Complainant is LEGO Juris A/S, Billund of Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Ningbo LEGO Culture Communication Co., Ltd., of Ningbo, China.
The disputed domain name <legole.net> is registered with HiChina Zhicheng Technology Ltd.
(the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2013. On July 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On July 9, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceedings. On the same day, the Complainant confirmed its request that English be the language of the proceedings. On July 11, 2013, the Respondent submitted a request that Chinese be the language of the proceedings
The Center verified that the Complaint together with the amendment to 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 July 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified Respondent’s default on August 8, 2013. The Center received Respondent’s pre-commencement communications by e-mail on July 9, 2013.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on August 16, 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.
Complainant is a limited company incorporated in Denmark that makes and sells the LEGO brand of construction toys and other LEGO branded products. Complainant owns a large number of trademarks in a variety of countries worldwide. Specifically at issue here, in 1994, Complainant received Chinese trademark registration number 3850443 for the word LEGO. One product offered by Complainant is its “LEGO Education” services. Complainant offers this service in China through three separate distributors. Based on Complainant’s submissions and representations, Respondent is not an authorized distributor.
Respondent in this matter, according to the WhoIs database, is Ningbo LEGO Culture Communication Co., Ltd. Respondent created the disputed domain name on March 27, 2013.
Complainant argues (1) that the disputed domain name <legole.net> is identical or confusingly similar to Complainant’s LEGO trademark, (2) that the Respondent has no rights or legitimate interests in the disputed domain name, and (3) that Respondent registered and used the disputed the domain name in bad faith.
Complainant argues that the disputed domain name is identical or confusingly similar to Complainant’s “world famous” LEGO trademark because it incorporates that trademark in its entirety and only adds two letters “le”.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has not received license or authorization to use the LEGO trademark and because Respondent has never had a business relationship with Complainant. Complainant notes that Respondent has not stated (through its websites or otherwise) that is has any such authorization from or relationship to Complainant.
Complainant argues that Respondent registered and used the disputed domain name in bad faith because Respondent is using the disputed domain name to intentionally attempt to attract Internet users, for commercial gain, to Respondent’s website and because Respondent likely knew of Complainant’s famous LEGO trademark when it registered the disputed domain name.
Respondent did not submit a formal response or any evidence to rebut any Complainant’s contentions.
Complainant has requested that English be recognized as the language of the proceeding. Respondent requested that Chinese be the language of proceedings. While the language of the registration agreement for the disputed domain name is likely in Chinese, Complainant’s request to avoid the burden of translating the Complaint into Chinese is persuasive in light of the English influences found in the website at issue, Respondent’s failure to submit a formal Response in this proceeding, and the recently decided LEGO Juris A/S v. zhang dengfeng, WIPO Case No. D2012-0681decision quoted by Complainant. For these reasons, the Panel concludes that English should be the language of the proceedings.
According to paragraph 4(a) of the Policy, for this Complaint to succeed, Complainant must prove each of the following:
(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 respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
The inclusion of the entire LEGO trademark within the disputed domain name militates strongly against Respondent. The addition of two letters to Complainant’s famous LEGO trademark in the disputed domain name cannot overcome a finding of confusing similarity. “In most cases where a domain name incorporates the entirety of a trade mark, then the domain name will for the purposes of the Policy be confusingly similar to the mark.” Research in Motion Ltd. v. One Star Global LLC, WIPO Case No. D2009-0227. Further, the use of the LEGO trademark at the beginning of the disputed domain name increases the confusing similarity. Here, the disputed domain name standing alone is confusingly similar to Complainant’s trademark. “The issue is not whether confusion is likely in the trade mark sense (that is, confusion as to source based on the domain name and its use in connection with a website), but rather, whether the domain name, standing alone, is sufficiently similar to the trade mark to justify moving on to other elements of a claim for cybersquatting.” F. Hoffman-La Roche AG v. P. Martin, WIPO Case No. D2009-0323. The strength and global profile of the LEGO trademark supports Complainant’s contention that anyone seeing the disputed domain name would be “bound to mistake” it for a domain name owned and operated by Complainant. Previous UDRP decisions have noted the strength and global of the LEGO trademark which make Respondent’s inclusion of the LEGO trademark in the disputed domain name even more confusing. See LEGO Juris A/S v. Rampe Purda , WIPO Case No. 2010-0840; LEGO Juris A/S v. Domain Administrator, WIPO Case No. 2010-1260; LEGO Juris A/S v. Reginald Hastings Jr , WIPO Case No. D2009-0680.
The Panel concludes that the disputed domain name is confusingly similar to Complainant’s LEGO trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
The Panel finds that no evidence exists in the record to indicate that Respondent has any rights or legitimate interests either in the term “lego” or “legole”; further, no evidence exists in the record to indicate that Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use, or that Respondent is commonly known by the disputed domain name. Further still, no evidence exists in the record to indicate that Respondent has any association or affiliation with Complainant to create any right or legitimate interest in the “LEGO education” content found in the website resolving from the disputed domain name. Complainant has thus presented a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted a formal response or any evidence to rebut Complainant’s case.
The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
The use of a domain name featuring a trademark to advertise goods or services that compete with those provided under that trademark supports a finding that the domain name registrant was aware of the other party’s trademark at the time the domain name was registered. See Lancôme Parfums et Beaute & Comagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728. Respondent’s use of the LEGO trademark in a website closely resembling Complainant’s LEGO Education website (in the absence of authorization to do so by Complainant) thus establishes Respondent’s bad faith in the use of the disputed domain name. As discussed above, the record indicates that Respondent has no rights or legitimate interests in the form of a license or authorization or otherwise in Complainant’s LEGO trademark or in Complainant’s LEGO Education services.
Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. By registering the disputed domain name using Complainant’s LEGO trademark and LEGO Education content, Respondent is intentionally diverting traffic from Complainant’s business and websites. The incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the website linked to the disputed domain name, establishes an intent to deceive consumers into believing that the disputed domain name is associated with, affiliated with, and/or endorsed by Complainant and cannot constitute a bona fide use. Neither the record nor Respondent provides any evidence to the contrary. The Panel concludes that Respondent’s conduct falls within the scope of paragraph 4(b)(iv) of the Policy.
The Panel finds that the requirements of Paragraph 4(a)(iii) of the Policy have been satisfied.
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 <legole.net> be transferred to Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: August 28, 2013