WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Mac Quoc Hung
Case No. D2016-2170
1. The Parties
Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Mac Quoc Hung of Ha Noi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <legoninjago.top> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 26, 2016. On October 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 24, 2016.
The Center appointed Gregor Vos as the sole panelist in this matter on December 12, 2016. 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 is based in Denmark and is the owner of a sizable collection of trademarks in relation to the well-known LEGO brands of construction toys and other LEGO branded products. Complainant's licensees are authorized to exploit Complainant's intellectual property rights, including its trademark rights. Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Viet Nam. One of the construction toy products under the LEGO brand is a product line under the name "Lego Ninjago".
Among the globally registered trademarks of Complainant are trademark registrations for LEGO in Viet Nam (No. 60988 for the figurative wordmark LEGO, filed at October 31, 2003) and the European Union (No. 000039800 for the wordmark LEGO, filed at April 1, 1996), together the "LEGO Trademarks". Complainant also owns a trademark registration for NINJAGO in the European Union (No. 012495461 for the wordmark NINJAGO, filed at January 13, 2014), the "NINJAGO Trademark".
Complainant submitted evidence that the LEGO trademarks are well-known all over the world. Complainant also submitted evidence that it possesses close to 4,300 domain names containing LEGO, of which dozens are relating to both LEGO and NINJAGO.
Respondent registered the domain name on May 17, 2016. The website under the disputed domain name appears to be selling clothing items.
Complainant sent three letters to Respondent, requesting Respondent to cease and desist his use of the disputed domain name. Respondent did not reply to these letters.
5. Parties' Contentions
Complainant claims that the disputed domain name registered and used by Respondent is identical to trademarks in which Complainant has rights, namely the registered trademarks LEGO and NINJAGO.
Complainant contends that the disputed domain name is confusingly similar to Complainant's Trademarks. Complainant submits three cases, where the Panel accepts the trademark LEGO to be famous and distinctive (LEGO Juris A/S v. Level 5 Corp, WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680). Complaint also submits a case where the Panel accepted that the addition of the term 'ninjago' leads the public to believe that Complainant is the owner of the disputed domain name, since Complainant has a product line called 'Lego Ninjago' (LEGO Juris A/S v. PrivacyProtect.org / Kim Bum - Kim Bum LLC, WIPO Case No. D2012-2080).
Complainant contends that Respondent does not have rights or legitimate interests in respect of the disputed domain name. Complainant has not found that Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Complainant claims that Respondent does not have any other legitimate rights in the name. Given the notoriety of Complainant's trademarks, Respondent's use and registration of the disputed domain name is a violation of Complainant's rights. Furthermore, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith. Complainant claims that Respondent is taking advantage of its trademarks in order to bring new visitors to Respondent's commercial website. As Complainant did not find any evidence that Respondent is using the LEGO or NINJAGO marks as a company name, or that it may have any other legal rights in the names, it is clear to Complainant that Respondent is trying to sponge off Complainant's well-known trademarks.
Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Only if all three elements are sufficiently fulfilled, the Panel is able to grant the remedies requested by Complainant.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The requirement under this element of the Policy is meant to serve as a low threshold, merely leaving room for a comparison between the characters in any invoked rights of complainant and the characters in the domain name in question (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), par. 1.1 and 1.2).
Indeed, the current domain name is identical or confusingly similar to both the LEGO Trademarks and the NINJAGO Trademark. The disputed domain name exclusively consists of LEGO and NINJAGO. This is unmistakably a combination of two trademarks of Complainant, which may very well lead the public to believe that Complainant is the owner of the disputed domain name. The addition of the generic Top-Level Domain ("TLD") ".top" does not make a difference in this case. The consensus Panel View on this topic is that the TLD in the domain name would usually be disregarded. This case does not contain any indications to the contrary.
As the panel decided in LEGO Juris A/S v. F.H.U. Betternet Rafal Biegun, WIPO Case No. D2011-0939, the combination of LEGO and NINJAGO creates a likelihood of confusion, because it gives the impression that the disputed domain name is owned by or affiliated with Complainant or has something to do with its eponymous product line.
Based on the above, the Panel finds that the first element of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in respect of the disputed domain name. As it is often considered impossible for a complainant to prove a negative for meeting the requirements of article 4(a)(ii) of the Policy, the consensus panel view is that a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of proof shifts to the respondent. The respondent must then come forward with appropriate allegations or evidence that it does in fact have rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:
i) before any notice to Respondent of the dispute, Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has substantiated that Respondent does not act in compliance with any of these circumstances.
By defaulting Respondent has failed to address the prima facie case thus established by Complainant.
Furthermore, based on the record before it, the Panel does not see an indication that any of the circumstances of paragraph 4(c) of the Policy is present.
The Panel concludes that Respondent has no rights to or legitimate interests in the disputed domain name and that the second element under paragraph 4(a)(ii) of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(ii) of the Policy requires Complainant to exhibit registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy lists four non-limitative circumstances which may be considered as evidence of registration and use in bad faith of a domain name.
It remains uncontested that Respondent sells certain products on its web site. Considering the record before it, the Panel finds it highly likely that Respondent chose the disputed domain name to generate more traffic to his web shop and therefore to profit commercially from the reputation of Complainant's trademarks. The Panel thus finds that paragraph 4(b)(iv) of the Policy applies, as Respondent intentionally attempted to attract Internet users to his website for commercial gain, by creating a likelihood of confusion with Complainant's mark. The LEGO Trademarks are well-known around the world and Respondent registered the disputed domain name at a later point in time than the registry of both the LEGO Trademarks and the NINJAGO Trademark. In line with settled WIPO UDRP jurisprudence on this point, the Panel concludes that it is not possible to conceive of any plausible genuine and legitimate use of the disputed domain name by Respondent and therefore that the disputed domain name has been registered and used in bad faith. (See, e.g. Inter IKEA Systems B.V. v. Zhang Vivian, WIPO Case No. D2015-0163). This is a clear case in which a well-known mark has been misappropriated.
Based on the above, the Panel finds that the third element of paragraph 4(a)(iii) of the Policy is fulfilled.
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, <legoninjago.top> be transferred to Complainant.
Date: December 29, 2016