The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is he dongdong he dongdong, wulumuqi lequlezhiwenhuazixunfuwuCO.LTD of Wulumuqi, Xinjiang, China.
The disputed domain name <legointernet.com> (the “Disputed Domain Name”) is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2017. On February 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 6, 2017, 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.
On February 6, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English of the Complaint, and the proceedings commenced on February 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2017.
The Center appointed Kar Liang Soh as the sole panelist in this matter on March 10, 2017. 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 based in Denmark and has subsidiaries and branches throughout the world. The Complainant’s LEGO branded construction toys are sold in over 130 countries. The Complainant’s products also extend to computer hardware and software, books, videos and robotic construction sets. The brand LEGO has won many accolades over the years including the top 500 Consumer Superbrands of 2015, No. 5 on the Reputation Institute’s list of the World’s Most Reputable Companies 2015 as well as the Most Influential Toy of All Time by Time Magazine.
The Complainant owns many trademark registrations in relation to the word LEGO alone as well as in combination with other elements (the “LEGO Trademark”), including:
|
Jurisdiction |
Trademark No |
Registration Date |
|
China |
75682 |
December 22, 1976 |
|
China |
3850443 |
March 21, 2006 |
In particular, China trademark registration no 3850443 relates to the following logo incorporating the prominent word LEGO (the “Logo”):
The LEGO Trademark has been held by past UDRP panels to be well known (e.g., 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; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680).
The Complainant holds almost 5,000 domain names incorporating the word “lego”, including <lego.com>, <lego-starwars.com>, <legocity.com>, to name a few. The Complainant’s group of companies maintains an extensive website resolved from the domain name <lego.com>. The website resolved from <lego.com> prominently displays the LEGO Trademark and the Logo.
The Respondent appears to be based in China. Little information about the Respondent is available. The Disputed Domain Name was registered on March 29, 2016. On or before the date of the Complaint, the Disputed Domain Name resolved to a substantially Chinese-language website which prominently displayed products under the LEGO Trademark and the Logo. The website narrated the fame and history of the LEGO brand and offered LEGO products in association with a “乐高活动中心 (LEGO education center)” which employs LEGO products as educational tools targeted at children aged 3 to 16. It also suggested an association with a China company named “乌鲁木齐乐趣乐智文化咨询服务有限公司” authorized by a “乐高教育部” (which translates to “LEGO education department”) to use LEGO’s copyright and resources. The Respondent’s organization name appears to correspond to the Hanyu Pinyin romanisation of the name of this China company.
On May 3, 2016, the Complainant issued a cease and desist letter to the Respondent requesting the transfer of the Disputed Domain Name in exchange for reimbursement of out of pocket expenses. The Complainant did not receive a reply from the Respondent despite two reminders.
The Complainant contends that:
a) The Disputed Domain Name is confusingly similar to the LEGO Trademark in which the Complainant has rights. The LEGO Trademark is registered as a trademark and domain names in numerous countries. The suffix “internet” was added to the LEGO Trademark to create the Dispute Domain Name and does not detract from its overall impression;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. There is no evidence that the Respondent has any registered trademarks or trade names corresponding to the Disputed Domain Name. There is no evidence that the Respondent has been using the LEGO Trademark in any other way that would give them any legitimate rights in the Disputed Domain Name. No license or authorization of any other kind has been given by the Complainant to the Respondent, to use the LEGO Trademark. There is no evidence that the Respondent is using the LEGO Trademark as a company name. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent is not an authorized reseller of the Complainant; and
c) The Disputed Domain Name was registered and is being used in bad faith. The LEGO Trademark is well known. The Disputed Domain Name was registered decades after the Complainant’s trademark registrations for the LEGO Trademark. It is obvious that the fame of the LEGO Trademark motivated the Respondent to register the Disputed Domain Name. The Respondents cannot claim to have been unaware of the Complainant’s rights. The Disputed Domain Name directs Internet users to an unauthorized website offering LEGO products. The Respondent is using the Disputed Domain Name to intentionally attempt to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the LEGO Trademark as to the source, sponsorship, affiliation or endorsement of its website. There is no connection between the Respondent and the Complainant. By using the Disputed Domain Name, the Respondent is not making a legitimate noncommercial or fair use, but is misleadingly diverting consumers for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
The default language of the proceeding is Chinese since the registration agreement is in the Chinese language. However, the Panel has the discretion under paragraph 11(a) to determine otherwise having regard to the circumstances.
The Complainant has requested that English should be adopted as the language of proceeding instead of Chinese, with liberty for the Respondent to file a response in Chinese. Having considered the circumstances below, the Panel hereby grants the Complainant’s request:
a) The Respondent did not file a response;
b) The Respondent did not respond to the Complainant’s cease and desist letter and reminders;
c) The Respondent did not object to the Complainant’s request for English to be adopted as the language of proceeding;
d) The Complaint has already been filed in English;
e) The Panel is bilingual in English and Chinese and is able to dispose of the proceeding in either or both languages;
f) There would be delay in the proceedings should the Complainant be required to submit the Complaint in Chinese at this stage; and
g) No procedural benefit will be achieved by insisting in Chinese being adopted as the language of proceeding.
To succeed in this proceeding, the Complainant must show that the three limbs of paragraph 4(a) of the Policy are fulfilled by the evidence, namely:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) The Respondent does not have any 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 Panel has noted the Complainant’s trademark registrations for the LEGO Trademark. There is no doubt that the Complainant has rights in the same. The Disputed Domain Name incorporates the LEGO Trademark in its entirety and the only difference is the addition of the suffix “internet” to the Disputed Domain Name. The word “internet” is clearly descriptive of online content associated with the Disputed Domain Name and the Panel accepts the Complainant’s submission that it does not detract from its overall impression of the LEGO Trademark in the Disputed Domain Name. Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the LEGO Trademark and the first limb of paragraph 4(a) of the Policy is established.
There is no evidence in this proceeding to indicate that the Respondent holds any trademark registration in relation to the Disputed Domain Name. The Complainant has confirmed that no license or authorization of any other kind has been given by to the Respondent to use the LEGO Trademark. The Panel notes that the website resolved from the Disputed Domain Name claims an association with a LEGO education center, and authorization from a LEGO education department to a Chinese company. However, there is nothing before the Panel that explains the relationship between the Respondent and such LEGO education center or LEGO education department. The Respondent has in fact chosen to remain silent in the face of serious accusations by the Complainant of the Respondent’s lack of authorization. In the circumstances, the Panel is inclined to draw an adverse inference that the Respondent is unable to support the claims on the website. The apparent commercial nature of the website also indicates that Respondent is not using the Disputed Domain Name in a bona fide noncommercial manner. The Panel concludes that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. In the absence of a response, the prima facie case stands and the second limb of paragraph 4(a) of the Policy is established.
Based on the evidence submitted, the Panel is agrees with the previous panels that the LEGO Trademark is well known. The Panel also has no doubts that the Respondent was well aware of the LEGO Trademark at the time of registering the Disputed Domain Name. The evidence shows that LEGO Trademark branded products were displayed on the website resolved from the Disputed Domain Name. The Logo was prominently displayed there as well. More importantly, the website went to lengths to narrate the fame and history of the LEGO brand and then claimed an association with a LEGO education center or LEGO education department purportedly authorized to use LEGO’s copyright and resources. It is inconceivable to a reasonable person that the offer of educational services together with an offer of LEGO branded products on the website would be without commercial gain in mind.
The Complainant has denied any relationship with the Respondent. The natural conclusion to be drawn from the circumstances is as described in paragraph 4(b)(iv) of the Policy, which states:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The Panel is of the view that the facts of the present case falls squarely within the situation of bad faith registration and used as set out in paragraph 4(b)(iv) of the Policy. The Respondent is using the Disputed Domain Name to intentionally attempt to attract Internet users to the website resolved therefrom for commercial gain, by creating a likelihood of confusion with the LEGO Trademark as to the source, sponsorship, affiliation or endorsement of the website and the goods (LEGO branded products) and services (educational services) offered. Therefore, the Panel holds that the third limb of paragraph 4(a) of the Policy is also established.
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 <legointernet.com> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: March 31, 2017