridge as the sole panelist in this matter on June 17, 2014. 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
Complainant is LEGO Juris A/S of Denmark, an internationally recognized brand with trademark registrations in dozens of jurisdictions. Complainant derives substantial profits from the licensing and use of these trademarks on LEGO brand toys and other LEGO branded products.
Complainant owns a number of trademark registrations around the globe, including:
LEGO, Australian trade mark number 129258; registered on September 17, 1956;
LEGO, U.S registration number 3,440,699; registered on June 3, 2008.
In early 2014, Complainant released a feature film based on its products titled “The Lego Movie”, which grossed over UD400 million worldwide.
Respondent registered the disputed domain name on February 13, 2014. Currently, Respondent operates the disputed domain name as a parking page with pay-per-click advertising links. 5. Parties’ Contentions A. Complainant
Complainant submits that it has registered trademark rights in the LEGO mark, dating in at least one jurisdiction to as early as 1956, and that the dominant portion of the disputed domain name is confusingly similar to Complainant’s mark. Further, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because it does not have any corresponding registered trademarks, has not legitimately used LEGO, and is not licensed or authorized by Complainant to use the LEGO mark. Finally, Complainant argues that Respondent registered the disputed domain name in bad faith to trade on the goodwill of the LEGO mark by diverting Internet users. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
The Panel considers each element in order. A. Identical or Confusingly Similar
Complainant has used the LEGO mark on an international basis to identify its toys and related LEGO brand products since the 1950’s. Complainant has a number of registrations for the LEGO word mark including Australian registration number 129258 for LEGO, which was registered on September 17, 1956.
Where a domain name includes an identical match to a complainant’s mark, a complainant has satisfied the burden of proving that the domain name is identical or confusingly similar under paragraph 4(a)(i) of the Policy. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. Polygenix Group Co.,WIPO Case No. D2000-0163.
The disputed domain name includes an identical match to Complainant’s LEGO mark. The inclusion of “movie contest” does not differentiate the disputed domain name, but rather compounds the confusion because of Complainant’s recent release of “The Lego Movie”. Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights. B. Rights or Legitimate Interests
Under the second element of paragraph 4(a) of the Policy, Complainant is required to present a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Here, Complainant satisfactorily showed that there was no legitimate connection between the disputed domain name and Respondent’s use as a parking page. Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, is not commonly known by “Lego Movie Contest,” and is not making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, the burden of production shifts to Respondent to present evidence demonstrating rights or legitimate interests in the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Since Respondent did not submit any Response to the Complaint, Respondent has not met its burden.
The Panel, therefore, concludes that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists circumstances that shall be evidence of registration and use of a domain name in bad faith, including, among other reasons,
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Complainant contends that LEGO is a well-known mark and that Respondent’s registration of the disputed domain name demonstrates intent to trade upon Complainant’s goodwill by creating a likelihood of confusion with Complainant’s mark. In particular, Complainant contends that Respondent is intentionally attempting to misleadingly divert Internet users for its own commercial gain.
Here, Complainant has shown that Respondent has registered and used the disputed domain name in bad faith. Respondent uses a domain name that is confusingly similar to Complainant’s mark to profit from pay-per-click advertising by leading Internet users to a site featuring the products and services of others. Further, previous UDRP panels have found Respondent to have infringed Complainant’s rights in the LEGO mark, indicating a pattern of bad faith registrations. See LEGO Juris A/S v. Ma Ying Jo,WIPO Case No. D2012-1824 and LEGO Juris A/S v. Ma Ying Jo / PrivacyP,WIPO Case No. D2012-0785.
The Panel, therefore, concludes that Complainant has satisfied the requirements of 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 Complainant.
Mark Partridge
Sole Panelist
Date: July 1, 2014
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