WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Yuewei wang
Case No. D2011-1920
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Yuewei wang of huhehaote, neimenggu, China.
2. The Domain Name and Registrar
The disputed domain name <lego520.net> (the “Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2011. On November 4, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 7, 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 8, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceedings. On the same day, 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 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 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2012. On November 16, 2011, the Respondent sent an email to the Center indicating that he did not want the Disputed Domain Name but did not know how to follow up administratively due to inexperience on such matters. On the same day, the Center transmitted this email to the Complainant inviting its request for a suspension of the proceedings. Further to this, the Complainant sent an email to the Center on November 16, 2011 and the Respondent sent an email to the Center on November 17, 2011 indicating an intention to transfer the Disputed Domain Name to the Complainant. On November 21, 2011, the Complainant filed its request for suspension of the proceedings. On November 22, 2011, the Center notified the Parties that the administrative proceeding was suspended until December 18, 2011. After the expiry of the suspension and upon the request for re-institution from the Complainant, the proceedings were re-instituted on December 19, 2011 and the re-calculated response due date was January 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Parties regarding the proceedings update on January 4, 2012.
The Center appointed Kar Liang Soh as the sole panelist in this matter on January 10, 2012. 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.
On January 20, 2012, February 3, 2012, and February 13, 2012, the Center notified to the parties that due to exceptional circumstances the Panel had extended its decision due date, and the final decision due date was February 14, 2012.
4. Factual Background
The Complainant is based in Denmark and owns the trademark LEGO in relation to construction toys and other products. The Complainant commenced use of the trademark LEGO in the United States of America in 1953 and has been using it since. The Complainant’s business under the trademark LEGO has grown significantly over the years and has been extended to computer hardware, software, books, videos and robotic construction sets. In 2010, the revenue of the Complainant’s group of companies was over USD 3 billion. Products under the trademark LEGO are sold in over 130 countries including China. The Complainant’s flagship store in China opened in Beijing in 2007. Superbrands UK which ranks famous trademarks and brands around the world has ranked trademark LEGO number 8 among the top 500 Superbrands for 2009/10.
The Complainant and its related companies own many trademark registrations incorporating the word “LEGO” (the “LEGO Trademark”) around the world, including US registration No. 1018875 (registered August 26, 1975) and China registration No. 3850443 (registered March 21, 2006). In particular, the China registration relates to the following logo (the “LEGO Logo”):
The Complainant is the registrant of over 1,000 domain names containing the word “Lego”, including <lego.com> and <lego.com.cn>. The LEGO Logo is used prominently on the Complainant’s website resolved from <lego.com.cn>. The evidence does not indicate when the domain names <lego.com> and <lego.com.cn> were registered and whether they pre-date the registration of the Disputed Domain Name.
The Disputed Domain Name was registered on April 19, 2011. As of October 31, 2011, the website resolved from the Disputed Domain Name redirected users to another website under the domain name <tmall.com> which prominently displayed the LEGO Logo and purported to offer for sale various construction toys under the LEGO Trademark.
The Complainant sent a letter to the Respondent on May 24, 2011 demanding transfer of the Disputed Domain Name to the Complainant and to refrain from using the LEGO Trademark without authorization. The Respondent communicated with the Complainant regarding the transfer of the Disputed Domain Name but the Respondent subsequently stopped responding to the Complainant. A similar series of communication with the Respondent arose following notification of the Complaint.
5. Parties’ Contentions
The Complainant contends that:
a) The Disputed Domain Name is confusingly similar to the LEGO Trademark. The addition of the numbers “520” does not have any impact on the overall impression of the dominant portion of the Disputed Domain Name and there remains a confusing similarity with the LEGO Trademark. The numbers “520” corresponds to the model number of a basic building brick set released by the Complainant in 1985;
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. No license or authorization of any kind has been given by the Complainant to the Respondent to use the LEGO Trademark; and
c) The Respondent registered and is using the Disputed Domain Name in bad faith. The LEGO Trademark is well-known and the Respondent must have been aware of the LEGO Trademark at the time of registering the Disputed Domain Name. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the proceedings
The Complainant requests that the proceedings be conducted in English even though the default language of the proceedings should be Chinese in view of the language of the Registration Agreement being in Chinese. Having regard to circumstances, in particular the following, the Panel determines that English be adopted as the language of the proceedings:
a) The Complainant’s demand letter of May 24, 2011 was in English. Although the Respondent responded in Chinese, it did not appear the Respondent had any difficulty comprehending;
b) The Respondent has chosen neither to respond to the Complainant’s contentions nor made known any preference for the language of the proceedings;
c) The Respondent has indicated that he has no interest in the Disputed Domain Name; and
d) The Complaint has already been submitted in English. There does not appear to be any procedural benefit that may be achieved by insisting on the default language of the proceedings and it is likely that delay to the proceedings would result should parties be required to re-submit documents in Chinese.
In order to succeed in the proceedings, the Complainant must establish all three limbs of paragraph 4(a) of the Policy. The Panel proceeds to consider each of these limbs below.
A. Identical or Confusingly Similar
The Complainant clearly has trademark rights in the LEGO Trademark. The Disputed Domain Name incorporates the LEGO Trademark in its entirety. The only difference between the Disputed Domain Name and the LEGO Trademark is the addition of a numerical suffix “520”. The Panel accepts the Complainant’s contention that the numerical suffix does not have any impact on the overall impression of the Disputed Domain Name dominated by the word “Lego” and holds that the Disputed Domain Name is confusingly similar to the LEGO Trademark. The first limb of paragraph 4(a) of the Policy is established.
B. Rights or Legitimate Interests
The Complainant has denied licensing or authorizing the Respondent to use the LEGO Trademark. The evidence also does not indicate that the Respondent is known by the name “Lego” or in any way associated with the LEGO Trademark. In fact, the Respondent has categorically admitted that he does not want the Disputed Domain Name and is only prevented from transferring it out apparently by technical difficulties. The circumstances indicate that the Respondent does not wish to exert any rights or interests in the Disputed Domain Name, if any.
The Panel is of the view that the Complainant has shown a prima facie case in relation to the Respondent’s lack of rights or legitimate interests in the Disputed Domain Name. This is reinforced by the Respondent’s self-admitted disinterest in the Disputed Domain Name and lack of a response to the Complaint. The prima facie case is accordingly upheld and the second limb of paragraph 4(a) is also established.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides an example of bad faith registration and use as follows:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The evidence shows that the Respondent must have been fully aware of the LEGO Trademark (for example, the redirection of visitors to the website resolved from the Disputed Domain Name to another website at “www.tmall.com” which displays the LEGO Trademark prominently). The purported offering for sale of products under the LEGO Trademark at the redirected website is clearly targeted at commercial gain. The circumstances do not suggest that the Respondent is using the Disputed Domain Name other than with an intention to attract for commercial gain, Internet users to an on-line location by creating a likelihood of confusion with the LEGO Trademark as to the source, sponsorship, affiliation, or endorsement of that location or of products at that location (namely products under the LEGO Trademark). Paragraph 4(b)(iv) of the Policy is made out. The circumstances of paragraph 4(b)(iv) being an illustration of bad faith registration and use, the Panel accordingly holds that the third limb of paragraph 4(a) is established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <lego520.net> be transferred to the Complainant.
Kar Liang Soh
Date: February 13, 2012