The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Administrator, Rich Premium Limited of Hong Kong, China / c/o WHOIS Limited of Wellington, New Zealand. 2. The Domain Names and Registrar
The disputed domain names and are registered with 1API GmbH
(the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2014. On September 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 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 the Complainant on September 25, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 26, 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 the Respondent of the Complaint, and the proceeding commenced on October 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2014. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on October 24, 2014.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on October 30, 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 A. Complainant
The Complainant is a company incorporated in Denmark and the owner of numerous registrations worldwide for the trade mark LEGO (the “Trade Mark”), the earliest registration dating from 1954. The Trade Mark is a well-known trade mark. B. Respondent
The Respondent is apparently a company incorporated in Hong Kong, China. C. The Disputed Domain Name
The disputed domain names were both registered on the same date, April 28, 2014. D. The Website at the Disputed Domain Name
The disputed domain names resolve to the same website, which at first glance appears to promote optical services under the name “Local England Global Opticians” (the “Website”). 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Trade Mark is one of the most well-known trade marks in the world, used by the Complainant in respect of, in particular, construction toys and related toys, worldwide, for many decades.
The disputed domain names are confusingly similar to the Trade Mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain names.
Given the fame of the Trade Mark, the Respondent must have known of the Trade Mark prior to registering the disputed domain names.
The disputed domain names have been used in respect of the Website, which appears to promote the optical services of “Austin Optometrists” under the name “Local England Global Opticians”, and invites Internet users to submit their name, telephone number and email address.
The Respondent failed to respond to cease and desist letters sent by the Complainant.
For all of these reasons, the disputed domain names have been registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain names by several decades.
The disputed domain names are identical to the Trade Mark. The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by decades. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have been used in respect of the Website, which has not been authorised by the Complainant, which at first glance appears to promote optometrist services (under the name “Local England Global Opticians”), and which invites Internet users to submit their contact information. In all the circumstances of this case, the Panel concludes such use does not amount to a bona fide offering of goods or services under the Policy.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Based upon the evidence filed with the Complainant, and in the absence of a Response, it appears that the Website is not a legitimate commercial website and that, in fact, it is not being used to advertise or provide optometrist or optical services. It appears more likely that the Website has been set up in order to attract Internet users and entice them to provide their contact information.
Whilst this does not appear, on the evidence, to be a clear cut case of using the disputed domain names to attract Internet users, for commercial gain, in contravention of paragraph 4(b)(iv) of the Policy, the Panel has no hesitation in concluding, given the repute of the Trade Mark, the circumstances in which the disputed domain names have been used (including the somewhat dubious request for Internet users to provide their contact information), and also given the Respondent’s failure to respond to the Complainant’s cease and desist letters and to file a Response, that the requisite requirement of bad faith has been made out.
There can be no doubt, in the Panel’s opinion, that the Respondent knew of the Complainant and of its rights in the Trade Mark when it registered the disputed domain names. This conclusion is fortified by the unconvincing, confusing and grammatically incorrect use of the name “Local England Global Opticians” on the Website, which suggests this name was created by the Respondent in an attempt to disguise its flagrant registration and use of the disputed domain names identical to the Complainant’s well-known Trade Mark.
For the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: November 13, 2014
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