Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Biao Zhang of Baotou, Neimenggu, China.
The disputed domain name <lego668.com> is registered with eNom (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2012. On September 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2012, 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 September 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2012. On September 24 and 30, 2012, Respondent sent emails to the Center regarding the language of the proceedings. Respondent did not submit any formal response.
The Center appointed Gary J. Nelson as the sole panelist in this matter on October 17, 2012. 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.
Complainant is the owner of numerous Trademark Registrations for the LEGO trademark, and at least one Chinese Trademark Registration for LEGO registered prior to January 30, 2012.
The disputed domain name appears to have been registered on January 30, 2012. The operational website at <lego668.com> resolves to an unrelated website (i.e. amazon.cn) for purchasing options.
Complainant has trademark rights in the LEGO trademark that were established prior to the registration of the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s LEGO trademark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
Complainant is the owner of the LEGO trademark, and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products.
Complainant’s licensees are authorized to exploit Complainant’s intellectual property rights, including its trademark rights, in China and elsewhere.
Complainant and its licensees commenced use of the LEGO mark in the United States of America in 1953 for construction toys. Over the years, the business of making and selling LEGO branded toys has grown dramatically. Revenue for the LEGO Group in 2009, was more than USD2.8 billion. Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in China. Complainant opened its flagship store in China at the World Shopping Mall in Beijing in September 2007.
Complainant owns more than 2,400 domain names containing the term “lego”.
The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.
The LEGO trademark and brand have been recognized as being famous.
The LEGO Group has expanded its use of the LEGO trademark to computer hardware and software, books, videos and computer controlled robotic construction sets, among other products and services. The LEGO Group also maintains an extensive web site under the domain name <lego.com>.
Respondent did not formally reply to Complainant’s contentions.
6.1 Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings.
In this case, the Panel notes Respondent has sent emails on September 24 and 30, 2012 to the Center in plain English claiming his English knowledge is limited and requesting the language of the proceedings be Chinese. However, considering the information provided by the Registrar that the language of the registration agreement is English, and the Complaint was filed in English, the Panel determines that English is the language of this proceeding.
6.2 Discussion
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Complainant has established that it owns prior rights in the LEGO trademark and the disputed domain name is confusingly similar to Complainant’s LEGO mark.
Complainant owns numerous trademark registrations for LEGO throughout the world. Complainant owns at least one valid Chinese Trademark Registration with a date of registration prior to the date upon which the disputed domain name was registered.
Accordingly, Complainant has established rights in its LEGO mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
The disputed domain name, <lego668.com>, is confusingly similar to Complainant’s LEGO trademark because the disputed domain name incorporates the entirety of Complainant’s LEGO trademark and merely adds the number “668” and the top-level domain “.com”. Neither the addition of a generic or a merely descriptive term to a well-known mark or the addition of a generic top-level domain is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of Complainant combined with a generic word or term); see also, Montage Hotels & Resorts, LLC v. Daniel Kirchhof/Unister GmbH, WIPO Case No. D2011-1042 (finding the addition of the geographic term “Beverly Hills” to Complainant’s MONTAGE trademark created a domain name <montage-beverly-hills.com> that was confusingly similar to Complainant’s trademark); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).
The addition of the number “668” immediately after Complainant’s LEGO mark is insufficient to avoid a finding of confusing similarity.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that Respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the number “668” or the word “lego,” or any combination of this number and word. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) respondent is not a licensee of complainant; (2) complainant’s rights in its related trademarks precede respondent’s registration of the domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its LEGO mark.
Complainant has provided unrebutted evidence showing that Respondent redirects an Internet user trying to access the website at “www.lego668.com” to a web page at “www.amazon.cn” for unrelated purchasing opportunities. Respondent’s decision to tack on the number “668” to a well-known trademark for the purposes of redirecting Internet users to a web page at “www.amazon.cn” does not instill Respondent with legitimate rights in the disputed domain name. See Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (finding that use of a famous trademark to attract the public to a website is not a fair or legitimate use of the domain name, and ordering the transfer of <chanelstore.com> and <chanelfashion.com> to complainant).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Given that Complainant owns and extensively promotes its well-known LEGO trademark in China where Respondent resides, the Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the LEGO trademark. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent chose [sic] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name [at issue]”).
The Panel also finds that Respondent’s use of the disputed domain name <lego668.com> is an attempt by Respondent to intentionally attract, for commercial gain, Internet users for the purpose of redirecting the Internet users to specific web pages at “www.amazon.cn”. Respondent is using the disputed domain name to create a likelihood of confusion with Complainant’s LEGO mark as to the source, sponsorship, affiliation, or endorsement of the products available at the specific “www.amazon.cn” web pages to which Internet users are redirected. This ongoing activity is a direct violation of paragraph 4b(iv) of the Policy, and is evidence of bad faith registration and use.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
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 <lego668.com> be transferred to Complainant.
Gary J. Nelson
Sole Panelist
Dated: October 30, 2012