The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is He Wei of Xian, Shanxi, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2016. On June 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2016, 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 June 14, 2016 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 amended Complaint on June 15, 2016.
On June 12, 2016, the Respondent sent two emails to the Center (in English) seeking information on the dispute and requesting that all communications be translated into simplified Chinese. The Center acknowledged these communications on June 13, 2016.
On June 14, 2016, the Center sent an email communication in both Chinese and English regarding the language of the proceeding. On the same day, the Respondent repeated his request (in Chinese) that all communications be made in Chinese. On June 15, 2016, the Complainant confirmed its request that English be the language of the proceeding.
The Center verified that the Complaint together with the amended 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 24, 2016. On the same day, the Respondent sent two email communications regarding the language of the proceeding. The Center acknowledged receipt and provided the Respondent with a model Response in Chinese. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2016.
On July 15, 2016, the Center notified the Respondent that apart from the above emails it had received no formal Response, and informed the Parties that it would proceed to Panel Appointment shortly.
The Center appointed Matthew Kennedy as the sole panelist in this matter on July 21, 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 trademarks used in connection with construction toys and other products. The Complainant is the owner of multiple trademarks including Community trademark registration no. 39800 for LEGO, registered on October 5, 1998, specifying goods in multiple classes including games and playthings in class 28. The Complainant is also the registrant of many domain names that contain the word “lego”, including which resolves to a website providing information on LEGO toys, games and other products. The Complainant has a licence agreement with Shell International Petroleum Company Ltd regarding co-promotion activities.
The Respondent is the registrant of the disputed domain name, which was registered on September 18, 2015. At the time of filing the Complaint, the disputed domain name resolved to a shopping website that offers for sale toy cars from the Shell V-Power LEGO Collection. The website is in English and prices are quoted in dollars. At the time of this decision, the disputed domain name does not resolve to any active website. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s LEGO trademark. The dominant part of the disputed domain name is identical to that trademark. The disputed domain name also includes the trademark SHELL but a mere combination of two trademarks is confusingly similar to both trademarks. In this case, the combination of the trademarks LEGO and SHELL gives the impression that the disputed domain name is associated with the Complainant because the Complainant has a license to develop, manufacture and sell Shell V-Power LEGO products.
The Respondent has no rights or legitimate interests in 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. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. There is no disclaimer on the website to explain the lack of relationship to the Complainant. The Complainant has found no evidence that the Respondent is using the name LEGO as a company name or has any other legal rights in the name.
The disputed domain name was registered and is being used in bad faith. The Complainant’s LEGO trademark in respect of toys is a well-known and reputed trademark throughout the world. The disputed domain name was registered later than the Complainant’s trademark registration. The disputed domain name is connected to a website offering the Complainant’s products for sale, with no disclaimer to explain its lack of relationship to the Complainant. B. Respondent
The Respondent did not file a formal Response but informed the Center that he is the owner of the disputed domain name. 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. Its main arguments are that the disputed domain name itself incorporates trademarks in English, that the website available at the disputed domain name is entirely in English, that the Complainant did not reply to a cease and desist letter and that it would be cumbersome and to the Complainant’s disadvantage to be forced to translate the entire Complaint into another language.
The Respondent requests that all documents be translated into Chinese. His initial argument (written in English) was that the Registrar is a China-based company. His later arguments (presented in a series of emails written in Chinese) are that simplified Chinese is the only language that he uses, that he does not understand the subject-matter of the dispute, that he does not read or write English, that he had no responsibility to bear the costs of translation, that he cannot completely accurately understand the Complaint, that the situation is imbalanced and that the Center should ensure fairness.
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 Respondent’s first two emails to the Center were written in English and the website to which the disputed domain name resolves is also in English. It was only when the Respondent began to argue that he could not communicate in English that he switched to Chinese. As the record shows that the Respondent is indeed familiar with the English language, 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. The Panel would have accepted a Response in Chinese but none was filed. 6.2. Analysis and Findings
The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant. 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 LEGO trademark.
The disputed domain name incorporates the LEGO trademark in its entirety. The LEGO trademark is the initial and dominant element of the disputed domain name.
The disputed domain name also includes the additional element “-shell”. The word “shell” is a dictionary word and it is also a third party trademark. 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 combination of two trademarks does not distinguish the disputed domain name from the LEGO trademark either; it still gives the impression that the disputed domain name is associated with the Complainant or its products. See Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC,WIPO Case No. D2003-0112. Further, the hyphen between “lego” and “shell” is a mere punctuation mark and has no capacity to distinguish the disputed domain name from the Complainant’s trademark.
Another additional element in the disputed domain name is the generic Top-Level Domain (“gTLD”) suffix “.com”, 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).
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 LEGO trademark. The Complainant informs the Panel that it has never licensed or authorized the Respondent to use its LEGO trademark.
As regards the first circumstance above, the disputed domain name is being used with a commercial website that offers what are allegedly the Complainant’s products for sale. Regardless of whether the products are genuine, there is no disclaimer on the website indicating to Internet users that the Respondent is not an authorized reseller. 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 “He Wei”, not “lego-shell” nor “lego” nor “shell”. 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 resolves to a website that offers goods for commercial sale. It 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. The Respondent did not respond to the Complaint and hence failed to rebut the Complainant’s case.
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] web site 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”
The Respondent registered the disputed domain name in 2015, many years after the Complainant obtained its trademark registration. The disputed domain name wholly incorporates the Complainant’s LEGO trademark. The website with which the disputed domain name is used displays the Complainant’s LEGO logo and uses the ® symbol to indicate that LEGO is a registered trademark. The website offers for sale what are allegedly the Complainant’s Shell V-Power LEGO Collection toy cars. This all gives the Panel reason to believe that the Respondent was aware of the Complainant’s LEGO trademark at the time that he registered the disputed domain name and deliberately chose to register it as part of the disputed domain name.
The Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s LEGO trademark, in connection with a website that offers for sale what are allegedly the Complainant’s products.
The Respondent has no connection with the Complainant but this is not disclosed on the website to which the disputed domain name resolves. This gives the impression that the website is a site approved by, or affiliated with, the Complainant. Given these circumstances and those described at Section 6.2.B above, the Panel considers that this use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website.
At the time of this decision, 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 25, 2016
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