World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Xianbin Chen

Case No. D2011-0505

1. The Parties

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

The Respondent is Xianbin Chen of Minnesota, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <legogiftcard.com> (the “Domain Name”), is registered with Melbourne IT Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2011. On March 18, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 21, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 23, 2011

The Center verified that the Complaint together with the amendment to 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 March 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2011.

On March 31, 2011 the Center received an email communication from someone purporting to be the son of the residents at the address of the Respondent appearing on the Registrar’s WhoIs database. He stated that his parents had been living at that address for over 20 years and nobody by the name of the Respondent had ever lived there.

The Center has received no formal Response from the Respondent.

The Center appointed Tony Willoughby as the sole panelist in this matter on April 20, 2011. 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 very well-known for its construction toys which have been sold throughout the world for several decades under and by reference to the trade mark LEGO. The Complainant is the registered proprietor of numerous trade mark registrations around the world of the word “lego” including, by way of example, Community Trade Mark registration number 39800 filed April 1, 1996 (registered October 5, 1998) LEGO (word) for various goods and services in classes 3, 9, 14, 16, 20, 22, 24, 25, 28, 38, 41 and 42.

The Domain Name was registered on November 5, 2010. As at November 26, 2010 the Domain Name was connected to a website devoted to the Complainant’s brand. Its homepage featured the heading “Discount Lego Bricks”. As at the date of the Complaint it was connected to a shopping site. When the Panel visited the Respondent’s website on May 3, 2011 the homepage was offering for sale a “$100 Spafinder Gift Certificate” for $60.

On December 2, 2010 the Complainant’s representative wrote to the Respondent drawing his attention to the existence of the Complainant’s rights and seeking transfer of the Domain Name. The Complainant received no reply.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its LEGO trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.

B. Respondent

The Respondent has not responded to the Complainant’s contentions.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Domain Name comprises the Complainant’s LEGO trade mark, the descriptive term “giftcard” and the generic “.com” domain suffix. For the purposes of assessing identity and confusing similarity under this head of the Policy, it is now well-established that the domain suffix may be ignored.

The descriptive term “giftcard” detracts in no way from the distinctiveness of the Complainant’s trade mark, which is the only distinctive element of the Domain Name.

The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Complainant contends that the Respondent registered the Domain Name with the Complainant’s registered trade mark in mind, but without having sought the permission of the Complainant to do so and with the intention of deriving a commercial gain from its use.

The nature of the Respondent’s website is such that the Complainant’s allegations in this regard cannot seriously be countered. The website, to which the Domain Name was connected in November 2010, makes this abundantly clear. It was, on its face, a commercial site devoted entirely to the Complainant’s products.

Can this use be said to have been a bona fide use of the Domain Name such as to have given the Respondent rights or legitimate interests in respect of the Domain Name within the meaning of paragraph 4(c)(i) of the Policy? The Panel does not believe so.

The Respondent will have appreciated that a significant proportion of visitors to his site will have been visiting the site erroneously believing it to be a site of or associated with the Complainant. Thus, by his use of the Complainant’s trade mark in the Domain Name he has been attracting Internet users to his website by a deceit. This is not a bona fide use of the Domain Name.

More recently, as can be seen from section 4 above, the Respondent has switched the Domain Name to a general shopping site. In so doing he has demonstrated that he has no particular association with the Complainant’s products that might give rise to rights or legitimate interests for this purpose.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

The evidence before the Panel is sufficient to satisfy the Panel that the Respondent’s purpose in registering the Domain Name was to use it for commercial gain and to attract custom on the back of the fame of the Complainant’s trade mark, visitors to the Complainant’s site being likely to believe from the nature of the Domain Name that they would be visiting a site of or associated with the Complainant.

The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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, <legogiftcard.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Dated: May 3, 2011

 

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