LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC.
Case No. D2009-0924
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Name Administrator, Hong Kong Domains LLC. of Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <shoplego.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2009. On July 9, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On July 9, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant; providing the contact details; and noting that the disputed domain name was due to expire on August 11, 2009. 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”).
On July 20, 2009, in response to a request that day from the Center, Moniker Online Services, LLC confirmed that, in accordance with ICANN's Expired Domain Deletion Policy, paragraph 3.7.5.7, the disputed domain name is currently locked and will remain locked until a decision is made, so the domain name will not expire while this proceeding is in progress.
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 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 12, 2009.
The Center appointed Alan L. Limbury as the sole panelist in this matter on August 18, 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.
4. Factual Background
The Complainant is the owner of the famous trademark LEGO, used extensively, exclusively and continuously since 1953 in relation to construction toys and, more recently, computer hardware and software, books, videos and computer controlled robotic construction sets.
The disputed domain name was originally registered on August 11, 2002 and was transferred to the Respondent in 2007. It leads to a website displaying sponsored links of the kind used to generate pay-per-click revenue.
5. Parties' Contentions
A. Complainant
The disputed domain name is confusingly similar to the Complainant's LEGO mark.
The Respondent has no rights or legitimate interests in the disputed domain name because it does not appear to have any registered trademarks or trade names corresponding to the disputed domain name; the Complainant has given no permission to the Respondent to use the LEGO mark; in light of the fame of the LEGO mark it is highly unlikely that the Respondent was unaware of the Complainant's rights at the time of registration and accordingly the Respondent is using the disputed domain name in order to sponge off the reputation of the Complainant's mark.
These circumstances also show that the disputed domain name was registered and is being used in bad faith. Further, the Respondent failed to reply to two cease and desist letters dated April 6, 2009 (sent via the privacy service) and June 22, 2009, once the Respondent's true identity had been revealed (sent directly to the Respondent).
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,
WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman,
WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited et al.,
WIPO Case No. D2000-0848.
A. Identical or Confusingly Similar
As appears to have happened in the recent case of LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Stop2Shop, G V, WIPO Case No. D2009-0784 (August 12, 2009), the Complainant submitted with the Complaint a partial listing of its trademarks (two pages of a 16 page list) dated January 31, 2006 which displayed several trademarks, for some which the renewal date had passed, with no registration dates nor the classes in which the trademarks had been registered. One or more untranslated certificates of registration in Chinese were included, the registrant (so far as this Panel could tell) being a company other than the Complainant.
This material does not constitute appropriate proof of the Complainant's trademark rights. However, as in that case, in accordance with paragraph 10(a) of the Rules, the Panel considers itself competent to obtain additional objective evidence of record from the Internet in order to clarify this issue (see Société des Produits Nestlé SA v. Telmex Management Services,
WIPO Case No. D2002-0070). On August 25, 2009, the Panel checked the United States Patent and Trademark Office database available online to investigate whether the Complainant has a valid registration for the LEGO trademark. The Panel found that United States trademark No.1018875 LEGO was registered on August 26, 1975 in International class 28 for inter alia toy building blocks; that the mark has been assigned to the Complainant and has been duly renewed. The Panel is therefore satisfied that the Complainant has rights in the trademark LEGO.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812. The top level domain “.com” is to be disregarded: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429. Likewise the content of the Respondent's website must be disregarded: A&F Trade Mark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgensen, WIPO Case No. D2001-0900.
The Panel finds the disputed domain name to be confusingly similar to the Complainant's LEGO mark.
The Complainant has established this element of its case.
B. Rights or Legitimate Interests
Once a Complainant establishes a prima facie case against the Respondent, the burden is on the Respondent to provide evidence of its right or legitimate interests as under the Policy, paragraph 4(c): Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,
WIPO Case No. D2004-0753.
In light of the distinctiveness of the LEGO mark and the use to which the disputed domain name is being put, the Complainant's assertions suffice to establish a prima facie case under this heading. In the absence of any Response, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has established this element of its case.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have had the Complainant's well-known LEGO mark in mind when registering the disputed domain name in 2007 and that the Respondent is using it in order intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website. Under the Policy, paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use.
The Complainant has established this element of its case.
7. Decision
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 name <shoplego.com> be transferred to the Complainant.
Alan L. Limbury Sole Panelist
Dated: August 25, 2009
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