WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. wushuyan
Case No. D2011-1865
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is wushuyan of Jin Jiang, Fu Jian, China.
2. The Domain Name and Registrar
The disputed domain name <lego3c.com> (the “Domain Name”) is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2011. On October 31, 2011, the Center transmitted by email to the Registrar, Inc. a request for registrar verification in connection with the Domain Name. On November 1, 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. On November 1, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceedings. On November 2, 2011, the Complainant confirmed its request that English be the language of the proceedings. The Respondent did not comment on the language of the 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 the Respondent of the Complaint, and the proceedings commenced on November 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2011. The Center received email communications from the Respondent on November 28, November 29, and December 2, 2011. The Center notified the parties regarding the proceeding update on November 29, 2011.
The Center appointed Dr. Colin Yee Cheng Ong as the sole panelist in this matter on December 13, 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
4.1 The Complainant has stated that it first commenced use of the LEGO mark in the United States of America in 1953 to identify construction toys made and sold by it. Its use of the LEGO mark has been extensive, exclusive and continuous since then and its business has made very significant growth. The Complainant has asserted that the revenue for the Lego Group in 2009 was more than USD 2.8 billion and that its global market share rose from 4.8% at the close of 2009 to approximately 5.9% at the end of 2010. The Complainant claims to have subsidiaries and branches throughout the world and has asserted that Lego products are sold in more than 130 countries, including in China. The Complainant had opened its flagship store in China at the World Shopping Mall in Beijing in September 2007, which was a month prior to the trademark registration taking place.
4.2 The Complainant has provided evidence to show that it is the owner of more than 1000 domain names containing the word ”Lego”. The Complainant has attached a list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK that lists LEGO as number 8 of the most famous trademarks and brands in the world. The Complainant has also demonstrated that the Lego Group also maintains an extensive website under the domain name <lego.com>.
5. Parties’ Contentions
5.1 The Complainant contends that the Domain Name <lego3c.com> is confusingly similar to LEGO in which it holds rights for the following reasons:
(i) The dominant part of the Domain Name <lego3c.com> comprises the word ”lego”, which is identical to the registered trademark LEGO, which has been registered by the Complainant as a trademark and domain names in numerous countries all over the world. The Respondent’s registration consists of the use of the Complainant’s trademark in addition with the suffix “3c”. The Complainant cited a few examples of UDRP decisions wherein many other panelists have considered that the addition of suffix words to trademarks was not sufficient to escape the finding of similarity.
(ii) Finally, the Complainant submitted that the addition of the gTLDs “.com ” which is required for registration of a domain name, has no distinguishing capacity in the context of the Domain Name and does not alter the value of the trademarks represented in the Domain Name. The Complainant concluded on its attack of confusingly similar by stating that the trademark LEGO and the disputed domain name would cause a high risk of confusion, as a consumer might think that the Domain Name directly refers to the Complainant’s products or that there is some kind of commercial relation with the Complainant. The Complainant contends that by using the trademark as a dominant part of the Domain Name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark.
5.2 The Complainant contends that the Respondent has no rights and legitimate interests in the Domain Name for the following reasons:
(i) The Complainant had not found that the Respondent has any registered trademarks corresponding to the Domain Name and that the Complainant was unable to find anything that would suggest that the Respondent has been using “Lego” in any other way that would give them any legitimate rights in the name.
(ii) The Complainant has not licensed or given authorization of any other kind to the Respondent to use the trademark LEGO.
(iii) The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. Nor is there a disclaimer on the website describing the non-existent relationship with the Complainant.
(iv) The Respondent’s use does not satisfy the test for bona fide use established in prior UDRP decisions. The Respondent does not use the Domain Name in connection with the bona fide offering of goods or services.
5.3 The Complainant, lastly, contends that the Domain Name was registered and is being used in bad faith for the following reasons:
(i) The Complainant alleged that the awareness of the trademark LEGO is considered, “in the whole Community in general”, to be significant and substantial. The Complainant did not state which Community it was referring to but one would assume that it is referring to the China community. As the Complainant has provided only fairly general evidence (in the form of the mentioned Superbrands List) to support this sweeping conclusion, the Panel is reluctant to accept the Complainant’s conclusory statement as such, although the Panel is certainly aware that LEGO is a widely used mark around the world, including apparently in China.
(ii) The Complainant then asserted that as the Respondent did not reply to a “cease and desist letter” that was sent to him, this failure to respond is said of itself to evidence bad faith. The Complainant relies in this respect upon the decisions in 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.
(iii) Finally, the Complainant attached evidence to show that the Domain Name is currently connected to a website containing sale of different non Lego produced products such as computers and computer related products. The Complainant asserted that the Respondent is using the Domain Name to intentionally gain commercially by attracting 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 its website.
The Complainant requests a decision that the Domain Name be transferred to the Complainant
5.4 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 The Complaint was filed in the English language. On November 1, 2011 the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. 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. The Center has been informed by the concerned Registrar that the language of the Registration Agreement for the Domain Name is Chinese. Although the Chinese language is the language of the Registration Agreement for the Domain Name, the Complainant asserted its request that English should be the language of proceedings. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors. The Panel would like to make it clear that the inability of the complainant to communicate in the Chinese language or its preference to communicate in English is not and cannot be a proper legal basis for not adopting the proper language of proceedings as set out in paragraph 11 of the Rules. This Panel does not agree with the decision relied by the Complainant in Aktiebolaget Electrolux v. TREND MEDYA GRUP, WIPO Case No. D2010-1508, and would respectfully state that it is clear that convenience of a Complainant cannot alone form any legal basis to alter the agreed language of the registration agreement nor the agreed Rules of the dispute resolution. In the premises, it was a bad submission for the Complainant to have submitted that “It would be cumbersome and to the Complainant’s disadvantage to be forced to translate the entire Complaint into Chinese.” Had this been a contested matter, the Respondent may have been likely to have been entitled to expect the Panel to rule that the language of the proceedings should be in Chinese, in strict adherence to paragraph 11 of the Rules.
However, in the present case, considering the composition of the Domain Name and the Panel’s assessment of the unique circumstances of the case, bearing in mind its broad powers given to the Panel by paragraph 11 (a) of the Rules, and bearing in mind the fact that the Respondent did not attempt to contest these proceedings, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case. However, based on the Panel’s discretion, Chinese language documents submitted have also been reviewed by the Panel and added to the Respondent’s case.
6.2. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether the Respondent has received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.
6.3 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below. This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.4 The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. Some previous WIPO UDRP panels have suggested that if the respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the respondent, or that he accepts the claims of the complainant, or even that he does not wish to respond or defend his perceived interest in the trademark. (See cases set out by the Complainant above). However, this Panel respectfully views that any such adverse inference is not conclusive at all and the Complainant would still be obliged to prove his case in accordance with the Policy and Rules. The burden of proof falls upon and remains on the Complainant. In such case of silence by the Respondent, the Complainant shall then continue with his case and shall have to prove the three elements that are required by the Policy without opposition than the Complainant’s own ability to explain them. (See: PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences there from as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition). Notwithstanding the default of the respondent, it remains incumbent on the complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see, PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Namely, the Complainant must prove that:
(i) the Domain Name is 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
6.5 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.6 In line with such provision, the Complainant must prove two limbs, i.e., that it holds the trademark or service mark right; and that the Domain Name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the domain name and the trademark alone, independent of the domain name’s use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.7 The Complainant has appended to the Complaint a long list of registered trademarks and registered domain names that incorporate the trademark LEGO. It is quite clear that the Complainant is the owner of a number of trademarks and Domain names in over 100 countries that simply comprise the word “LEGO”. The Respondent’s registration consisting of the use of the Complainant’s trademark LEGO in addition with the suffix “3c”, and the gTLDs “.com” causes confusing similarity and many previous Panel decisions pronounced under the UDRP in similar situations such as F. Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066 and Viral S.p.A. v. Xin dietitian, WIPO Case No. D2010-1981 had correctly decided that such additions of generic words were not enough to distinguish capacity in the context of the domain name and they do not alter the value of the trademarks represented in the domain name. Given this, the Panel has little difficulty in concluding that the Domain Name is confusing similar to a number of trademarks in which the Complainant has rights.
6.8 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.9 The Panel accepts that the Complainant has satisfied it in providing evidence showing that the trademarks for LEGO are well-known throughout the world, registered and is present in more than 100 countries, including China, where the Respondent is located. At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the trademark of the Complainant with a view to attracting Internet users to its website to intentionally link its Domain Name with an online shop selling different non Lego produced products such as computers and computer related products. The Panel accepts that such activity clearly does not provide the Respondent with a legitimate interest in the Domain Name.
6.10 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. However, it is the prevailing view among UDRP panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the domain name.
6.11 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001).
6.12 As another panel had held in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com WIPO Case No. D2008-0186, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.16 of that decision).
6.13 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name. There is no evidence on the record of this proceeding to suggest that Respondent has been commonly known by the Domain Name, or that Respondent has made non-commercial or fair use of the Domain Name. The Respondent has also not used the Domain Name in connection with a bona fide offering of goods or services. The Panel thus finds that Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name which is confusingly similar to the Complainant’s mark.
6.14 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
6.15 The Complainant alleged that the awareness of the trademark LEGO is considered, “in the whole Community in general”, to be significant and substantial. However this may be, noting also the Panel’s observations in paragraph 5.3(i) above, the Panel has little difficulty in accepting that ,when the Respondent registered the Domain Name, he did so with awareness of the Complainant’s business within and outside China and the widely-used LEGO trademark.
6.16 The Complainant had asserted that as the Respondent did not reply to a “cease and desist letter” that was sent to him, this failure to respond is said of itself to evidence bad faith. As already set out above in this decision, this Panel respectfully views that any such adverse inference is not conclusive at all and the Complainant would still be obliged to prove his case in accordance with the WIPO rules. The Complainant has to discharge its burden of proof and cannot simply rely upon a failure to reply to a “cease and desist letter” as conclusive proof that there has been bad faith. Regardless of the fact that the Administrative Rules have provided that the language of proceedings is to be in the language of the registration agreement, i.e. Chinese in the current case, any “cease and desist letter” even if written in the Chinese language can only amount to no more than an adverse inference.
6.17 However, as noted, the Panel accepts the Complainant’s third contention that the Respondent registered the Domain Name in the knowledge of the Complainant’s business and its use of the LEGO trademark. The Panels accepts the evidence presented by the Complainant that shows that the Disputed Domain Name is currently connected to a website containing sale of different non LEGO produced products such as computers and computer related products. The Panel accepts the Complainant’s submission that the Respondent is using the Domain Name to intentionally gain commercially by attracting Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark
6.18 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt 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 of a website.
6.19 Given that the Respondent has failed to show (for the reasons set out under the heading Rights and Legitimate Interests above) that it was using the Domain Name genuinely for its own goods or services and that it has also failed to disclose on the site the true relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.20 The Panel comes to the conclusion that the Respondent most likely registered the Domain Name in order to prevent the Complainant from adopting the trademark in a corresponding domain name. This has been done in bad faith.
6.21 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. The Panel has been able to conclude that the Respondent registered and used the Domain Name in bad faith.
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 <lego3c.com> be transferred to the Complainant.
Dr Colin Yee Cheng Ong
Dated: December 28, 2011