The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Quan Zheng / Zheng Quan / 郑权 of Shanghai, China. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , and are registered with HiChina Zhicheng Technology Ltd.; the disputed domain names , , , , and are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2017. On June 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 23, 2017, 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 27, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding and submitted an amended Complaint on June 30, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.
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 English and Chinese of the Complaint, and the proceedings commenced on July 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2017.
The Center appointed Jonathan Agmon as the sole panelist in this matter on July 26, 2017. 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.
On August 5, 2017, the Respondent sent a short email as its reply to the Complaint. 4. Factual Background
The Complainant, LEGO Juris A/S is a Denmark based company and is the owner of trademarks that are used in connection with the Lego brands of construction toys.
The Complainant has subsidiaries and branches throughout the world, and Lego products are sold in more than 130 countries, including in China. Moreover, the Legoland theme parks have about 1.4 million visitors per year.
The Complainant’s brand Lego was listed as one of the top 20 Consumer Superbrands of 2015 and was noted as a winner in the “Child Products - Toys and Education” category and Legoland was noted as a winner in “Leisure & Entertainment – Destinations” the category. Moreover, the Reputation Institute nominated the Lego Group as the fifth in “the World’s Most Reputable Companies” list of 2015.
The Complainant is the owner of numerous trademark registrations for the LEGO trademark around the world. For example: United States of America (“United States”) trademark registration No. 1018875 – LEGO, with the registration date of August 26, 1975; Chinese trademark registration No. 75682 – LEGO, with the registration date of December 22, 1976; Chinese trademark registration No. 986137 – 樂高 (LEGO in Chinese), with the registration date of April 21, 1997, and many more.
The Complainant is the owner of numerous trademark registrations for the LEGOLAND trademark around the world. For example: United States trademark registration No. 3446087, with the registration date of June 10, 2008; Chinese trademark registration No. 257147 – LEGOLAND, with the registration date of July 30, 1986, and more.
The Complainant has also developed a formidable presence on the Internet and is the owner of 5,000 domain names consisting of the trademark LEGO. For example: , , , , , , and many more, and 400 domain names consisting of the trademark LEGOLAND.
The disputed domain name was registered on March 16, 2016.
The disputed domain name was registered on September 29, 2015.
The disputed domain name was registered on September 29, 2015.
The disputed domain name was registered on March 23, 2016
The disputed domain name was registered on March 24, 2016.
The disputed domain name was registered on September 29, 2015.
The disputed domain name was registered on April 12, 2015.
The disputed domain name was registered on September 29, 2015.
The disputed domain name was registered on September 29, 2015.
The disputed domain name was registered on March 24, 2016.
The disputed domain name was registered on February 6, 2017.
The disputed domain name was registered on April 13, 2016.
The disputed domain name was registered on April 13, 2016.
The disputed domain name was registered on December 13, 2016.
The disputed domain name was registered on September 29, 2015.
According to the evidence submitted by the Complainant, the disputed domain names are inactive. 5. Parties’ Contentions A. Complainant
The Complainant argues it is the owner of LEGO, LEGOLAND, and all other trademarks used in connection with the famous Lego brands of construction toys and other Lego branded products, and its licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in China and elsewhere.
The Complainant further argues that over the years, the business of making and selling Lego branded toys has grown remarkably. The Complainant has subsidiaries and branches throughout the world, and Lego products are sold in more than 130 countries, including in China. Moreover, the Legoland theme parks have about 1.4 million visitors per year.
The Complainant further argues that the LEGO trademark is among the best-known trademarks in the world, due in part to decades of extensive advertising.
The Complainant further argues that the Complainant and its affiliates have expanded the use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant further contends that its LEGO and LEGOLAND trademarks are
well-known mark, as defined by the Paris convention.
The Complainant further argues that the disputed domain names , , and contain the Complainant’s LEGO trademark in its entirety, thus resulting in domain names that are identical to the Complainant’s LEGO trademark.
The Complainant further argues that the disputed domain names and contain the Complainant’s LEGOLAND trademark in its entirety, thus resulting in domain names that are identical to the Complainant’s LEGOLAND trademark.
The Complainant further argues that the addition of the suffixes “brick,” “club,” “hb,” “pub,” “set,” or “yb” in the disputed domain names , , , , , , and and the addition of the Top-Level Domains (“TLDs”) “.top,” “.co,” “.me,” “.xin,” “.我爱你,” “.cc,” “.com,” “.org,” “.kim” and “.ren” do not have any impact on the overall impression of the dominant part of the name, “lego”, recognizable as a world famous trademark.
The Complainant argues that the disputed domain names are clearly confusingly similar to the Complainant’s registered trademarks. The suffix does not detract from the overall impression and the disputed domain names must therefore be considered to be confusingly similar to the Complainant’s trademarks.
The Complainant further argues that the Respondent is not commonly known by the name “Lego”, “Legoland” or any variation thereof.
The Complainant further argues it had not licensed or otherwise permitted the Respondent to use its LEGO or LEGOLAND trademarks and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent was aware of the Complainant when registering the disputed domain names.
The Complainant further argues that the Complainant first tried to contact the Respondent on January 18, 2017 through a cease-and-desist letter, in which the Complainant requested a voluntary transfer of the disputed domain names and offered compensation for the expenses of registration and transfer fees. The Complainant further contends that three additional reminders were sent but that the Respondent never replied.
The Complainant further argues that the Respondent is not using the disputed domain names and this passive use of the disputed domain names is considered bad faith.
The Complainant further argues that the Respondent has registered numerous disputed domain names that infringe the Complainant’s LEGO or LEGOLAND trademarks, and this demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use.
The Complainant further argues that the Respondent currently offering the disputed domain names for sale and this constitutes bad faith under the Policy.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not file a timely response. 6. Discussion and Findings A.1. Procedural Issue – Language of the Proceedings
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 language of the Registration Agreement for the disputed domain names is Chinese, as confirmed by the Registrar in its verification email to the Center of June 23, 2017.
The Complainant requested that the language of the proceedings be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
In deciding the language of the proceedings, the Panel takes the following into consideration:
a) The majority of the disputed domain names consists of English characters, rather than Chinese letters;
b) The additional terms to the disputed domain names “brick”, “club” and “set” are English words;
c) The Respondent did not respond to the Complainant’s request that the language of the proceedings be in the English language. The Respondent did not object to the request that the language of the proceedings be English.
d) The Respondent sent a short email from which it can be observed that the Respondent was able to understand the nature of the Complaint made against him.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for the proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. A.2. Procedural Issue – Late Response
The Respondent failed to submit a timely Response. On August 5, 2017, some ten days after the time to respond has passed, the Respondent sent a short email to the Center providing a number of statements and a few pictures.
Paragraph 5 of the Rules provides that a response shall be filed within 20 days of the date of commencement of the administrative proceeding. Additional 4 days may be granted upon the respondent’s request. Paragraph 5(e) of the Rules provides that at the request of the respondent, the provider may, in exceptional cases, extend the period of time for the filing of the response. Paragraph 5(f) of the Rules provides that if the respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint.
Furthermore, Paragraph 10 of the Rules vests the panel with authority to determine how to conduct the proceedings, so long as the parties are treated with equality, each party is given a fair opportunity to present its case and the matter is resolved with due expedition.
Since the Rules afford the parties fair opportunity to present their cases in a timely manner, the filing of a Response outside the timeline provided by the Rules should only be accepted in exceptional circumstances. See also Hacı Ömer Sabancı Holding Anonim Şirketi v. Ahmet Güler,WIPO Case No. D2016-1224.
The Respondent in this case made no request for the late Response to be accepted. The Respondent failed to provide any explanation or circumstances surrounding the delay in filing of the Response. Accordingly, the Panel rejects the Respondent’s late Response.
For the sake of completeness, the Panel has reviewed the Respondent’s late Response and notes that even if the Panel would have considered the Respondent’s late Response, it would have had no bearing on the outcome of the case under the present circumstances. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the LEGO around the world. For example: United States trademark registration No. 1018875 – LEGO, with the registration date of August 26, 1975; Chinese trademark registration No. 75682 – LEGO, with the registration date of December 22, 1976; Chinese trademark registration No. 986137 – 樂高 (LEGO in Chinese), with the registration date of April 21, 1997, and many more.
The Complainant is also the owner of numerous trademark registrations for the LEGOLAND trademark around the world. For example: United States trademark registration No. 3446087, with the registration date of June 10, 2008, Chinese trademark registration No. 257147 – LEGOLAND, with the registration date of July 30, 1986, and more.
The disputed domain names , , and contain the Complainant’s LEGO trademark in its entirety, with the addition of the TLDs “.top”, “.xin”, “. 我爱你” and “.kim” respectively.
The disputed domain names and contain the Complainant’s LEGOLAND trademark in its entirety, with the addition of the TLDs “.ren” and “.xin” respectively.
The disputed domain names , , , , , , and contain the Complainant’s LEGO trademark in its entirety with the suffixes “brick,” “club,” “hb,” “pub,” “set,” or “yb” respectively, with the addition of the TLDs “.org”, “.cc” and “.com” respectively. The disputed domain name contains the Complainant’s LEGO trademark in its entirety, with the addition of the letter “i” and the TLD “.me”.
The above mentioned additional suffixes and TLDs does not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant’s trademarks LEGO and LEGOLAND. Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the disputed domain names from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names. Section 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the LEGO trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
As noted above, the Respondent failed to file a timely response. The Panel finds, that the Respondent failed to present any evidence which will show rights or legitimate interests in the disputed domain names and that the Respondent failed to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademarks. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the LEGO trademark since at least the year 1975 and for the LEGOLAND trademark at least since 1986. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate its trademark’s goodwill. The Panel cites the following with approval: “The Respondent’s selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence[…]Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent’s registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin,WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain names.
The disputed domain names are identical and confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under the UDRP.
The Panel also notes the Complainant arguments that the Respondent has offered for sale the disputed domain names , , , , , , , , , , , , and , in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the disputed domain names, and this also demonstrates the Respondent bad faith use and registration of the disputed domain names.
In addition, the evidence shows that the Respondent has not been using the disputed domain names and is passively holding them. Evidence of passive holding of a domain name has been held under some circumstances to constitute use in bad faith. Failure to meet paragraph 4(a)(iii) of the Policy while holding a domain name passively would be regarded as evidence of bad faith use (see Telstra Corporation Limited v. Nuclear Marshmallows,D2000-0003). The Respondent’s passive holding of the disputed domain names indicates in this case bad faith registration and use of the disputed domain names: “[t]he concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept”. See Cho Yong Pil v. Kee Dooseok,WIPO Case No. D2000-0754. See also: “[t]he significance of the distinction is that the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith” (Telstra Corporation Limited v. Nuclear Marshmallow, supra).
The Panel also notes that the Respondent failed to respond to the cease-and-desist letter and the three reminders that were sent by the Complainant. It is well established and accepted that failure to respond to the cease-and-desist letters without legitimate reason may be further evidence supporting the inference of bad faith registration and use (Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022).
In addition, the Respondent has registered numerous domain names that comprise the Complainant’s trademarks in their entirety. The large number of such registration of domain names closely associated and connected with the Complainant’s registered trademarks is further evidence of bad faith registration and use of the disputed domain names. Such behavior also leads the Panel to conclude that according to paragraph 4(b)(ii) of the Policy, the Respondent is engaged in a pattern of cybersquatting, which amounts to evidence of bad faith registration an use of the disputed domain names. See The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113.
In light of the Complainant’s highly distinctive and famous registered trademark, the Respondent’s registration of identical or confusingly similar disputed domain names and the Respondent’s lack of response to the Complainant’s cease-and-desist letter, the Respondent offering of the disputed domain names for sale, the Respondent’s passive holding of the disputed domain names and in view of the above, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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 names, , , , , , , , , , , , , , and , be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: August 14, 2017
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