WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Kang Zheng
Case No. D2010-1924
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Kang Zheng of Fujian, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain names <lego-onsale.com>, <lego-onsale.net>, <lego-onsale.org> are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2010. On November 10, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On November 10, 2010, eNom 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”).
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 November 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2010.
The Center appointed Enrique Ochoa de González Argüelles as the sole panelist in this matter on December 8, 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.
4. Factual Background
The Complainant is the owner of the trademark LEGO and all other trademarks used in connection with the LEGO brand of construction toys and other LEGO branded products.
The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in China, the United States of America and elsewhere.
The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the United States (“U.S.”) during 1953, to identify construction toys made and sold by them.
Over the years, the business of making and selling LEGO branded toys has grown. For instance, the revenue for the LEGO Group in 2009 was more than USD 2.8 billion.
The Complainant has subsidiaries and branches throughout the world.
LEGO products are sold in more than 130 countries, including China and the United States of America.
The Complainant is also the owner of more than 1000 domain names containing the term “lego”.
The trademark LEGO is among the best-known trademarks in the world, and the LEGO trademark and brand have been recognized as being famous.
The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer-controlled robotic construction sets. The LEGO Group maintains an extensive website under the domain name <lego.com>.
5. Parties’ Contentions
A. The Complainant
The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. Indeed, the LEGO trademark and brand have been recognized as being famous. For instance, the LEGO mark has been named the 8th most famous trademark and brand in the world, according to a list of the official top 500 Superbrands for 2009/10.
The disputed domain names are confusingly similar to the Complainant’s world famous trademark LEGO. The Respondent does not have any rights or legitimate interests in the disputed domain names. The Respondent registered and used the disputed domain names in bad faith.
The fame of the trademark LEGO has been confirmed in numerous previous UDRP decisions.
B. The Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain names transferred, the Complainant must show the following pursuant to paragraph 4(a) of the Policy:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Complainant bears the burden of proof for each of these elements.
A. Identical or Confusingly Similar
The Complainant has evidenced registrations for the trademark LEGO in several countries including China, the country associated with the Respondent, according to the publicly available WhoIs data. The Complainant’s trademarks are registered mainly in International Class 28 for construction toys.
The Panel finds that the addition of the suffix “-onsale” is not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO, which is instantly recognizable as a world famous trademark.
Additionally, the addition of the top-level domains (gTLD) “.com”, “.org” and/or “.net” does not have any impact on the overall impression of the dominant portion of the disputed domain names and is therefore irrelevant in determining the confusing similarity between the trademark LEGO and the disputed
domain names <lego-onsale.com>, <lego-onsale.org> and <lego-onsale.net>.
As stated in other UDRP cases, confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademarks. Therefore, the requirements in paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by any of the disputed domain names.
With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and has not used the disputed domain names, or a name corresponding to them, in connection with a bona fide offering of goods or services.
In the Panel’s view, the Complainant has provided evidence that the Respondent has knowingly acted so as to harm the Complainant’s business, for its own commercial gain, by use of the disputed domain names to mislead Internet users.
The Respondent has adopted the Complainant’s trademarks for its own use and incorporated them into the disputed domain names without any authorization or license.
In the absence of a Response, the Panel accepts the arguments and evidence advanced by the Complainant and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Considering the undisputed wide use of the Complainant’s trademarks and in the absence of contrary evidence, the Panel finds that the Respondent must have had actual knowledge of the Complainant’s trademarks when the disputed domain names were registered.
In reference to bad faith, the Panel notes that all the disputed domain names wholly incorporate the Complainant’s LEGO trademark and that the domain names <lego-onsale.org> and <lego-onsale.net> re-direct to websites in which products similar to LEGO can be found. In the Panel’s opinion, Internet users are likely going to be mislead to believe that said websites are connected to the famous brand LEGO.
Consequently, the Panel, in accordance with previous decisions issued under the Policy, is of the opinion that knowledge of the Complainant’s trademark at the time of the registration of the disputed domain names is to be considered in drawing an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Moreover, it has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of a domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski, WIPO Case No. D2008-0028).
On the other hand, the failure of the Respondent to respond to any of the Complaints in this case further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
In view of the above, the Panel finds that the disputed domain names were registered and are being used in bad faith.
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 <lego-onsale.com>, <lego-onsale.net> and <lego-onsale.org> be transferred to the Complainant.
Enrique Ochoa de González Argüelles
Dated: December 24, 2010