The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, AB, of Sweden.
The Respondents are Deng Yi Xia, La Duzi and Hu Li, all of the same address in Shanghai, People's Republic of China. An issue to be determined in this proceeding is whether the Complaint is valid in naming multiple Respondents.
The disputed domain names <legoknightskingdom.com> and <wwwbionical.com> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. The disputed domain name <www-lego.com> is registered with Nettuner Corp. DBA Webmasters.com (collectively referred to as “the domain names”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2009. On June 29, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and Nettuner Corp. DBA Webmasters.com a request for registrar verification in connection with the disputed domain names. On July 2, 2009, Nettuner Corp. DBA Webmasters transmitted by email to the Center its verification response confirming that the Respondent Deng Yi Xia is listed as the registrant for <www-lego.com> and providing the contact details. On July 6, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent La Duzi is listed as the registrant for <legoknightskingdom.com>, that the Respondent Hu Li is listed as the registrant for <wwwbionical.com> and providing the contact details for them both. On July 8, 2009, the Complainant amended a typographical error in the Complaint by e-mail. 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 2, 2009, La Duzi sent an e-mail to the Center questioning the validity of the Complaint under the Rules, paragraph 3(c), on the ground that there are three different holders of the disputed domain names. On July 8, 2009 the Center replied, indicating that the Complaint on a prima facie basis fulfilled the formal requirements of the UDRP and that any final determination as to identity of the Respondent (or indeed the validity of the Complaint) shall be up to the Panel.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on July 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2009. None of the Respondents submitted any response. Accordingly, the Center notified the Respondents' default on July 29, 2009.
The Center appointed Alan L. Limbury as the sole panelist in this matter on August 6, 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.
In the absence of a Response, the following assertions taken from the Complaint are accepted as facts. The Complainant, its predecessors and their licensees (“the LEGO Group”) have used in connection with toys the LEGO mark since 1953 and the BIONICLE mark since 2001. Both marks have been registered in many countries by the Complainant and in other countries by other companies in the LEGO group. The mark KNIGHT'S KINGDOM and device has been registered by Kirkbi AG, a member of the LEGO group. The LEGO mark is one of the most famous brands in the world.
The disputed domain names were registered as follows: <www-lego.com> on December 9, 2008, <wwwbionical.com> on December 17, 2008 and <legoknightskingdom.com> on January 14, 2009. All were registered in the name Deng Yi Xia. Following a letter before action from the Complainant regarding the domain name <legoknightskingdom.com> dated February 23, 2009, addressed to Deng Yi Xia, the names of the registrants of the domain names <wwwbionical.com> and <legoknightskingdom.com> were changed to Hu Li and La Duzi respectively but the address and telephone number remained unchanged. The WhoIs record for the domain name <www-lego.com> was changed to show a blank for the name of the registrant but, as previously mentioned, in responding to the Center's request for Registrar verification that Deng Yi Xia was the registrant, the Registrar Nettuner Corp. DBA Webmasters.com answered “Yes” to the Center's question “confirm that the Respondent is the current registrant of the domain name(s)”.
The domain name <legoknightskingdom.com> resolves to a website containing numerous LEGO-labeled links and a picture of some LEGO toy building blocks. The domain name <wwwbionical.com> resolves to a website containing numerous links to further links advertising games of various kinds. The domain name <www-lego.com> resolves to a website containing numerous LEGO-labeled links.
The Complainant says the WhoIs record changes to the name of the registrant for each domain name, following its letter before action, amount to “cyberflying” and that all three Respondents should be treated as one.
It contends that all of the disputed domain names are identical or confusingly similar to one or more of its marks; that the Respondents have no rights or legitimate interests in the disputed domain names, in that the Complainant has given the Respondents no permission to incorporate its marks in any domain names; and that those domain names were registered and are being used in bad faith.
The Respondents did not make any formal reply to the Complainant's contentions. La Duzi did, however, contest the validity of the Complaint, saying there are three different registrants.
As in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, this proceeding relates to multiple domain name registrations. The Rules, paragraph 3(c) provide “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. Respondent is defined in paragraph 1 as “the holder of a domain-name registration against which a complaint is initiated”. Accordingly, there is a preliminary question whether one person is currently the holder of all of the disputed domain names. In upholding the complaint in relation to the domain names admittedly held by the sole named respondent in that case and dismissing the complaint against the holders of other domain names who were not named as respondents, the learned panelist in that case said:
“The requirement in paragraph 3(c) of the Rules that a complaint involving multiple domain names is only possible where the domain names are registered to a single respondent is not a mere formality and is essential to the fairness and integrity of the administrative proceeding. The Panel has an obligation to ensure that each Party ‘is given a fair opportunity to present its case' (paragraph 10(b) of the Rules). It would be a grave breach of this duty to make an order for the transfer of a domain name in a proceeding where the registered owner, although notified of the proceeding, has not been named as a respondent and therefore does not submit any response.”
Here the Complaint did name all three registrants as Respondents and the Center notified them all of the Complaint. Accordingly all three have been given a fair opportunity to present their case and none has done so. The question remains however whether, despite the three domain names being registered in three different names, the Respondents are all, in effect, the same person.
Where a complainant establishes that different registrants are the same person or “are related and are under common control” it is proper to address all the domain names in a single proceeding: Deutsche Telekom AG v. Tyson Rukash / Jonson, WIPO Case No. D2005-1023 and Asset Marketing Systems, LLC v. SmartBuy Corporation, Chan Organization, Mitchell de la Cruz, Gongju Jung et. al., WIPO Case No. D2004-0492.
Here all three domain names were registered in the name Deng Yi Xia before the Complainant's cease and desist letter, whereupon two were transferred into different names while the street address remained the same, even down to the same room number in the same building. In the absence of any explanation for these changes, the Panel concludes that they were made in order to thwart these foreshadowed proceedings and that the three registrants are related and under common control. Since all three were named in the Complaint as Respondents and were notified of the Complaint by the Center in accordance with the Rules, paragraphs 2(a) and 4(a), the Complaint is valid and may proceed against them all.
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 ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et al., WIPO Case No. D2000-0848.
The mark KNIGHT'S KINGDOM is registered in the name of another member of the Lego Group and there is no evidence before the Panel that the Complainant has rights in that mark. Nevertheless, those words are associated in the public mind with the Lego Group and therefore do nothing to detract from the distinctiveness of the LEGO mark when appended to it in the domain name <legoknightskingdom.com>. The prefix “www” is inconsequential when considering the domain names <www-lego.com> and <wwwbionical.com>. Likewise, the suffix “.com” is inconsequential: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
Accordingly the Panel finds the domain names <legoknightskingdom.com> and <www-lego.com> to be confusingly similar to the Complainant's LEGO mark and the domain name <wwwbionical.com> to be confusingly similar to the Complainant's BIONICAL mark.
Panels have consistently found that the burden shifts to the Respondent to provide evidence of its right or legitimate interests under paragraph 4(c). See for example Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753. That burden arises once the Complainant establishes a prima facie case against the Respondent. The Complainant has established that case, as set out below. No response to that case was made by the Respondents. As also indicated below, there is no other evidence contrary to the case made by the Complainant.
The Respondents do not appear to be known by any of the domain names. The mark LEGO is so well-known that it is unlikely that it can be used so as to refer to anyone or anything other than the Complainant and its products. The websites to which the domain names resolve have links, of the kind which generate “pay-per-click” revenue, to other sites with offerings of toys and games in which the Complainant has made its reputation, indicating that the Respondents are using the domain names to trade off that reputation and have no rights or legitimate interests in the domain names. Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
The Complainant has established this element.
The fame of the LEGO mark and the use to which the domain names have been put indicates that the Respondents had the Complainant and its products in mind when registering the domain names and that the domain names have been used to attract, for commercial gain, Internet users to the Respondents' web sites by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondents' web sites. This constitutes evidence of both bad faith registration and bad faith use under the Policy, paragraph 4(b)(iv).
The Complainant has established this element.
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 names <legoknightskingdom.com>, <wwwbionical.com> and <www-lego.com> be transferred to the Complainant.
Alan L. Limbury
Dated: August 18, 2009