Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
Respondent is Zhijun Guo of Shanghai, the People's Republic of China.
The disputed domain names <legodb.com>, <legodb.net>, <legodb.org>, <legotemple.com>, <legotemple.net>, <legotemple.org> are all registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2009. On February 12, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On February 12, 2009, GoDaddy.com, Inc. 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 February 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2009. The Response was filed with the Center on March 12, 2009.
On March 17, 2009 the Center received unsolicited Supplemental filings from Complainant.
On March 24, 2009 the Center received unsolicited Supplemental filings from Resondent.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on March 19, 2009. 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 based in Denmark and holds an impressive list of trademarks registered all over the world, including China. Complainant uses these trademarks in connection with the famous LEGO brand of construction toys and other LEGO branded products.
Complainant works with licensees who are authorized to exploit Complainant's intellectual property rights, including its trademark rights. Licensees are active all over the world, including China.
Complainant opened its flagship store in China at the World Shopping Mall in Beijing in September 2007. The first trademark registration for LEGO in China took place in 1984. LEGO has been present in China for 15 years
The disputed domain names were registered on October 21, 2008. Visitors to an URL including the domain names end up on a page, called “landing” or “parking” page.
Complainant considers the disputed domain names to be identical or confusingly similar to the trademarks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain names. Finally, Complainant considers that the domain names were registered and are being used in bad faith.
Respondent says he is a member of “Shanghai LEGO fan community” and alleges he helped the Shanghai Office of Complainant to redecorate its retail store in what he calls the “Shanghai Super Brand Mall” on late September and early October 2008 in order to welcome Complainant's CEO's 50 years celebrating visit to China on October 2008.
He says he decided to build a new database containing only LEGO themes, sets and parts information, and to integrate all functions spread around existing sites into it.
By registering these domains at the same time on October 21, 2008, Respondent says he showed his seriousness in these domain names and his new web site.
Respondent further fully admits Complainant's rights to the trademark LEGO. He also agrees that the trademark LEGO is a well-known trademark.
For Respondent, “db” is a common abbreviation for the word “database” and his database contains information only related to LEGO.
He also contends that his database contains nothing but LEGO related information and that it cannot be readily identified without the lego-prefix. He only uses as much of the mark as is necessary to identify the web site and he does nothing with the mark to suggest that he has been given approval. On the contrary, Respondent says he headed his web site with “Unofficial LEGO Database” followed by the disclaimer: “This is a fan created LEGO website which is not sponsored, authorized, or endorsed by the LEGO Group. LEGO is a trademark of the LEGO Group. Visit the official LEGO website: www.LEGO.com”.
Respondent therefore alleges that his usage of the lego-prefix in the disputed domain name <legodb.com> is only a nominative use. He believes that visitors would not take the <legodb.com> for a LEGO branded database software since the database software is not a daily product.
Respondent says that from the list provided by Complainant, he found no domain name that would be misspelled as <legodb.com>.
He also argues that it is irrelevant to know whether he is an authorized dealer to conclude whether or not he has a legitimate interest.
Ultimately, Respondent is of the opinion that there is simply no evidence to indicate Respondent registered the domain names in bad faith.
Respondent finally alleges that he has no access to the Go Daddy's default parking page. He says he hasn't any idea what this page is.
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name.
Thus for Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy that:
1. The domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the domain names; and
3. The domain names have been registered and are being used in bad faith.
The Panel will therefore deal with each of these requirements in turn.
1. Complainant has rights in a registered trade mark
The Panel finds that Complainant has proven that it owns rights in the registered LEGO trade mark.
Furthermore, Complainant's evidence in support of its use of the LEGO trade mark and the fact that it is well known was not contested by Respondent.
Even though not a requirement under this element of the Policy, the Panel also finds that Complainant has established that the LEGO trade mark is well known.
2. The disputed domain names are confusingly similar to Complainant's trademark
The Panel agrees with Complainant that the word “lego” is the dominant part of the disputed domain names.
Respondent's argument according to which the “lego” word would be the prefix of “db” or “temple” is simply inaccurate. “db” and “temple” clearly are suffixes of the “lego” word.
The “lego” word is identical to the registered trademark LEGO.
The disputed domain names are confusingly similar to Complainant's trademark LEGO. The addition of the suffix “temple” and “db” is not relevant and will have no impact on the overall impression of the dominant part of the domain names, “lego”.
Confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of prefixes and suffixes.
Also, the addition of extensions, such as the top-level domain extensions as “.com”, “.org” and “.net” does not have any impact on the overall impression of the dominant portion of the disputed domain names and is therefore irrelevant to determine the confusing similarity between the trademark and the disputed domain names. Anyone who sees the disputed domain names is bound to mistake them for names related to Complainant's trademarks. The likelihood of confusion includes an obvious association with the trademarks of Complainant.
Moreover, the Panel agrees with Complainant that there is a considerable possibility that the public will perceive Respondent's domain names either as domain names owned by Complainant or that there is some kind of commercial relation with Complainant.
A number of panels have found that the use of a domain name that incorporates a registered trade mark to establish a genuine noncommercial fan club may constitute legitimate, noncommercial or fair use of that domain name. The circumstances indicated above persuade this Panel that a finding of such use is not warranted in this instance.
See also the panel decision in the recent Eddy Merckx Rijwielen Cycles NV v. Irfan Khalil, WIPO Case No. D2009-0074.
The factual circumstances in this matter are that the website attached to the disputed domain names points to a parking site which in turn contained and contains links to other websites that mainly do not contain a clear reference to the LEGO trademark.
The panel in Do The Hustle LLC v Tropic Web, WIPO Case No. D2000-0624 summarised the burden of proof in respect of paragraph 4(a)(ii) of the Policy, namely that once Complainant has asserted that Respondent has no rights or legitimate interest, the burden of proof shifts to Respondent. Respondent must then make more than an assertion that it has rights or legitimate interests and must provide factual evidence in support of its claim. Paragraph 4(c) of the Policy provides circumstances whereby Respondent may demonstrate his rights or legitimate interests in a domain name.
Here, the Panel finds that Complainant has discharged its onus in proving prima facie that Respondent does not have rights or legitimate interests in the disputed domain name. It is thus incumbent on Respondent to provide factual evidence in support of its claims.
The mere registration of the disputed domain names does not give the holder a right or a legitimate interest in respect of the domain names.
The Panel is of the opinion that Respondent also lacks any legitimate interest for the following reasons.
Respondent is not connected to the disputed domain names either through its name or its business.
No license or authorization of any other kind was given by Complainant to Respondent to use the trademark LEGO. Also, Respondent is not an authorized dealer of Complainant's products and has never had a business relationship with Complainant.
Therefore, in the absence of any license or permission from Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, no actual or contemplated bona fide or legitimate use of the domain names can be claimed by Respondent in this case.
Also, while Respondent claims that he intends to establish a fan site for the famous LEGO products, he is currently not doing so. Moreover, he has not provided any evidence of any work done in connection with the establishment of such a site.
“db” and “temple” could refer to some structured or essential information. The Panel finds that Respondent has not provided any evidence of any work done in connection with the establishment of such structure or information.
As LEGO is a famous trademark worldwide, Respondent cannot claim to have been legitimately using the name LEGO, without being aware of the Complainant's rights to it.
Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Rather, his real intention was to redirect Internet users to commercial web sites via a parking page.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith.
It is not sufficient, however, for Complainant to demonstrate only use in bad faith. The domain names must also have been registered in bad faith.
Respondent denies that the parking sites were connected to the disputed domain names with his knowledge. Previous panels have on numerous occasions found that respondents are ultimately responsible for automatically generated content on their disputed domain names. See, e.g., Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ, WIPO Case No. D2007-1079 and Grisoft, s.r.o. v. Original Web Ventures Inc., WIPO Case No. D2006-1381. Even if the Panel would accept Respondent's lack of knowledge and responsibility for the parking page, then the alternative would be that Respondent is passively holding the disputed domain names. Previous panels have not hesitated to hold that the lack of active use of a disputed domain name or the use of the disputed domain name as a parking site, coupled with factors which include that the trade mark is well known, may constitute bad faith.
When Respondent was sent a cease and desist letter, the web site was directing to commercial sites. Thereafter, Respondent started negotiations about his further use of the trademark in the disputed domain names and only then did he post on the web site the information “Unofficial LEGO Database” followed by the disclaimer:
“This is a fan created LEGO website which is not sponsored, authorized, or endorsed by the LEGO Group. LEGO is a trademark of the LEGO Group. Visit the official LEGO website: www.LEGO.com”
Consequently, before the cease and desist letter was sent Respondent was actually using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website.
Whether or not Respondent has influenced what links should be included on the sites is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not Respondent is actually getting revenue from this page himself.
The fact that Respondent has registered in total six domain names incorporating the trademark LEGO, shows that the registrations are more than a “one time incident”. Rather, Respondent has created a pattern of LEGO domain name registrations
In conclusion, Respondent clearly has registered and used the disputed domain names in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <legodb.com>, <legodb.net>, <legodb.org>, <legotemple.com>, <legotemple.net>, <legotemple.org> be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Dated: April 3, 2009