The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Ren Ke Xun of Zibo, Shangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2016. On June 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 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.
On June 7, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On June 9, 2016, the Respondent requested that Chinese be the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding.
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 in both Chinese and English of the Complaint, and the proceeding commenced on June 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2016. The Respondent did not submit any formal response. Accordingly, the Center informed the Parties on July 11, 2016 that it would proceed to panel appointment.
The Center appointed Matthew Kennedy as the sole panelist in this matter on July 18, 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
The Complainant is the owner of LEGO and LEGOLAND trademarks used in connection with construction toys and other products. “Legoland” is an invented word, comprising the Complainant’s LEGO trademark and the word “land”, authorized by the Complainant for use in connection with theme parks, among other things.
The Complainant is the owner of European Union Trade Mark Registration No. 000054205 for LEGOLAND, registered on October 5, 1998, specifying goods and services in classes 9, 16, 25, 28, 41 and 42. The Complainant is also the registrant of many domain names that contain the word “legoland”, including which resolves to a website providing information on Legoland resorts authorized by the Complainant.
The Respondent is the registrant of the disputed domain name, which was registered on October 23, 2015. At the time of filing the Complaint, the disputed domain name resolved to a website that hosted links to websites for hotels, vacations and Legoland theme parks, among other things. The website also displayed a notice in Chinese stating that the disputed domain name was for sale and indicating where it could be purchased. At the time of this decision, the disputed domain name no longer resolves to any active website. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s LEGO and LEGOLAND trademarks. The dominant part of the disputed domain name is “lego” or “legoland” and this is paired with a mere generic term “park” and a generic Top-Level Domain (“gTLD”) “.xyz”.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not found any registered trademarks or trade names owned by the Respondent that correspond to the disputed domain name or anything that would suggest that the Respondent has been using LEGO or LEGOLAND in any other way that would give him legitimate rights. The Complainant has not given any license or authorization of any other kind to the Respondent to use either of the trademarks LEGO and LEGOLAND. The Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a website that is commercial through sponsored links, most of which are not related to the Complainant in any way.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant’s LEGO and LEGOLAND trademarks are well-known trademarks with a substantial and widespread reputation throughout the world. The disputed domain name was registered decades after the Complainant’s trademarks and the Respondent was clearly aware of them at the time he registered the disputed domain name. The only rational reason for the Respondent’s use of the disputed domain name was to attract some of the Complainant’s customers to his website. It is not relevant whether the Respondent himself receives revenue each time Internet users click on the sponsored links as such use misleadingly diverts consumers for commercial gain. B. Respondent
The Respondent did not file any Response besides an email dated June 9, 2016 regarding the language of the proceeding. However, the Respondent did respond to the Complainant’s contentions in a series of pre-Complaint emails, in Chinese, which were annexed to the Complaint. In an email dated November 13, 2015, the Respondent stated that he was not very familiar with the Complainant but that his use of the disputed domain name had no connection to the Complainant’s business activities; that registration of domain names is on a first-come first-served basis; and that the Complainant could offer a price. In an email dated November 19, 2015, he offered to sell the disputed domain name for USD 730. In an email dated December 2, 2015, he noted that the Complainant had registered its trademarks in respect of a wide range of goods and suggested other domain names; he referred to a price of USD 730 or USD 30,000; and he asserted that his website had absolutely no connection with the Complainant or its products. 6. Discussion and Findings 6.1 Language of the Proceeding
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.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English although it does not object to the Respondent filing a Response in Chinese. The Complainant’s main arguments are that the Parties used both English and Chinese in pre-Complaint correspondence; that it would be cumbersome to force the Complainant to translate the entire Complaint; and that the disputed domain name and website to which it resolves are in English. The Respondent requests that the language of the proceeding be Chinese. Its arguments are that the disputed domain name is registered and hosted in China.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. The website to which the disputed domain name resolves is in English, which indicates that the Respondent is able to understand that language. Further, the Respondent was able to reply – in Chinese – to correspondence from the Complainant sent in English. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept the evidence filed in Chinese without translation. The Panel would also have accepted a Response in Chinese but no formal Response was filed. 6.2 Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the LEGOLAND trademark.
The disputed domain name incorporates the Complainant’s LEGOLAND trademark in its entirety plus two additional elements. One additional element is the English dictionary word “park” but dictionary words do not normally have the capacity to distinguish a domain name from a trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty. Ltd.,WIPO Case No. D2001-0110. The other additional element is the gTLD suffix “.xyz” but a gTLD suffix generally has no capacity to distinguish a domain name from a trademark. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080. Consequently, the only distinctive element of the disputed domain name is the Complainant’s LEGOLAND trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s LEGOLAND trademark. The Complainant informs the Panel that it has not given any license or authorization of any other kind to the Respondent to use that trademark.
As regards the first circumstance above, the disputed domain name has been used with a website that offered the disputed domain name for sale and displayed links to commercial websites. Some of those links relate to Legoland theme parks but the majority does not. This indicates that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services for the purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Accordingly, the Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent’s name is “Ren Ke Xun”, not “legolandpark” or “legoland” or even “park”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance, the disputed domain name resolved to a website that offered the disputed domain name for sale and displayed links to commercial websites. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is now up to the Respondent to rebut that case.
The Respondent did not respond to the Complaint but in pre-Complaint correspondence with the Complainant’s representative he indicated that domain name registrations operate on a first-come first‑served basis. The Panel observes that the registration of a domain name does not authorize the Respondent to interfere with the Complainant’s prior trademark rights. Rather, in accordance with paragraph 2 of the Policy, a domain name registration agreement requires the applicant to represent and warrant that “to [the applicant’s] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party”.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”
The Respondent registered the disputed domain name in 2015, many years after the Complainant obtained its trademark registration. The disputed domain name entirely incorporates the Complainant’s LEGOLAND trademark, which is an invented word. The choice to combine the Complainant’s trademark with the word “park” indicates an awareness of Legoland theme parks authorized by the Complainant. The Respondent offers no alternative explanation for his choice of the disputed domain name. On balance, this indicates to the Panel that the Respondent was aware of the Complainant and its LEGOLAND trademark at the time that he registered the disputed domain name and deliberately chose to register it as part of the disputed domain name.
As at the time of filing the Complaint, the Respondent used the disputed domain name, which is confusingly similar to the Complainant’s LEGOLAND trademark, in connection with a website to offer the disputed domain name for sale and to display links to commercial websites. Some of those links relate to Legoland theme parks but the majority does not. This use is intentional and for commercial gain. It does not matter whether the display of links is for the commercial gain of the Respondent, if he is paid to direct traffic to these other websites, or whether it is for the commercial gain of the operators of those other websites, or both. In any of these scenarios, the facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267.
The Panel notes that the use of the disputed domain name has since changed and that the website no longer resolves to any active website. This change of use after receiving notice of the Complaint may be further evidence of bad faith and, in any event, does not alter the Panel’s conclusion regarding bad faith use.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 the Complainant.
Matthew Kennedy
Sole Panelist
Date: July 26, 2016
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