The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Thai Dang of Hanoi, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2018, 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.
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, and the proceedings commenced on August 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on October 1, 2018. 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
Complainant is a Danish company which provides construction toys, mini-figures, and related products and services.
Complainant owns valid and subsisting registrations for the LEGO trademark and logo in numerous jurisdictions around the world, including International Registration Number 287932 (registered on August 27, 1964), with effect in Viet Nam, pursuant to the Madrid Protocol designation filed on October 31, 2003 (collectively, the “LEGO Marks”). Complainant has affiliates around the world that provide products under the LEGO Marks in more than 130 countries, including in Viet Nam, where Respondent is located. Complainant’s use of the LEGO mark predates the registration of the disputed domain name, which occurred August 9, 2017.
Currently, the disputed domain name resolves to a website that offers construction toys and related products for purchase under the “Lepin” brand in competition with LEGO products. 5. Parties’ Contentions A. Complainant
Complainant asserts that the dominant part of the disputed domain name comprises the term “lego”, which is identical to the registered trademark LEGO registered by the Complainant as trademarks and domain names in numerous countries all over the world. Complainant asserts that the addition of the suffix “clone” will not have any impact on the overall impression of the dominant part of the name, LEGO. Complainant asserts that 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 disputed domain name. According to Complainant, anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant.
Complainant asserts that Respondent has no registered trademarks or trade names corresponding to the disputed domain name, nor any other use of the name “lego” that would give them any rights or legitimate interests in the disputed domain name. Complainant states that it has not given any license or other authority to Respondent to use the LEGO Marks, noting that Respondent is not an authorized dealer of the Complainant’s products nor does it have any business relationship with Complainant. According to Complainant, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services; instead, Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through an unauthorized website offering LEGO-branded products. Complainant notes that Respondent does not adequately disclose the relationship, or lack thereof, between Respondent and Complainant, and therefore conveys the false impression that Respondent is authorized to use the Complainant’s trademark when it is not.
Complainant alleges that the LEGO trademark is well-known and reputed, with a substantial and widespread reputation throughout the world, which contributed to Respondent’s decision to register the disputed domain name. According to Complainant, it sent cease and desist letters to Respondent seeking voluntary transfer of the disputed domain name, in exchange for compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses), but that Respondent never replied to these communications. Complainant asserts that the disputed domain name is currently connected to an unauthorized commercial website offering LEGO-branded products. According to Complainant, the words “lego clone” feature prominently on the website, contributing to confusing similarity with the Complainant. Complainant alleges that, accordingly, Respondent is using the disputed domain name to intentionally attempt to attract Internet users to its own website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, which constitutes evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Accordingly, Complainant has requested that the disputed domain name be transferred. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally considered to be sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of ownership of the LEGO trademarks, which have been registered internationally since 1954, well before Respondent registered the disputed domain name. With Complainant’s rights in the LEGO mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD in which it is registered, in this case, “.com”) is identical or confusingly similar to the Complainant’s mark. See, e.g., B&H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
Here, the disputed domain name is confusingly similar to Complainant’s LEGO mark, because it is fully incorporated into the disputed domain name at the second level and the addition of the descriptive term “clone” appended to the mark does not prevent a finding of confusing similarity.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the LEGO mark and in showing that the disputed domain name is identical or confusingly similar to this mark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, complainant must make at least a prima facie showing that respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once complainant make such a prima facie showing, the burden of production shifts to respondent, though the burden of proof always remains on complainant. If a respondent fails to come forward with evidence showing rights or legitimate interests, complainant will have sustained their burden under the second element of the UDRP.
Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods may make a bona fide offering of services and have a legitimate interest in such domain name under certain conditions. This is clearly established in Oki Data Americans, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. See WIPO Overview 3.0, section 2.8.1.
From the record in this case, however, Respondent is not an authorized reseller, distributor, or other service provider offering legitimate LEGO products. Rather, the evidence supports a finding that Respondent is aware of the LEGO brand, and is using a confusingly similar domain name to direct Internet users to a website purporting within its title to sell “Cheap Lego clones, Lego bootlegs, fake Legos or bootlegos” intended to mimic legitimate LEGO products. The Panel notes that Complainant failed to attach adequate screenshot evidence of this fact, and incorrectly averred that the products were being sold as unauthorized LEGO branded products. But, upon its own independent review of the full and complete website located at the disputed domain name (see WIPO Overview 3.0, section 4.8), the Panel notes that the products available through therein are actually being sold under a different brand name, namely “Lepin”. Nonetheless, the disputed domain name is being used to offer “Cheap Lego clones, Lego bootlegs, fake Legos or bootlegos” and is, accordingly, effectively using the Complainant’s trademark in a domain name to bait consumers and then switch them to other confusingly similar products.
This type of use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel,WIPO Case No. D2013-0585; and Philip Morris USA v. Prophet Partners Inc.,WIPO Case No. D2007-1614 (stating when a respondent chooses a domain name to capitalize on a complainant’s famous trademark, it cannot be considered a bona fide offering of goods and services). Respondent has failed to submit any evidence demonstrating any rights or legitimate interest in this activity, and therefore the Complainant has met its burden of establishing that Respondent has no rights or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
Here, Complainant first used the LEGO trademark in 1953, and registered the mark effectively in Viet Nam, where Respondent is located, in 2003. Such use and registration of the LEGO mark long predates the registration of the disputed domain name by Respondent. Complainant has provided ample evidence that the LEGO trademark is well-known globally. Thus, Respondent was likely well-aware of the LEGO trademark when it registered the disputed domain name.
In addition, the Respondent’s registration and use of the disputed domain name constitutes use primarily for the purpose of disrupting the business of a competitor, within the meaning of paragraph 4(b)(iii) of the UDRP. See, e.g., Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club and Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd,WIPO Case No. D2009-0331 (finding the unauthorized sale of complainant’s tickets and as a competitor in ticket sales to be an indicia of bad faith). Respondent has registered and used the disputed domain name, which contains Complainant’s LEGO mark, to direct Internet users to a website offering competing “Cheap Lego clones, Lego bootlegs, fake Legos or bootlegos” products under the “Lepin” brand name, which directly competes with authentic LEGO-branded products (and arguably infringes the LEGO trademark, trade dress, and potentially other intellectual property rights – an issue beyond the scope of the UDRP).
In addition, the Panel agrees that Respondent intentionally attempted to attract, for commercial gain, internet users to the disputed domain name, by creating a likelihood of confusion with Complainant’s LEGO mark in order to offer “Cheap Lego clones, Lego bootlegs, fake Legos or bootlegos” versions of LEGO products, sold under the competing “Lepin” brand name. This constitutes evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Finally, Respondent’s failure to reply to three cease and desist letters sent by the Complainant is further evidence of bad faith, given all of the other circumstances of this case. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith and the Complainant succeeds under paragraph 4(b) 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 Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: October 12, 2018
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