WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Tang Qingming
Case No. D2011-1526
1. The Parties
Complainant is LEGO Juris A/S of Billund, Denmark, represented by Anna Mejlerö of Melbourne IT Digital Brand Services AB, Sweden.
Respondent is Tang Qingming of Guang Zhou, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <yonglego.com> is registered with Xin Net Technology Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2011. On September 9, 2011, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On September 13, 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 September 14, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding, noting that the language of the Complaint (English) differed from the language of the registration agreement for the disputed domain name (Chinese) and inviting Complainant and Respondent to submit comments regarding the language to be used in the proceeding. On the same day, Complainant sent an email to the Center confirming that a request for English to be the language of the proceeding was included in its Complaint and it has nothing further to add to it. Respondent did not comment on the language of proceedings 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 Respondent of the Complaint and the proceedings commenced on September 21, 2011. In this notification, the Center acknowledged that the language of the registration agreement was Chinese and confirmed its preliminary decision to (1) accept the Complaint as filed in English, (2) accept a Response in either English or Chinese, and (3) appoint a Panel familiar with both English and Chinese. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 12, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on October 25, 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
Complainant LEGO Juris A/S is a Danish company which manufactures and sells construction toys and other products which are branded under its LEGO trademark. Complainant has provided details of multiple trademark registrations for LEGO including registration certificates issued by trademark offices in multiple jurisdictions including China, the jurisdiction cited as Respondent’s home country. Complainant has used its trademark since 1953 and maintains subsidiaries and branches in multiple countries including China.
The disputed domain name <yonglego.com> was created on May 3, 2011 and has since been used to advertise electronic goods and consumer products and features content in both English and Chinese.
Complainant sent a cease and desist letter to Respondent regarding the disputed domain name on June 17, 2011.
5. Parties’ Contentions
Complainant contends that the LEGO trademark is one of the best-known trademarks in the world due to extensive advertising and extensive use of the LEGO trademark by Complainant on product packaging, in displays, and in promotional materials. Complainant claims to have sold LEGO branded products in more than 130 countries and notes that its products have been sold in China for the past fifteen (15) years including in its flagship store in Beijing which opened in 2007. Complainant notes that revenue for its operations exceeded USD 2.8 billion in 2009 and claims to have expanded use of the LEGO trademark to include computer hardware and software, books, videos, and computer controlled robotic construction sets in addition to construction toys. Complainant claims ownership over 1,700 domain names which incorporate its LEGO trademark including <lego.com> which was registered on August 22, 1995.
Complainant has provided details of UDRP decisions which acknowledge the fame of its LEGO trademark including LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840, LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260, and LEGO Juris A/S v. Reginald Hasings Jr., WIPO Case No. D2009-0680. Complainant claims that dominant use of its LEGO trademark in the disputed domain name is likely to create consumer confusion because consumers are likely to believe that the disputed domain name is owned by or commercially related to Complainant. Regarding the other literal element in the disputed domain name, Complainant contends that the use of “yong” as a prefix in the disputed domain name does not detract from the use of its LEGO trademark in the disputed domain name and that confusing similarity between its LEGO trademark and <yonglego.com> is present. Additionally, Complainant maintains that its LEGO trademark is well-known and that Respondent’s use of its trademark in the disputed domain name is likely to create initial interest confusion and exploit the goodwill and the image of its LEGO trademark, resulting in dilution and other damage to Complainant’s trademark.
Complainant maintains that it has not granted Respondent with any authorization or license to use its LEGO trademark and has not provided Respondent with any other type of authorization to use its LEGO trademark. Complainant also notes that Respondent is not one of its authorized dealers and that Complainant has never had a business relationship with Respondent. The Complaint further states that the LEGO mark is a famous trademark which Respondent was likely aware of when registering the disputed domain name, and that use of a famous trademark in a domain name is a violation of a trademark owner’s rights and an indicator of bad faith registration.
Regarding bad faith use, the Complaint includes pages from the disputed domain name which advertise electronics and consumer goods and alleges that use of Complainant’s LEGO trademark in the disputed domain name is an attempt to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s LEGO trademark as to its source or a sponsorship or endorsement of the disputed domain name by Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Complainant has requested that English be recognized as the language of the proceeding. The Center has communicated notification of the Complaint in both the English and Chinese languages and has invited Respondent to answer the Complaint in either language. Respondent has not acknowledged any communications transmitted by the Center.
The content featured on the website at the disputed domain name is displayed in both the English and Chinese languages. The Center has communicated with Respondent in the English and Chinese languages and has provided Respondent with the opportunity to file its response in either language. Taking both of the foregoing points into account along with Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary delay.
A. Identical or Confusingly Similar
Complainant owns trademark rights in LEGO which were granted in China prior to the creation of the disputed domain name <yonglego.com>. The disputed domain name is confusingly similar to the LEGO trademark in which Complainant has rights because it includes Complainant’s LEGO trademark in its entirety. Moreover, prior UDRP panels have held that Complainant’s LEGO trademark is a well-known and/or famous mark. Examples include LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715 (“The Panel finds it established that the trademark LEGO is well-known”), LEGO Juris A/S v. M. Moench, WIPO Case No. DNL2009-0052 (“Complainant has established that the LEGO trademark has acquired a high reputation and should be considered as well-recognized and world famous”), and LEGO Juris A/S v. Reginald Hastings Jr, supra (“The LEGO mark is well-known worldwide”).
It has been held by prior UDRP panels that the incorporation of a trademark in its entirety into a domain name supports a finding of a likelihood of confusion. See, e.g., Xerox Corporation v. Imaging Solution, WIPO Case No. D2001-0313 (“The Domain Name at issue wholly incorporates the Complainant’s central trademark “Xerox”. This is sufficient to justify the finding that the name is "confusingly similar" to the Complainant’s registered trademarks”). In the present case, the mark incorporated in the disputed domain name has also been recognized as well-known. This is sufficient grounds for finding that the domain name is likely to be confused with the trademark at issue. See, e.g., Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 (“Long-established precedent has generally recognized confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes”).
Accordingly, the Panel finds that the <yonglego.com> domain name is confusingly similar with the LEGO trademark in which Complainant has rights. The requirements of paragraph 4(1)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
There is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the terms “lego” or “yonglego”. As such, Complainant has made out its prima facie case that Respondent lacks rights or legitimate interests, which Respondent has not rebutted.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It has been established that the registration of a domain name incorporating a well-known trademark may in appropriate circumstances constitute registration in bad faith given the unlikelihood that the registrant was unaware of the established rights in the mark at the time the domain name was registered. See, e.g., Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (finding bad faith since it was unlikely that the registrant of <nike-shoes.com> was unaware of Complainant’s well-known NIKE trademark when registering the domain name) and Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh, supra (finding bad faith, noting that it was implausible that Respondent was unaware of Complainant’s PORSCHE trademark when registering <porsche-me.com>). Given the recognized notoriety of the LEGO trademark, Complainant’s registered rights in the trademark and effective constructive notice of these rights in China, and Complainant’s presence in China, it is difficult to believe that Respondent was unaware of Complainant’s trademark rights when registering the disputed domain name <yonglego.com>.
It is clear that the disputed domain name has been used for commercial gain. Specifically, the record shows that web pages at the disputed domain name advertise electronic goods and consumer products for sale. It has been established in prior decisions that LEGO is a well-known trademark. Use of a well-known trademark in a domain name is likely to cause consumer confusion because Internet users are likely to believe that the content is owned by, sponsored by, affiliated with, or endorsed by the trademark owner. Differences between goods advertised on a disputed domain name and those offered under the well-known trademark at issue does not dispel the likelihood of consumer confusion. See, e.g., Inter Ikea Systems B.V. v. Ikea International Co. Ltd., WIPO Case No. D2003-0965 (observing that the well-known mark at issue “enjoys a very broad scope of protection far beyond the household goods and related services offered by the Complainant” and that the danger of consumer confusion should not be excluded in a case involving a well-known mark used for household goods and a disputed domain name advertising cosmetics)..
Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. Continued use of the <yonglego.com> domain name contributes to the risk that consumers will mistakenly believe hat the products featured at this domain name are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s domain names.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <yonglego.com> be transferred to Complainant.
Kimberley Chen Nobles
Dated: November 8, 2011