Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
Respondent is Liu Ronghua of Shenzhen, Guangdong, Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name (“the 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 15, 2013. On August 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 11, 2013.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 19, 2013. 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 LEGO Juris A/S, based in Denmark, owns many trademark registrations around the world for the LEGO Mark. Respondent is based in China where Complainant holds a Chinese trademark registration for the LEGO Mark (registration number 3850443) that it registered in 1994, before Respondent registered the Domain Name on August 14, 2011.
Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in China and elsewhere. Complainant and its licensees (collectively “the LEGO Group of Companies or the LEGO Group”), through their predecessors, began using the LEGO Mark in the United States in 1953 to identify construction toys made and sold by them.
The LEGO Mark is known worldwide in part due to decades of use on products, packaging, displays, advertising, and promotional materials. For instance, the LEGO Mark was rated eighth on a list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK. The LEGO Group has expanded its use of the LEGO Mark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive web site under the domain name . Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in China (see “www./zh-cn/”). Complainant opened its flagship store in China at the World Shopping Mall in Beijing in September 2007. It has been present in China for 15 years.
Complainant is also the owner of more than 2400 domain names containing the LEGO Mark, among these is . 5. Parties’ Contentions A. Complainant
The dominant part of the Domain Name comprises the word “lego”, which is identical to the registered LEGO Mark. The fame of the LEGO Mark has been confirmed in numerous previous UDRP decisions. Adding the top-level domain “.bz” does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine the confusing similarity between the LEGO Mark and the Domain Name.
Because of the reputation of the LEGO Mark, there is a considerable risk that the public will perceive the Respondent’s Domain Name either as a domain name owned by Complainant or that there is some kind of commercial relation with Complainant. By using the LEGO Mark as a dominant part of the Domain Name, Respondent exploits the goodwill and the image of the LEGO Mark.
Respondent does not have any registered trademarks or trade names corresponding to the Domain Name. Complainant also has not found anything that would suggest that Respondent has been using the LEGO Mark in any manner that would give them any legitimate rights in it. Complainant has not licensed or authorized Respondent to use the LEGO Mark. The mere registration of a domain name does not give the owner a right or a legitimate interest in the domain name.
Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. She has intentionally chosen a domain name based on a registered trademark to generate traffic to a commercial site. The site at the Domain Name is maintained in Russian and displays listings on LEGO products for sale. Further, Respondent does not qualify under the criteria laid down in the Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 and described in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), even if Respondent were to be treated as an authorized reseller, which she is not. Furthermore, Respondent uses the Domain Name for commercial gain, because Respondent’s website offers Complainant’s products for sale.
The LEGO Mark with respect to toys has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world. The considerable value and goodwill of the LEGO Mark is most likely what made Respondent register the Domain Name. Respondent contacted Complainant on August 9, 2013 to see if Complainant was interested in the Domain Name. In the email, Respondent stated she had emailed two days before but had not received a response. Complainant replied and asked for a voluntarily transfer of the Domain Name. Respondent said she had acquired the Domain Name on auction and paid USD 1,190 for the Domain Name and this is what Respondent requested Complainant to pay. The initial contacts surrounding the Domain Name were made by Respondent and it is apparent that she contacted Complainant to try and sell the Domain Name. Complainant advised Respondent it would not pay such amount but could pay the registration fees for the Domain Name. Since the efforts of trying to solve the matter amicably were unsuccessful, Complainant chose to commence this proceeding. Respondent has chosen a Domain Name based on a registered trademark to generate traffic to her website where LEGO products are sold. Consequently, Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with Complainant’s LEGO Mark as to the source, sponsorship, affiliation or endorsement of the websites. Whether Respondent is getting revenue from the products being sold at the website is irrelevant for the finding of bad faith in this case. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the LEGO Mark both by its trademark registrations (e.g., in China) and its long-standing use, and that the Domain Name is identical, if not confusingly similar, to the LEGO Mark. It is well accepted that a generic top-level domain suffix, in this case “.bz” may be ignored when assessing the similarity between a trademark and a domain name. See, e.g., LEGO Juris A/S v. 4ex-invest/Umbo,WIPO Case No. D2012-2059.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Complainant must prove Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant makes a prima facie showing that a respondent has no rights or legitimate interests in a domain name, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with Complainant. See Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant’s uncontested facts establish: (1) Complainant has not licensed or otherwise permitted Respondent to use the LEGO Mark in any manner including as a domain name; (2) Respondent has not used or prepared to use the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services (the Panel finds Respondent’s use of the Domain Name is an infringing one); (3) Respondent has not been and is not commonly known by the Domain Name; and (4) Respondent is not making a legitimate noncommercial or fair use of the Domain Name (the site associated with the Domain Name is maintained in Russian and appears to display LEGO brand products for sale, also it appears Respondent obtained the Domain Name at auction to sell it at least to Complainant for a profit).
Once prima facie evidence has been adduced, as in the present case, it is then incumbent upon the Respondent to rebut the Complainant’s evidence. In this case, because Respondent has failed to file a Response, the Panel finds that Complainant’s facts are to be taken as proven.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and used in bad faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the 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] website or location or of a product or service on [the respondent’s] web site or location.”
The Panel finds Respondent registered the Domain Name in bad faith. Complainant has clearly established the long term and worldwide reputation of the LEGO Mark, including in China, well before Respondent registered the Domain Name. On this basis alone, the Panel finds that it is highly likely Respondent knew of the LEGO Mark when it registered the Domain Name. Further evidence of such knowledge is the fact that Respondent has been operating a website that was designed to suggest it was associated with Complainant, using the Domain Name , to sell what appears to be LEGO brand toys. Thus, obtaining a Domain Name that incorporates the entirety of the LEGO Mark was not happenstance.
With regard to bad faith use, the Panel finds that by using the Domain Name, which consists of Complainant’s well-known LEGO Mark, in conjunction with a website that appears to be selling LEGO brand toys, and using the LEGO Mark in various places on the site, and using names/themes of Complainant’s toys (e.g., Chima, Ninja Turtles, the Hobbit, Lego Exclusives), Respondent has intentionally attempted to attract, for commercial gain, Internet users to her web site by creating a likelihood of confusion with Complainant’s LEGO Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Further evidence of Respondent’s bad faith is the fact that Respondent sought to extract USD 1,190 from Complainant and if that did not work Respondent represented in an email to Complainant: “But I have to offset my costs to buy the domain at auction. So I better selling this domain for people who sell Lego in Russia or Ukraine. They will offer more and I will be able to compensate for most of the costs – Sincerely Liu”. This is evidence indicating that Respondent registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the registration to Complainant who is the owner of the LEGO Mark or to a competitor of Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Domain Name be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Date: September 25, 2013
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