World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. lin meizhi

Case No. D2010-1510

1. The Parties

The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB of Sweden.

The Respondent is lin meizhi of Shanghai, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <legoshoe.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 September 8, 2010. On September 8, 2010, 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 September 9, 2010, 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.

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”).

Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise. According to information from the concerned Registrar, the language of the registration agreement for the disputed domain name is Chinese. On September 16, 2010, the Center transmitted by email to the parties in both Chinese and English a communication regarding the language of proceedings. On September 16, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. The Panel notes that the disputed domain name resolves to a website with content in English, so it appears that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties have been transmitted in both Chinese and English. Given the provided submissions and circumstances of this case, the Panel chooses at its discretion to render the decision in English.

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 September 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2010.

The Center appointed Linda Chang as the sole panelist in this matter on October 21, 2010. 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 special circumstances, the Panel has extended the decision due date until November 10, 2010.

4. Factual Background

The Complainant is a Danish company and has subsidiaries and branches throughout the world, and its renowned construction toys products Lego are sold in more than 130 countries, including in China. The Complainant is the owner of the trademark LEGO and all other trademarks used in connection with the famous LEGO brand of construction toys and other LEGO branded products.

The Respondent registered disputed domain name <legoshoe.com> on May 27, 2010. The disputed domain name is used in connection with websites selling shoes.

5. Parties’ Contentions

A. Complainant

The Disputed Domain Name Is Confusingly Similar to the Complainant’s Trademark

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark to which the Complainant has rights.

The Complainant states that it owns several registrations for the trademark LEGO and domain names in numerous countries all over the world, including more than 1000 domain names containing the term Lego. Citing precedents: 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 stated that LEGO is a well-recognized, famous and distinctive trademark.

The Complainant asserts that the disputed domain name <legoshoe.com> incorporates the Complainant’s registered trademark LEGO in full, deviates from the mark only with the addition of the generic word “shoe”. The Complainant contends that where a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish confusing similarity, despite the addition of other words to such marks. The Complainant alleges that the addition of the word “shoe”, is not relevant and will not have any impact on the overall impression of the dominant part of the name, citing precedents: Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh., WIPO Case No. D2004-0488. The Complainant also alleges that the addition of the top-level domain “com” does not have any impact on the overall impression of the dominant portion of the domain name and is therefore irrelevant to determine the confusing similarity between the trademark and domain name.

The Respondent has No Rights or Legitimate Interests in the Disputed Domain Name

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the basis of the following reasons:

Firstly, the disputed domain name does not correspond to a trademark registered in the name of the Respondent. Secondly, the Complainant states that it has never licensed or otherwise permitted the Respondent to use its trademarks or to apply for domain names incorporating its trademarks. Therefore, there is no relationship whatsoever between the Complainant and the Respondent, citing precedent: Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055. Moreover, there is no disclaimer on the website describing the non-existent relationship with the Complainant, citing precedent: Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312. Thirdly, there is no evidence of any fair or noncommercial uses of the disputed domain name, citing precedent: Drexel University v. David Brouda, WIPO Case No. D2001-0067.

Registered and Used in Bad Faith

The Complainant contends that the disputed domain name was registered and used in bad faith on the basis of the following reasons:

Firstly, the Complainant states that it is a world renowned for its construction toys products and that its trademarks are distinctive and well-known internationally, citing the substantial increase in the number of cases where third parties registered domain name comprising the trademark LEGO in combination with other words over the last few years: Lego Juris A/S v. Hu Liang/Dolego, WIPO Case No. D2009-0848; LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Stop2Shop, G V, WIPO Case No. D2009-0784; LEGO Juris A/S v. Private, Registration / Dohe Dot, WIPO Case No. D2009-0753; LEGO Juris A/S v. EcomMutual, WIPO Case No. D2009-0685; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680; LEGO Juris A/S v. Deng Yi Xia, WIPO Case No. D2009-0644; LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564; Lego Juris A/S v. Gioacchino Zerbo, WIPO Case No. D2009-0500; LEGO Juris A/S v. Mike Morgan, WIPO Case No. D2009-0438; LEGO Juris A/S v. Bladimir Boyiko, WIPO Case No. D2009-0437; LEGO Juris A/S v. Domainproxyagent.com and Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0381; LEGO Juris A/S v. Zhijun Guo, WIPO Case No. D2009-0184; LEGO Juris A/S v. P N S Enterprises, WIPO Case No. D2009-0170; LEGO Juris A/S v. David Palmer, WIPO Case No.. D2008-1826; D LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715 and LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692. Therefore, the Complainant contends that the Respondent knew or should have known of the existence of the Complainant's trademark LEGO prior to registering the disputed domain name and this prior knowledge constitutes bad faith in registration.

Secondly, citing the precedents: News Group Newspapers Limited and News Network Limited v. Momm Amed Ia , WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460 the Complainant argues that the failure of a respondent to respond to the Complainant’s attempt contacts in the forms of a cease and desist letter and subsequent reminders prior to file a complaint according to the UDRP process is also relevant in a finding of bad faith.

Thirdly, the Complainant asserts that the Respondent is using the website connected with the disputed domain name to sell shoes produced by the Respondent. The Complainant alleges that the Respondent has intentionally attempted to misleadingly divert present and potential new Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks and official website, citing precedent: McDonald’s Corporation v. ZusCom., WIPO Case No. D2007-1353. Moreover, citing precedent LEGO Juris A/S v. Chen Yong, WIPO Case No. D2009-1611, the Complainant claims that the fact that the Respondent had chosen to translate the Chinese name in their website to reflect the LEGO trademark showed bad faith in registration.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

There being no Response, under paragraphs 5(e) and 14(a) of the Rules, the Panel, in the absence of exceptional circumstances, decides the dispute on the basis of the Complaint.

Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:

(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of the registered trademark LEGO in many countries around the world. The Complainant has acquired substantial goodwill in this trademark.

Compared to the Complainant’s trademark, the disputed domain name completely reproduces the trademark with the only difference being an addition of a generic word “shoe”. Pursuant to the principle established by numerous prior decisions, the Panel holds that the addition of a generic term does not negate the confusing similarity between the disputed name and the Complainant’s trademarks. The close similarity to the trademark of the Complainant LEGO strongly suggests that <legoshoe.com> is intentionally similar in appearance to the Complainant’s trademark, which will cause confusion among the present or potential new consumers.

Therefore, the Panel finds that the disputed domain name is clearly, and intentionally, confusingly similar to the Complainant’s trademarks. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. There is nothing in the record to suggest the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services, to suggest that it has been commonly known by the disputed domain name, or to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Therefore, the burden shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant’s claims.

The Panel bases its decision on the information and evidence submitted before it, and given the circumstances, finds it more likely than not that the Respondent does not have any rights or legitimate interests in the disputed domain name.

The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has developed a reputation for the trademark LEGO in construction toys area since 1953, and the Complainant’s trademarked products are sold worldwide including in China. Given the reputation and distinctiveness of the Complainant’s trademark, the Panel finds it unlikely that the Respondent would be unaware of the trademark LEGO but incidentally chose it as the main part of its domain name. Given that the Respondent has not responded, it is reasonable to infer that the aim of the registration of the disputed domain name is to exploit consumer confusion for commercial gain.

In addition, the Respondent’s lack of rights or legitimate interests in the name Lego as well as the fact that the disputed domain name has been used to sell shoes that are not produced by the Complainant, the Panel is convinced that the purpose of the Respondent’s registration of the domain name is to capitalize on the goodwill of the trademarks by merely registering the trademark as a domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating this consumer confusion on the source, sponsorship, affiliation or endorsement of its websites. There is no explanation on the record as to why it would have adopted the word “lego” in its domain name. This behavior constitutes bad faith registration and use of the domain name.

The Panel finds that the Complainant has established that the Respondent has registered and used the disputed domain names in bad faith and has met the requirements of 4(a)(iii) of the Policy.

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 <legoshoe.com> be transferred to the Complainant.

Linda Chang
Sole Panelist
Dated: November 10, 2010

 

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