The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is huangderong of Xiamen, Fujian, the People's Republic of China.
2. The Domain Name and Registrar
The disputed domain name <lego2009.com> is registered with Xiamen ChinaSource Internet Service Co., Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2009. On October 8, 2009, the Center transmitted by email to Xiamen ChinaSource Internet Service Co., Ltd. a request for registrar verification in connection with the disputed domain name. On October 9, 2009, Xiamen ChinaSource Internet Service Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 9, 2009, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceedings. The Complainant confirmed on the same day that it wished to request that English be the language of the proceedings. The Respondent did not submit any comments by the due date, however the Center continued to transmit all case-related Center communications in both English and Chinese.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 11, 2009.
The Center appointed Jonathan Agmon as the sole panelist in this matter on November 12, 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. Due to exceptional circumstances, the Panel extended the due date for decision to November 30, 2009.
The Panel notes the Complainant's request that English be the language of the proceeding, and further that the Respondent, although provided with copies of the Center's case-related documents in both English and Chinese, has not elected to respond to either this request or to the Complaint. In view of the above, it is not foreseeable that the Respondent will be prejudiced if English is adopted as the language of the proceeding. Consequently, the Panel will render its decision in English.
4. Factual Background
The Complainant, LEGO Juris A/S, is a leading manufacturer and marketer of construction toys.
The Complainant has developed and marketed the Lego construction toys, along with its licensees. Over the years, the business of making and selling Lego brand toys has grown, and the sales in the US alone exceeded USD 1 billion over the last ten years.
The Complainant expended significant resources in promotion and advertisement worldwide, and the LEGO mark now appears on all its products, packaging, displays, advertising and promotional materials. For example, in the list of the official top 500 superbrands for 2009/2010, provided by Superbrands UK, the Lego brand was rated at number 8 of the most famous trademarks and brands in the world.
The Complainant is the owner of multiple trademark registrations for the mark LEGO around the world. For example: United States of America (“US”) trademark registration No. 1018875 – LEGO, with the filing date of September 17, 1974; US trademark registration No. 2245652 – LEGO, with the filing date of November 21, 1997; CTM registration No. E39800 – LEGO, with the filing date of April 1, 1996; UK trademark registration No. E2829463 – LEGO and design, with the filing date of August 28, 2002; Chinese trademark registration No. 206919 – LEGO and design, with the filing date of April 15, 2004; and many others.
The LEGO trademarks are well recognized by the general public, and have generated significant goodwill. As a result of extensive use and publicity, the Complainant argues that the LEGO trademarks have become famous.
The Complainant also owns more than 1,000 domain names that contain the name LEGO. For example <lego.com>, <lego.net>, <lego.ac>,<lego.as>,<lego.biz> and others. The Complainant is using these domain names in connection with its activities.
The Respondent registered the disputed domain name on June 15, 2009.
The disputed domain name resolves to an online store operating in Mandarin, through which different types of products, including toys, are sold.
5. Parties' Contentions
A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the LEGO trademark, owned by the Complainant, seeing that it contains the trademark in its entirety. Further, the Complainant argues that the additional suffix “2009” does not dispel the confusion of the disputed domain name with the LEGO mark.
The Complainant further argues that it has exclusive rights to the LEGO trademark and that this trademark is widely recognized with the Complainant and its licensees, and with their operations. Furthermore, the Complainant argues that it has not licensed or permitted the Respondent to use the LEGO marks.
The Complainant further argues that the Respondent is not commonly known by the disputed domain name and it can find no evidence demonstrating the Respondent's rights in the LEGO mark.
The Complainant further argues that the disputed domain name might mislead or confuse the public as to the source or origin of goods on the Respondent's site.
The Complainant further argues that the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark.
The Complainant further argues that the Respondent was aware of its existence and of its LEGO mark and products at the time it registered the disputed domain name.
The Complainant further argues that the Respondent did not respond to the cease and desist letter sent to it by the Complainant. The Complainant argues that this constitutes evidence of the Respondent's bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The LEGO trademark is registered in the name of the Complainant in various jurisdictions around the world. For example: US trademark registration No. 1018875 – LEGO, with the filing date of September 17, 1974; US trademark registration No. 2245652 – LEGO, with the filing date of November 21, 1997; CTM registration No. E39800 – LEGO, with the filing date of April 1, 1996; UK trademark registration No. E2829463 – LEGO and design, with the filing date of August 28, 2002; Chinese trademark registration No. 206919 – LEGO and design, with the filing date of April 15, 2004; and many others.
The disputed domain name <lego2009.com> incorporates the Complainant's registered trademark LEGO in its entirety, and differs from the Complainant's marks only by the additional suffix “2009”.
The disputed domain name integrates the Complainant's trademark in its entirety, as a dominant element, with an addition of a number, which may indicate a year. The addition of a number does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark.
Previous WIPO panels have ruled that the mere addition of a non significant element does not sufficiently differentiate the disputed domain name from the registered trademark: “the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark” (Britannia Building Society v. Britannia Fraud Prevention,
WIPO Case No. D2001-0505). Also, “[g]enerally, 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'” (Microsoft Corporation v. J. Holiday Co.,
WIPO Case No. D2000-1493).
In this case, the number that is added is “2009”, which is the year in which the disputed domain name has been registered and in which the on-line store has been opened. The disputed domain name is therefore composed of a trademark, and a number which may be overlooked by Internet users as insignificant. Furthermore, this gives the impression that the site is intended to attract persons seeking the Complainant's trademarked product.
It should be noted that the addition of the generic top-level domain (gTLD) “.com” to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,
WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance as the use of a TLD is technically required to operate domain names and it does not serve to identify the source of the goods or services provided by the registrant of a domain name.
Consequently, the Panel finds that the Complainant had shown that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lack rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds the Complainant has established such a prima facie case, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the LEGO trademark, or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show it has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent has registered the disputed domain name after the Complainant has registered its trademarks. According to the evidence filed by the Complainant, the Complainant has been filing and registering its LEGO marks for over 30 years. It is suggestive of the Respondent's bad faith that the trademarks, owned by the Complainant, were registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Furthermore, review of the website operating under the disputed domain name revels that the disputed domain name resolves to an on-line store operating in Mandarin, through which different types of products, including toys, are sold. The Respondent's use of the mark LEGO to promote different goods, including toys, clearly evidences that the Respondent registered the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of the mark LEGO. The registration of the disputed domain name was clearly done in bad faith. See Herbalife International, Inc v. Surinder S. Farmaha,
WIPO Case No. D2005-0765, which asserted that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”.
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
The disputed domain name is virtually identical and confusingly similar to the Complainant's trademark. Previous WIPO panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see Edmunds.com, Inc v. Triple E Holdings Limited,
WIPO Case No. D2006-1095). To this end, prior WIPO panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a famous registered trademark may, in certain circumstances, be evidence of bad faith under paragraph 4(b)(iv) of the UDRP (see Edmunds.com, Inc v. Ult. Search, Inc.,
WIPO Case No. D2001-1319).
In light of the Complainant's distinctive registered trademark, the Panel finds that the registration of the disputed domain name which is confusingly similar to the Complainant's mark shows the Respondent's intent to operate a website offering similar goods and by doing so, creating the likelihood that Internet users would be confused and identify the Respondent as either associated or affiliated with the Complainant. The use of the Complainant's distinctive trademark for quasi-identical goods constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,
WIPO Case No. D2009-0450).
Also, the lack of reply to the Complainant's cease and desist letter is additional evidence of the Respondent's bad faith (Alstom v. Stockmarket Domains,
WIPO Case No. D2008-1542).
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith.
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 <lego2009.com> be transferred to the Complainant.
Jonathan Agmon Sole Panelist
Dated: November 24, 2009
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