The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Wang Xiaolong of Shang Hai, China.
The disputed domain name <legotoysmart.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2015. On December 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 2015, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2016.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on January 15, 2016. 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 the Danish company LEGO Juris A/S, with its head offices in Billund, Denmark. The Complainant has subsidiaries, branches and licensees around the world, including China, where the Respondent is located.
According to the list provided by the Complainant in Annex 6 to the Complaint, among other registrations in different countries for the mark LEGO, the Complainant owns the registrations Nos. 75.682 for LEGO, 135.134 and 206.919 for LEGO (and design), all in class 28, registered in China on December 22, 1976, January 25, 1980 and April 15, 1984, respectively.
The disputed domain name was registered on July 25, 2015. According to Annex 11 of the Complaint, the disputed domain name resolved to a website offering LEGO products and displaying the LEGO logotype.
The Complainant argues that the disputed domain name incorporates the Complainant’s trademark LEGO. The words “toys” and “smart/mart” would be generic and descriptive and would contribute to create an association to the Complainant and its trademark LEGO. The generic Top-Level Domain (“gTLD”) would be irrelevant to avoid confusion between the disputed domain name and the Complainant’s trademark.
The Complainant also alleges that it runs its own LEGO shop website under the domain name <shop.lego.com> and that the use of the words “toys” and “smart/mart” in the disputed domain name would create an impression of relationship between the disputed domain name and the Complainant.
According to the Complainant, its trademark LEGO is famous. The Complainant cites the following UDRP decisions in which the fame and reputation of the trademark LEGO were recognized: LEGO Juris A/S v. Level 5 Corp, WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680. The Complainant also cites entities that recognized the reputation of the trademark LEGO, namely, Superbrands UK, Reputation Institute and TIME.
The Complainant informs that no authorization to use the trademark LEGO has been granted to the Respondent by the Complainant.
The Complainant alleges that it has found no legitimate use, trademark or trade name corresponding to the disputed domain name in the name of the Respondent. Thus, the Respondent may not claim rights established by common usage.
The Complainant asserts that the use of the disputed domain name resolves to a website offering LEGO products and displaying the LEGO logotype without the Complainant’s consent.
The UDRP decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 is cited by the Complainant to demonstrate that the Respondent’s website should accurately disclose its relationship with the Complainant. Since there is no information about the lack of relationship between the Respondent and the Complainant on the Respondent’s website under the disputed domain name, there would be the false impression that the Respondent is authorized to use the Complainant’s trademark.
The Complainant argues that the disputed domain name was registered after the registrations of the Complainant’s trademark in China, where the Respondent resides, and in other countries. The Respondent would not, therefore, be able to allege that it was not aware of the trademark LEGO when it registered the disputed domain name.
The Complainant also mentions that the Respondent has not responded to the Complainant’s cease and desist letter firstly sent on August 27, 2015, and encloses a copy of this cease and desist letter in Annex 12 of the Complaint.
For these reasons, the Complainant contends that the Respondent has been acting in bad faith by using the disputed domain name to attract Internet users to a website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
Finally, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The evidence presented lists several countries, including China, in which the Complainant owns registrations for the trademark LEGO in class 28.
The evidence presented also shows that the trademark LEGO may be considered as a famous trademark worldwide.
The Complainant’s trademarks predate the disputed domain name.
The disputed domain name comprises the Complainant’s trademark LEGO with the addition of the words “toys” and “mart” - or “toy” and “smart.” Both expressions “toys mart” and “toy smart” are generic in relation to toys, which are the main goods under the trademark LEGO.
The main element of the disputed domain name is “lego,” which is identical to the Complainant’s trademark LEGO.
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.
The Respondent has not submitted a Response to the Complaint, in accordance with paragraph 5 of the Rules.
There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademark LEGO.
There is no evidence that the Respondent is commonly known by the disputed domain name.
The Panel verified that the Respondent’s website at the disputed domain name currently offers LEGO products besides other products for babies and kids, and that the LEGO logotype is not displayed anymore on the website.
There is no notice on the website at the disputed domain name informing Internet users that the Respondent is not an authorized dealer, a licensee or a subsidiary of the Complainant.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
For the above reasons, the Complainant has made an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.
The trademark LEGO is registered by the Complainant in several countries, including China, in class 28, and it is famous worldwide for identifying toys.
The disputed domain name comprises the trademark LEGO with the addition of the words “toys” and “mart,” or “toy” and “smart,” which do not avoid confusion with the Complainant’s trademark.
The Respondent has no rights or legitimate interests in the disputed domain name.
The website at the disputed domain name offers LEGO products besides other products for babies and kids, and there is no notice informing the lack of relationship between the Respondent and the Complainant. Formerly, the website at the disputed domain name displayed the LEGO logotype, which also enhances the likelihood of confusion with the Complainant.
In view of the above reasons, the Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for its own commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark and misleading consumers to believe that the website under the disputed domain name is an official website of the Complainant or of an authorized dealer, licensee or subsidiary, as described in the Policy paragraph 4(b)(iv).
The Respondent has not responded to the cease and desist letter sent by the Complainant and has not responded to the Complaint either.
The Panel finds that the Respondent’s bad faith registration and use of the disputed domain name, with the intention of taking undue advantage of the trademark LEGO, have been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.
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 <legotoysmart.com> be transferred to the Complainant.
Mario Soerensen Garcia
Sole Panelist
Date: January 28, 2016