WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Song Jiapeng
Case No. D2011-0788
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 Song Jiapeng of Dongying, Shandong Province, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <lego592.com> (the “Domain Name’) is registered with Xin Net Technology Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2011. On May 5, 2011, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the Domain Name. On May 9, 2011, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On May 9, 2011, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceedings. On May 17, 2011, the Complainant requested that English be the language of the proceedings. On May 17, 2011, the Respondent emailed the Center inquiring in Chinese what the Center’s email meant. The Center responded in both English and Chinese. On May 18, 2011, the Respondent sent another email in Chinese asking who the Center was and what their email meant. The Center responded on the same day explaining the situation in English and Chinese. On May 18, 2011, the Respondent responded again in Chinese saying that they did not know who the Center was and asked again who they were and what this was about. The Center responded again in English and Chinese. The Respondent did not comment on the language of the proceedings in any of these emails nor in any event by the specified due date.
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 May 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2011.
On May 21, 2011, the Respondent sent an email to the Center asking what the email sent to him/her on May 19, 2011 meant. On May 23, 2011, the Center responded in both Chinese and English. The Respondent did not send any further response.
The Center appointed Karen Fong as the sole panelist in this matter on June 17, 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 a company based in Denmark and is the owner of the famous LEGO brand of construction toys and other Lego products. The Complainant has licensees who are authorized to exploit the Complainant’s trade mark rights in LEGO all over the world including China. The use of LEGO commenced in 1953 in the United States of America and this has been continuous since that date. The Lego Group of Companies earned revenue of more than USD 2.8 billion in 2009. Lego products are sold in more than 130 countries including China. The flagship store in China was opened in September 2007 at the World Shopping Mall in Beijing.
The Complainant has trade mark registrations for LEGO all over the world in a variety of classes. The Complainant is also the owner of more than 1000 domain names containing the term “lego”. It maintains a website connected to the domain name <lego.com>. LEGO was recognized by Superbrands UK as the eighth most famous brand in the world. Panels have recognized LEGO as a well-known trade mark in many UDRP decisions.
The Domain Name was registered on November 28, 2010. The Domain Name is connected to an active website at “www.lego592.com” (”the Website”) which has the name “Shop Logo” on the home page. The Website is a shopping site selling a whole range of goods including mobile phones, clothes, flowers, gifts. None of the goods sold are Lego products.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the LEGO trade mark; the Respondent has no rights or legitimate interests with respect to the Domain Name; and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
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 was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceedings
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the Registration Agreement is Chinese.
The Complainant submits in paragraph 10 of the Complaint that the language of the proceedings should be English. The Complainant contends that the Respondent has never responded to the Complainant’s cease and desist letter and subsequent reminders, ignoring all attempts to solve the issue amicably therefore making it necessary for the filing of the Complaint. It would therefore be cumbersome and to the Complainant’s disadvantage to be forced to translate the entire Complaint into Chinese.
The Respondent has emailed the Center on four occasions in Chinese on receipt of communications and responses by the Center in both English and Chinese (see paragraph 3 above). The Respondent has expressed on each occasion that they do not understand why they received the communications, notwithstanding the fact that the Center has on each occasion explained the situation in Chinese. Rather than follow the matter up, the Respondent stopped all communications after May 21, 2011.
Considering all these circumstances the Panel accepts the Complainant’s submissions regarding the language of the proceedings. The Respondent has in its conduct shown no interest in engaging in this proceeding. Despite the Center’s emails explaining the proceeding in both English and Chinese, the Respondent has not shown any signs of trying to deal with the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceedings.
C. Identical or Confusingly Similar
The Complainant’s registered trade mark, LEGO is the dominant portion of the Domain Name. The addition of the numerals “592” does nothing to minimise the risk of confusion. Moreover, for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
The Complainant contends that the Respondent does not have any registered trade marks or trade names corresponding to the Domain Name. The Complainant has not given the Respondent any right or authorization to use the LEGO trade mark. The Respondent is not an authorized dealer of the Complainant’s products. Nor has he/she ever had a business relationship with the Complainant. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. It is a commercial website using a name based on a well-known registered trade mark with which he/she has intentionally chosen so as to mislead Internet users to the Website. From the above, the Respondent has not shown that he/she has rights or legitimate interests in the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
The LEGO trade mark has been used and registered long before the registration of the Domain Name. The LEGO trade mark is also one of the world’s best known trade marks. The Complainant opened its flagship store in China some time prior to the registration of the Domain Name. The Respondent either knew or ought to have known of the Complainant’s use and rights in the LEGO trade mark and the Panel is satisfied that the Respondent must have been aware of the Complainant’s mark when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant’s well-known trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Name is in bad faith. The Website is one which offers for sale and sells non Lego products. There is a clear intention to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s LEGO mark as a source, sponsorship, affiliation or endorsement. This is clearly bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <lego592.com> be transferred to the Complainant.
Dated: June 28, 2011