The Complainant is Lego Juris A/S of Billund, Denmark.
The Respondent is Hu Liang/Dolego of Changsha, Hunan Province, People's Republic of China.
The disputed domain names <dolego.com> and <dolego.net> are registered with Xin Net Technology Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2009. On June 26, 2009, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain names. On June 29, 2009, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain names. In response to a notification by the Center concerning the details of the Respondent, the Complainant filed an amendment to the Complaint on July 1, 2009 naming both Hu Liang and Dolego as the Respondent. On July 1, 2009, the Center transmitted an email to the parties in Chinese and in English regarding the language of proceeding. The Complainant included in the Complaint a request that English be the language of proceeding. The Respondent did not file any submissions with respect to the language of the proceeding by the due date (July 8, 2009). However, in subsequent correspondence with the Center, the Respondent requested that Chinese be the language of the proceeding, and its Response filed on July 27, 2009 was filed in Chinese language.
The Center has verified that the Complaint together with the amendment to the Complaint satisfies 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 the Respondent of the Complaint, and the proceeding commenced on July 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 30, 2009. The Response was filed with the Center on July 27, 2009.
The Center appointed Sebastian Hughes as the sole panelist in this matter on July 31, 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.
The Complainant is a Danish company and the owner of trade mark registrations for the LEGO word and stylised word trade marks in numerous countries worldwide, including China, the priority dates of which registrations predate the date of registration of the disputed domain names (the “Trade Marks”).
The Complainant is also the owner of more than 450 domain names containing the word “lego”.
The Respondent is an individual with an address in China.
The disputed domain names were registered on June 20, 2008 and November 21, 2008 respectively.
The following facts are alleged by the Complainant in the Complaint.
The Complainant is the owner of the Trade Marks used in connection with the famous Lego brand of construction toys and other Lego branded products. The Complainant's licensees are authorised to exploit the Complainant's intellectual property rights, including its trade mark rights, in China and elsewhere.
The Complainant opened its flagship store in China at the World Shopping Mall in Beijing in September 2007. The Complainant has been present in China for 15 years. The Complainant first commenced use of the Trade Marks in the United States of America in 1953 in respect of construction toys made and sold by the Complainant.
The Complainant's use of the Trade Marks has been extensive, exclusive and continuous since 1953. Over the years, the business of making and selling LEGO brand toys has grown remarkably. Sales of Lego construction toys in the US alone far exceed USD1 billion over the last 10 years.
The trade mark LEGO is among the best-known trade marks in the US and around the world, due to decades of extensive advertising, which prominently depicts the Trade Marks on all products, packaging, displays, advertising, and promotional materials. US media advertising expenditure by the Complainant during the past ten years exceeded USD50 million. Virtually all parents and children in the US, and likely throughout the world, are familiar with the LEGO name and mark, and with Lego products and services thereby identified.
The LEGO trade mark and brand have been recognized as being famous by publications such as The World's Greatest Brands and Famous Brands.
The Complainant has expanded its use of the Trade Marks to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.
The Complainant also maintains an extensive website under the domain name <lego.com>.
The Trade Marks are in possession of substantial inherent and acquired distinctiveness. The awareness of the Trade Marks is considered in the whole community to be significant. According to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property, confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, the statute of a well-known trade mark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trade mark is registered). Thus, the protection for LEGO goes far beyond toys and goods similar to toys.
A. The disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The dominant part of the disputed domain names comprises the word “lego”, which is identical to the Complainant's registered trade mark LEGO.
The disputed domain names are confusingly similar to the Trade Marks. The addition of the prefix “do” is not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO, instantly recognisable as a world famous trade mark. It is a long-established precedent that confusing similarity is generally recognized when well-known trade marks are paired up with different kinds of prefixes and suffixes.
The addition of the top-level domains “.com” and “.net” do not have any impact on the overall impression of the dominant portion of the disputed domain names and are therefore irrelevant to determine the confusing similarity between the Trade Marks and the disputed domain names.
Anyone who sees the disputed domain names is bound to mistake them for a name related to the Complainant. The likelihood of confusion includes an obvious association with the Trade Marks. With reference to the reputation of the Trade Marks there is a considerable risk that the trade public will perceive the disputed domain names either as domain names owned by the Complainant or that there is some kind of commercial relationship with the Complainant. The Trade Marks also risk being tarnished by being connected to a website. By using the Trade Marks as a dominant part of the disputed domain names, the Respondent exploits the goodwill and the image of the Trade Marks, which may result in dilution and other damage to the Trade Marks. Persons seeing the disputed domain names, even without being aware of the content, are likely to think that the disputed domain names are in some way connected to the Complainant.
B. The Respondent has no rights or legitimate interests in respect of the disputed domain names
The Complainant has not found that the Respondent has any registered trade marks or trade names corresponding to the disputed domain names. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in the name.
No licence or authorisation of any other kind has been given by the Complainant to the Respondent to use the Trade Marks. The Respondent is not an authorised dealer of the Complainant's products and has never had a business relationship with the Complainant.
The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.
LEGO is a famous trade mark worldwide and an extremely valuable asset. It is highly unlikely that the Respondent would not have known of the Complainant's legal rights in the name at the time of registration. It is rather obvious that it is the fame of the trade mark that has motivated the Respondent to register the disputed domain names. That is, the Respondent cannot claim to have been using LEGO, without being aware of the Complainant's rights to it. This, among other facts, proves that the Respondent's interests cannot have been legitimate.
The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy. The Respondent cannot plausibly argue that he did not intentionally adopt his website so as to benefit from the goodwill of the LEGO mark.
Instead the respondent is using the disputed domain names in connection with a website selling china (the “Website”). By doing this, the Respondent is misleading Internet users to a commercial Website and, consequently, the Respondent is tarnishing the Trade Marks. The Website has an estimated traffic level of 150,250 visits per day which is considered to be fairly high as to its nature of being an online shop. The layout of the Website has changed since the cease and desist letter was sent out but the disputed domain names are still connected to the Website.
No evidence has been found that the Respondent uses the name as a company name or has any other legal right in the name LEGO.
C. The disputed domain names were registered and are being used in bad faith
The Complainant first tried to contact the Respondent on May 4, 2009 through a cease and desist letter, both by e-mail and postal mail. No reply was received so a reminder was sent on May 14, 2009. No reply was received so a final reminder was sent out on May 25, 2009. During this time the Complainant found that the Respondent also owns the domain name <dolego.net>.
The fact the Respondent registered both “.net” and “.com” domain names for “dolego” is also evidence of the Respondent's desire to divert as many potential Internet users as possible towards the Website. The Respondent is 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 the Trade Marks as to the source, sponsorship, affiliation or endorsement of the Website.
The use of the well-known trade mark LEGO as the dominant part of the disputed domain names indicates that the Respondent is well aware of the attraction the mark LEGO represents. This creates a confusingly similar domain name and weighs in favor of a finding bad faith.
No disclaimer is found on the Website, and even if a disclaimer should be found the mere existence of a disclaimer cannot cure bad faith, when bad faith has been established by other factors.
LEGO is a famous trade mark world wide. There is no doubt that the Respondent was aware of the rights the Complainant has in the Trade Marks and the value of the Trade Marks, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the disputed domain names the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for the Respondent's own commercial gain.
The Respondent should be considered to have registered and to be using the disputed domain names in bad faith.
The following facts are alleged by the Respondent in the Response.
The Respondent rarely checks his email box. Additionally the Respondent's English is not good and therefore all the previous email from the Center was deleted as junk email. On July 15, 2009, the Respondent received a Notification of Complaint and Commencement of Administrative Proceeding from the Center informing the Respondent that an administrative proceeding had been commenced by the Complainant in accordance with the Policy and the Rules. The Center set July 30, 2009 as the last day for the submission of a Response by the Respondent.
A. The disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
Before the Respondent received the Complaint, the Respondent had never heard of the Complainant and had no idea of its existence. After the Respondent received the Complaint, the Respondent visited the website of the Complainant and obtained a screenshot of its logo as follows:
The Complainant's logo is hugely different from the logo the Respondent has used for the Website (see below) and there is nothing identical or confusing similar between the Complainant's logo and the Respondent's logo:
As is shown above, the Website logo is significantly different from the Complainant's logo and such difference is very easy to distinguish. It is groundless to believe a domain name with the letters of LEGO is identical or confusing similar to the Complainant's trade mark. If the Complainant's argument can be justified, would domain names such as <xxxlego.com>, <xxxlezgoxxx.com>, <xlego.com>, <legox.com>, <xlegox.com>, <xxlegox.com>, <xlegoxx.com>, <xxlegoxx.com>, <xxxlegox.com>, <xxxxlegoxx.com> and etc all be subject to the Complaint by the Complainant based on the reason of being identical or confusing similar with the trademark?
B. The Respondent has no rights or legitimate interests in respect of the disputed domain names
The Respondent registered the disputed domain names with an international domain name registrar authorised by ICANN through lawful and legitimate means on June 20, 2008 and November 21, 2008 respectively. The Respondent has all the rights and legitimate interests in respect of the disputed domain names and possesses registration certificates for the disputed domain names.
Before the Respondent received notice of this Complaint, the disputed domain names were used by the Respondent for testing and trial running of a local online shopping website and the Respondent had commenced preparations for use of the disputed domain names in connection with a bona fide offering of goods or services in Changsha, Hunan Province, China.
The Respondent is making a legitimate or fair use of the disputed domain names in respect of the Website, and the Respondent's customers are only limited to local residents in Changsha, Hunan Province, China, which are specifically targeted by the Respondent in a limited territory, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trade marks or service marks at issue.
C. The disputed domain names were registered and are being used in bad faith
The Respondent strongly opposes the Complainant's claims that the disputed domain names were registered in bad faith. The disputed domain names were registered purely from the simplified forms of Chinese pinyin “duolegou” and are closely connected with the Chinese characters of “多乐购”, serving as an integral part of the Website logo as follows:
The existence of the domain name <lego.com> was beyond the Respondent's knowledge when the Respondent registered the disputed domain names and the Respondent had no idea of the existence of the Complainant and the Trade Marks. Therefore the Respondent has not engaged in bad faith cybersquatting.
The disputed domain names were not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant, as the alleged owner of the Trade Marks, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain names.
The disputed domain names were not registered in order to prevent the Complainant from reflecting the Trade Marks in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct.
The Respondent and the Complainant are not competitors and the disputed domain names were not registered primarily to disrupt the Complainant's business. The Respondent is making a legitimate or fair use of the disputed domain names for the Website, and the Respondent's customers are only limited to those local residents in Changsha, Hunan Province, China which are specifically targeted in a limited territory, without intent for commercial gain or to misleadingly divert consumers or to tarnish the Trade Marks.
The disputed domain names were not registered in an intentional attempt to attract for commercial gain Internet users to the Website or other online location, by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation, or endorsement of the Website or other online location or of a product or service on the Website or other online location.
The language of the registration agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Respondent has an understanding of the English language;
(2) The Complainant sent its cease and desist letter in English. While the Respondent did not reply, the Respondent removed the LEGO trade mark from the Website following receipt of the cease and desist letter;
(3) It would be cumbersome and to the Complainant's disadvantage to be forced to translate the entire Complaint into Chinese.
Alternatively, the Complainant has requested it be allowed to submit its documentation in English, while the Respondent may still file in Chinese.
The Respondent did not make any submissions with respect to the language of the proceeding by the due date.
The Respondent did, however, by email to the Center sent after the due date, request that Chinese be the language of the proceeding.
The Respondent has not filed any submissions in support of its request, although the Respondent did state in the Response that the Respondent's English is not good.
On June 26, 2009, HiChina Zhicheng Technology Ltd transmitted by email to the Center its verification response confirming that the language of the registration agreement is Chinese.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
There is no evidence that the Respondent does not understand the English language, although the Respondent has stated in the Response that his English is “not good”.
The disputed domain names comprise romanised latin script and are not Chinese language domain names.
However, the Website is in Chinese language.
No evidence has been filed to suggest that the Respondent will be prejudiced, should English be adopted as the language of the proceeding. Further, the Complainant will be spared the burden of dealing with Chinese as the language of the proceeding if English is the language of the proceeding.
The Panel has taken into account the submissions filed by the Complainant and the UDRP decisions relating to this issue. The Panel does not find all of the submissions filed by the Complainant on the issue of the language of the proceeding persuasive. The Respondent's conduct post receipt of the Complainant's cease and desist letter in removing reference to LEGO from the Website does nonetheless suggest that the Respondent has an understanding of the English language, or means available to translate English language documents into Chinese.
Had the Respondent filed cogent submissions requesting that the language of the proceeding be Chinese within the deadline imposed by the Center, it is likely the Panel would have chosen Chinese as the language of the proceeding. However, absent any such submissions, and having considered all the matters above, the Panel determines under paragraph 11(a) that:
(1) the Complainant shall be entitled to file the Complaint in English language;
(2) the Respondent shall be entitled to file the Response in Chinese language; and
(3) the language of the Decision will be English.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) The disputed domain names are identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(3) The disputed domain names have been registered and are being used in bad faith.
The Panel finds that the Complainant has rights in the Trade Marks acquired through registration and use. The Panel also finds that the Trade Marks are famous or well-known trade marks within the toy manufacturing and retailing industry, including in China, where the Respondent is based.
The disputed domain names comprise the Trade Marks in their entirety. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
Generally a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it” (J. Thomas McCarthy, McCarthy on Trade Marks and Unfair Competition (4th ed. 1998)), General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087, PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Case No. 0500065).
It is also established that the addition of a generic term to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The Panel finds that the addition of the word “do”, meaning “to do”, as a prefix in front of the word “lego”, in the disputed domain names does little to distinguish the disputed domain names from the Trade Marks, and the likelihood of confusion between the disputed domain names and the Trade Marks is high.
The Panel finds the Respondent's submissions with regard to confusing similarity unconvincing.
Whether or not the Respondent had heard of the Complainant and/or the Trade Marks prior to registration of the disputed domain names is not relevant to the question of confusing similarity. Similarly, the content of the parties' respective websites is also not relevant to the question of confusing similarity.
If indeed the disputed domain names were chosen to reflect the (apparently unregistered) logo mark:
the appropriate domain names would have been <duolegou.com> and <duolegou.net> in order to accurately reflect the Chinese pinyin (romanised transliteration) of the Chinese characters “多乐购” comprised in the logo.
The Panel finds that the disputed domain names are confusingly similar to the Trade Marks.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(1) before any notice to the Respondent of the dispute, 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
(2) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(3) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent's registration and use of the disputed domain names. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services. The Panel finds that the use of the “Dolego.com” and “多乐购” logo on the Website from some time after May 4, 2009 to date does not afford the Respondent trade mark rights in respect of the disputed domain names.
The evidence shows that the Respondent has intentionally registered and used the disputed domain names for the purpose of attracting, for commercial gain, users to the Website.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
The Respondent's claims that the Respondent is making a legitimate non-commercial or fair use of the disputed domain names are not convincing.
Registration of the disputed domain names through an accredited Registrar, and the provision of registration certificates to the Respondent in respect of the disputed domain names, is not relevant to the question of rights or legitimate interests of the Respondent under the Policy.
Other than the bald assertion of the Respondent, the Panel can find no evidence that the Website is restricted only to residents of Changsha, Hunan Province, China. The Panel notes the Website is accessible, without restriction, to Internet users worldwide.
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the disputed 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.
By virtue of the use of the Trade Marks in the disputed domain names and the promotion of various china products on the Website, the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with the Respondent, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Website.
Prior to receipt of the Complainant's cease and desist letter, the logo used by the Respondent on the Website comprised the wording “Lecigo.com” in English language and “乐瓷购” in Chinese characters. The Panel finds that “Lecigo.com” is confusingly similar to LEGO. At some stage following receipt of the Complaint, this wording was removed from the Website and replaced with the “Dolego.com” and “多乐购” logo referred to above. The Panel finds that all of this conduct provides further evidence of bad faith on the part of the Respondent.
The Panel refers to and repeats its findings stated above in respect of (1) the “Dolego.com” and “多乐购” logo used on the Website; and (2) the Respondent's claim that the Website is only limited to residents of Changsha, Hunan Province, China.
The failure of the Respondent to respond to the letter of demand from the Complainant further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
The Panel would also note that the Respondent's claims (1) that he rarely checks his email box; and (2) that the Respondent's English is not good and therefore all the previous email from the Center was deleted as junk email, are not credible. The Panel notes that all communications from the Center to the Respondent were sent in both Chinese and English language.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain names, <dolego.com> and <dolego.net>, be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: August 13, 2009