The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Private Registration of Denver, United States of America (“United States”) / Yanhua Wang of Henan, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with TurnCommerce, Inc. DBA NameB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2019. On January 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 31, 2019, 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 February 5, 2019 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 February 8, 2019.
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 of the Complaint, and the proceedings commenced on February 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2019. On March 12, 2019, due to technical reasons regarding the email configuration in the privacy server, the Center granted five additional days to the Respondent to submit a Response to the Complaint. The due date for Response was March 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2019.
The Center appointed Shwetasree Majumder as the sole panelist in this matter on March 26, 2019. 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, LEGO Juris A/S, is based in Denmark and owns a large portfolio of trademark registrations for the LEGO trademark (theLEGO Trademark”) around the globe, used mainly in connection with construction toys and other products being manufactured, marketed and sold by the Complainant under its “Lego” brand. The Complainant has set out in Annex 6 to the Complaint, a list of its valid and subsisting worldwide registrations for the LEGO Trademark which includes registrations in China with registration number 75682 since December 22, 1976, and the United States with registration number 1018875 since August 26, 1975. The Panel observes that the earliest registration in favour of the Complainant for the LEGO Trademark dates back to the year 1955.
The Complainant has subsidiaries and branches throughout the world and its products under the LEGO Trademark are sold in more than 130 countries.
The Complainant prominently depicts the LEGO mark on all the products, packaging, displays, advertising, and promotional materials. The LEGO Trademark has been conferred with various awards, honors and titles as is apparent from Annex 9 to the Complaint.
The Complainant has placed reliance on earlier decisions of previous UDRP panels which have held that the LEGO Trademark of the Complainant is a “well-known” trademark, namely: LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715; LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009‑0680; and LEGO Juris A/S v. Level 5 Corp,WIPO Case No. D2008-1692.
The Complainant has a significant online presence and owns close to 5,000 domain names which contain the LEGO Trademark (Annex 8 to the Complaint).
The Complainant tried to contact the Respondent on December 17, 2018 by sending a cease and desist letter by email and requested a voluntary transfer of the Disputed Domain Name. The Complainant also sent two additional reminders dated December 27, 2018 and January 3, 2019, however no response has been received from the Respondent.
The Disputed Domain Name was registered on November 24, 2018. 5. Parties’ Contentions A. Complainant
The Complainant contends that the dominant part of the Disputed Domain Name comprises the term “lego”, which is identical to the LEGO trademark as has been registered by the Complainant both as a trademark and as a domain name in numerous countries all over the world. The Complainant also contends that the addition of a hyphen and the suffix “caizhuang” will not have any impact on the overall impression of the dominant part of the name, LEGO, recognizable as a world-famous trademark. The Complainant places reliance on the UDRP Panel decision in LEGO Juris A/S v. Name redacted,WIPO Case No. D2018-2504 in support of this proposition.
The Complainant contends that by using its registered LEGO Trademark as a dominant part of the Disputed Domain Name, the Respondent is exploiting the goodwill and the image of its trademark, which might result in its dilution and cause other damage to the said trademark.
The Complainant further alleges that the Respondent does not have any registered trademarks or trade names corresponding to the Disputed Domain Name. Further the Complainant claims that it has not found anything, including the WhoIs details, that would suggest that the Respondent has been using LEGO in any other way that would give it legitimate rights 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 LEGO Trademark and the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
The Respondent is also not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Instead, the Complainant asserts that the Respondent has intentionally chosen the Disputed Domain Name based on the Complainant’s registered LEGO Trademark in order to generate traffic and income through a commercial website offering online lottery gaming.
The Complainant alleges that the LEGO Trademark has acquired the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world and that it was the fame and awareness of the said trademark of the Complainant that motivated the Respondent to register the Disputed Domain Name. The Complainant asserts that the Respondent cannot claim to have been using the LEGO mark without being aware of the Complainant’s rights to the LEGO Trademark, so the registration of the Disputed Domain Name by the Respondent was clearly in bad faith.
The Complainant further contends that the at the time of filing of the Complaint, had employed a privacy service to hide its identity which past UDRP Panels have held to serve as evidence of bad faith registration and use.
The Respondent has used the Disputed Domain Name to attract individuals/users for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement. The Disputed Domain Name was registered and is being used by the Respondent in bad faith. Thus, the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith registration under the UDRP Policy and the Complainant requests for the transfer of the Disputed Domain Name.
Furthermore, the Complainant contends that trying to solve the matter amicably, it tried to contact the Respondent three times with a request to voluntary transfer the Disputed Domain Name and even offered compensation for the out-of-pocket expenses of registration and transfer fee, however, no reply was ever received. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent did not file a Response, nor in any other way replied to the communications of this proceeding. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favour of the complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy.
Although the panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(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
The Panel finds that the Complainant has provided more than satisfactory evidence that it has established rights in its LEGO Trademark on the basis of its wide portfolio of trademark registrations worldwide, encompassing several jurisdictions.
In several UDRP decisions, various panels have found that the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusingly similarity for the purpose of the Policy. (See Oki Data Americas, Inc. v. the ASD, Inc,WIPO Case No. D2001-0903; Go D, Inc. v. Shoneye’s Enterprise,WIPO Case No. D2007-1090; Qalo, LLC v. Chen Jinjun and Magnum Piering Inc v. The Mudjackers,WIPO Case No. D2000-1525).
In the said backdrop, the Panel finds that the Disputed Domain Name is confusing similar to the Complainant’s registered and well-known LEGO Trademark. The Disputed Domain Name incorporates the Complainant’s LEGO Trademark in its entirety. The Panel further agrees with the Complainant’s submission that the addition of a hyphen and the suffix “caizhuang” does not in any way disguise the confusing similarity of the Disputed Domain Name with the Complainant’s registered and well‑known LEGO Trademark.
Accordingly, the Panel finds that the Disputed Domain Name is confusing similar to the Complainant’s registered and well-known LEGO Trademark. The Panel therefore holds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed domain name, which the Respondent may rebut (See Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455). The burden of production therefore shifts to the Respondent to come forward with evidence of a right or legitimate interest in the Disputed Domain Name, once the Complainant has made a prima facie showing (see Document Technologies, Inc. v International Electronic Communications Inc.,WIPO Case No. D2000-0270).
Given that the Respondent was duly notified of the Complaint and has chosen not to rebut it on merits, the Panel draws an adverse inference against the Respondent with respect to the allegations made by the Complainant, from the silence of the Respondent. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. In any event, the Panel has also carefully reviewed the material on record and has arrived at the following conclusions:
(i) The Complainant has effectively demonstrated that it is the registered proprietor and owner of the LEGO Trademark, the rights in respect of which have accrued in the Complainant’s favour long prior to the Respondent’s registration of the Disputed Domain Name on November 24, 2018.
(ii) The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, in view of the Respondent not having any registered trademarks or trade name corresponding to the Disputed Domain Name. The Respondent does not have any rights in the LEGO Trademark that can be established by a legitimate noncommercial or fair use.
(iii) The Panel finds that no license or authorization of any other kind has been given by the Complainant to the Respondent to use its registered and well-known LEGO Trademark.
(iv) The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods and services, or a legitimate, noncommercial or fair use of the Disputed Domain Name. According to the evidence presented by the Complainant (Annex 11 to the Complaint) and a review made by the Panel, the Respondent is operating a fully functional website on the Disputed Domain Name and is offering online lottery gaming services.
(v) The Respondent has registered the Disputed Domain Name with the sole intention to make Internet users think that it is somehow connected or affiliated with the Complainant, which is not the case. Therefore, the Panel concludes that the Disputed Domain Name has been registered and is being used by the Respondent for wrongly free riding on the Complainant’s goodwill and reputation.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests to use the Disputed Domain Name. Therefore, the second element in paragraph 4(a) of the Policy has been satisfied by the Complainant. C. Registered and Used in Bad Faith
The Complainant’s LEGO Trademark has acquired the status of a well-known mark has been recognized by previous UDRP Panels in LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715; LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680, and LEGO Juris A/S v. Level 5 Corp,WIPO Case No. D2008-1692. It is obvious that over the years of use of the LEGO Trademark, the Complainant has made great efforts to promote its trademark and its fame throughout the world. Taking into consideration the global fame and reputation of the Complainant’s LEGO Trademark, it is impossible that the Respondent was unaware of the Complainant’s brand and business at the time of registration of the Disputed Domain Name.
By virtue of the Complainant’s widespread reputation, use and trademark registrations, the Panel finds it clear that the Respondent ought to have constructive notice of the Complainant’s rights in the LEGO Trademark at the time of registration of the Disputed Domain Name. Some notable decisions stating that:
(i) The Respondent should have known of the Complainant’s trademark if it is shown to be well-known or in wide use on the Internet or otherwise and;
(ii) Such knowledge of the Respondent is an indicator of bad faith of the Respondent in registering the Disputed Domain Name.
See Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0032; and SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092.
Moreover, by completely incorporating the Complainant’s LEGO Trademark in the Disputed Domain Name and using it for an active website, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s 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 service on the Respondent’s website or location. The Respondent is also taking advantage of the users’ confusion for its own commercial advantage.
The Respondent’s use of the Disputed Domain Name is neither a legitimate noncommercial nor fair use without intent for commercial gain but is in fact misleadingly diverting consumers to another website for making commercial gains through online gambling activities.
The Respondent registered the Disputed Domain Name on November 24, 2018. This date is subsequent to when the Complainant registered the LEGO Trademark in China, United States, and elsewhere, by decades. It is obvious to the Panel that it that it was the fame of the LEGO Trademark that motivated the Respondent to register the Disputed Domain Name. The Respondent cannot claim to have been using the trademark LEGO without being aware of the Complainant’s rights to it.
The bad faith of the Respondent is further evident from the unresponsive attitude of the Respondent to the Complainant’s cease and desist letter dated December 17, 2018, and two additional reminders dated December 27, 2018, and January 3, 2019, the same being a deliberate attempt to overlook the Complaint’s rights to the LEGO Trademark.
Lastly the Respondent, at the time of filing of the Complaint, had employed a privacy service to hide its identity. The Panel finds that the Respondent’s use of a privacy or proxy service which may be used to block or intentionally delay disclosure of the identity of the actual underlying registrant supports an inference of bad faith. The Panel finds the said view to be consistent with previous UDRP Panel decisions and WIPO Overview 3.0, section 3.6. 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.
Shwetasree Majumder
Sole Panelist
Date: April 15, 2019
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