The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Hoang Van Cuong of Bac Giang, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2016. On May 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2016, 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 of the Respondent.
On May 26, 2016, the Center notified the parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese. On the same day, the Complainant requested for English to be the language of the proceedings, to which the Respondent did not reply.
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 and 4, the Center formally notified the Respondent of the Complaint, in both English and Japanese, and the proceedings commenced on June 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2016. The Respondent sent an email to the Center on June 13, 2016. The Respondent did not, however, submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on June 27, 2016.
The Center appointed Masato Dogauchi as the sole panelist in this matter on July 13, 2016. 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
Whereas the Respondent has not submitted any formal response, the followings are found to be the factual background of this case.
The Complainant is a large Danish company producing and selling world famous construction toys and other products with the registered trademarks containing the term “lego” in more than 130 countries. It has subsidiaries and branches throughout the world.
The disputed domain name was registered by the Respondent on July 25, 2015. 5. Parties’ Contentions A. Complainant
The Complainant asserts as follows:
The Complainant is the owner of many trademarks and domain names containing the term “lego”. It is the strict policy of the Complainant that all domain names taking an unfair commercial advantage of the LEGO trademark should be recovered by the Complainant.
The dominant part of the disputed domain name comprises the term “lego”, identical to the registered trademark LEGO. Accordingly, the disputed domain name is clearly confusingly similar to the Complainant’s registered trademark LEGO.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. No license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO. Further, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. The disputed domain name generates traffic and income through a website offering the Complainant’s LEGO products for sale. There is no disclaimer on the website to explain the lack of relationship to the Complainant. The Respondent has incorporated the Complainant’s logotype without consent on the website in order to create a false link to the Complainant, and does therefore convey the false impression that the Respondent is in some way connected to the Complainant. Accordingly, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The trademark LEGO in respect of toys belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world. Considering that the Respondent is using the Complainant’s logotype and that LEGO is a world famous trademark, it is quite clear that the Respondent knew of the Complainant’s legal rights in the name LEGO at the time of the registration.
The Complainant first tried to contact the Respondent on August 25, 2015, one month after the registration of the disputed domain name by the Respondent, through a cease and desist letter sent by email to the address stated in the WhoIs. The Complainant offered compensation for the expenses of registration and transfer fees (not exceeding out-of-pocket expenses). Despite that reminders were being sent thereafter, no reply was received by the Complainant. Accordingly, the disputed domain name should be considered to be registered and used in bad faith. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
Before discussing the merits of the case, the language of the proceeding shall be determined.
According to paragraph 11 of the Rules, the language of the administrative proceedings shall be the language of the registration agreement unless the Panel decides otherwise. The Registrar confirmed that the Registration Agreement in this case was in Japanese. However, the Panel determines that English is to be used as the language of the proceeding in this case on the following reasons:
- The Complainant requested to that effect;
- The Respondent did not reply to the notification in both English and Japanese by the Center on May 26, 2016 that the Respondent was invited to indicate its objection, if any, to the Complainant’s request for the language by May 31, 2016 and, if the Respondent did not respond by this date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request; and
- In response to the formal notice of commencement of the proceedings in both English and Japanese by the Center, the Respondent sent an email written in English on June 13, 2016 to the Center, the main part of which is as follows: “I am sorry I don’t know English much, so could you please show me the problem in Vietnamese? I bought my domain from a provider in VietNam, it is not related to Japanese.”
The use of English language in this case would not be a denial of justice to the Respondent, who has communicated in English in this matter, and the use of Japanese language would produce undue burden on the Complainant in consideration of the absence of a Response from the Respondent.
The Panel then proceeds to the determination of the merits.
According to the Rules, paragraph 15(a), a panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since the Respondent has not made any substantative arguments in this case, the following decision is rendered on the basis of the Complainant’s contentions and other evidence submitted by the Complainant.
In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:
(1) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has had rights in trademarks containing the term “lego” for many years.
The word “lego” is found in the disputed domain name. The rest of the dominant part of the disputed domain name is “hanoi”. Hanoi is the name of capital of Viet Nam. No other meaningful combination of words can be found. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not have any impact on the overall impression of the dominant portion of the words “lego” and “hanoi” and is therefore irrelevant in the determination of the confusing similarity between the disputed domain name and the LEGO trademark.
Therefore, having considered the above differences, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. The above requirement (1) provided for in paragraph 4(a)(i) of the Policy is accordingly satisfied. B. Rights or Legitimate Interests
The Respondent is not commonly known by the name “lego”, in any way affiliated with the Complainant, nor authorized or licensed to use the LEGO mark, or to register a domain name incorporating the mark. In addition, the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the disputed domain name resolves to a website offering the Complainant’s products for sale, without an explanation of any relationship between the Complainant and the Respondent, thus conveying that the Complainant and the Respondent are somehow connected where that is not the case.
Since the Respondent did not formally reply to the Complaint in this proceeding, the Panel finds on the available record that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The above requirement (2) provided for in paragraph 4(a)(ii) of the Policy is accordingly satisfied. C. Registered and Used in Bad Faith
In consideration of the fame of the Complainant’s trademark LEGO and its history of business using this trademark, it is highly unlikely that the Respondent would not have known of the Complainant’s rights in the trademark at the time of the disputed domain name’s registration on July 25, 2015. In addition, in light of the fact that nothing in the disputed domain name bears a reasonable relevance to the name or other characteristics of the Respondent, there can be found no reasonable possibility of fortuity in the Respondent’s use of the disputed domain name.
Furthermore, the Respondent is using the disputed domain name in order to have it resolve to a website selling the Complainant’s products without any authorization, which in the circumstances of this case is evidence of bad faith use as per paragraph 4(b)(iv) of the Policy.
Finally, the fact that the Respondent did not reply to the Complainant’s cease-and-desist letter is another indication of the Respondent’s bad faith.
The Panel therefore finds that the disputed domain name has been registered in bad faith and is being used in bad faith. The above requirement (3) provided for in paragraph 4(a)(iii) of the Policy is accordingly satisfied.
In conclusion, all three cumulative requirements as provided for in paragraph 4(a) of the Policy are determined to be satisfied. 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.
Masato Dogauchi
Sole Panelist
Date: July 17, 2016
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