WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Ong Nguyen Ngoc Dinh

Case No. D2015-1451

1. The Parties

The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Ong Nguyen Ngoc Dinh of Binh Duong, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <legocafe.net> ("Disputed Domain Name") is registered with Mat Bao Trading & Service Company Limited d/b/a Mat Bao (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 17, 2015. On August 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 20, 2015, 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 August 24, 2015, an email communication was received from the Respondent.

On August 26, 2015, the Center sent an email communication in English and Vietnamese regarding the language of the proceeding. On the same day, two email communications were received from the Respondent. The Respondent requested that Vietnamese be the language of the proceeding and submitted a reply in relation to the Complaint.

On August 31, 2015, the Complainant confirmed its request that English be the language of the proceeding.

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 the Respondent of the Complaint in English and Vietnamese, and the proceeding commenced on September 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2015. Except for the above-mentioned email communications from the Respondent, the Center did not hear further from the Respondent by the specified due date. On September 24, 2015, the Center informed the parties that it would proceed with panel appointment.

On September 30, 2015, a sole panelist was appointed in this case. On October 12, 2015, the Center informed the parties that the appointed panel had found it necessary to recuse himself from this case. On the same day, an email communication was received from the Respondent requesting that communications to be made in Vietnamese.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on October 15, 2015. 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 Denmark based company, which is active in the field of offering numerous goods in child products industry, including, without limitation to, construction toys and other products for personal or educational use worldwide.

The Complainant has subsidiaries and branches throughout the world, and Lego products are sold in more than 130 countries, including in Viet Nam.

The Complainant is also the owner of the trademark LEGO and other similar trademarks containing or comprising the term LEGO ("LEGO Trademarks") in numerous countries and jurisdictions, including, but not limited to Denmark (Community Trademark ("CTM") Registration No. 000039800 dated October 5, 1998 for LEGO in classes 3,9,14,16,20,24,25,28,38,41and 42; Danish Trademark Registration No. 604-1954 dated May 1, 1954 for LEGO in class 28); Vietnamese Trademark Registration No. 4-0001371-000 dated May 8, 1988 for LEGO in class 28; Vietnamese Trademark Registration No. 4-0013197-000 dated September 30, 1993 for LEGO in classes 9, 16, 20, 25, 28 and 41; and Vietnamese Trademark Registration No. 4-0060988-000 dated October 31, 2003 for LEGO & device in classes 9, 16, 20, 25, 28 and 41.

The Complainant also owns numerous domain names comprising the word element "lego", one of which is the domain name <lego.com>.

The Disputed Domain Name was registered with the Registrar on September 23, 2014.

As indicated in the case file, the Complainant's attorneys sent to the Respondent a cease and desist letter on November 4, 2014 and a reminder on November 13, 2014, in which they asked for a voluntary transfer of the Disputed Domain Name. However, the Respondent did not reply.

5. Parties' Contentions

A. Complainant

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant alleges that the dominant part of the Disputed Domain Name, which incorporates the term "lego", is identical to LEGO Trademarks, registered by the Complainant as trademarks and domain names in numerous countries all over the world.

The Complainant further alleges that the addition of the suffix "cafe" to the Complainant's LEGO Trademarks, which is considered distinctive and famous trademark under numerous previous UDRP decisions, does not eliminate the confusing similarity between the Disputed Domain Name and the Complainant's LEGO Trademarks.

The Complainant also contends that the addition of the generic Top-Level Domain ("gTLD") ".net" is irrelevant to determine the confusing similarity between the Complainant's trademark and the Disputed Domain Name.

The Complainant argues that there is a likelihood of confusion that the Disputed Domain Name refers to the Complainant or the Respondent is associated with the Complainant; and that by using the Complainant's LEGO Trademarks as a dominant part of the Disputed Domain Name, the Respondent exploits the goodwill and the image of the Complainant's Trademarks, which may result in dilution and other damage for the Complainant's Trademarks.

Therefore, the Complainant contends that the Disputed Domain Name is confusingly similar to the Complainant's LEGO Trademarks.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant alleges that the Respondent operates a website, which is used for offering coffee and coffee related items, featuring sponsors ads, not related to the Complainant in any way, at the Disputed Domain Name based on the Complainant's registered LEGO Trademarks, apparently for commercial gain: generate income and traffic.

The Complainant submits that the Respondent has neither registered trademarks or trade names corresponding to the Disputed Domain Name nor it has any legitimate rights in the name Lego established by common usage.

Further, the Complainant has never authorized or licensed the Respondent to use its LEGO Trademarks in any means.

The Complainant further alleges that LEGO is a famous trademark worldwide and, it is established, similar to previous UDRP decisions, that any use of such a trademark by the Respondent in the Disputed Domain Name would violate the rights of trademark owner. According to the Complainant, as the Respondent has not use the name Lego as a company name nor has any other legal rights in the name, it uses the website under the Disputed Domain Name simply to try to sponge off the Complainant's world famous trademark.

Thus, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant asserts that given the considerable value and goodwill of the Complainant's Lego goods, it is incomprehensible that the Respondent would have been unaware of the Complainant's rights to LEGO Trademarks at the time the Disputed Domain Name was registered on September 23, 2014, which is long subsequent to when the Complainant registered the LEGO Trademarks in Viet Nam where the Respondent resides, and elsewhere.

The Complainant further asserts that the registration of the Disputed Domain Name, which in the Complainant's view is confusingly similar to the Complainant's well-known LEGO Trademarks, amounts to clear evidence of bad-faith registration and use.

The Complainant also contends that the Respondent's failure to respond to the Complainant's cease and desist letter and a reminder or similar attempt at contact but continued using the Disputed Domain Name is evidence of the Respondent's bad faith.

Finally, the Complainant argues that the Respondent uses the website under the Disputed Domain Name as a commercial website offering coffee and coffee related products and featuring sponsored ads, not related to the Complainant in any way and the Respondent intentionally has chosen the Complainant's world famous LEGO Trademarks but made no disclaimer on such website. By doing so, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website.

Therefore, the Complainant contends that the Disputed Domain Name was registered and is being used in bad faith.

B. Respondent

The Respondent neither provides a formal reply nor submits the Response to the Complainant's contentions, but addressed the Complainant's contentions in email conversations by claiming that: (a) the Respondent's request for registration of the Disputed Domain Name is the earliest valid request filed for the Disputed Domain Name, therefore, the Disputed Domain Name was granted according to the principles "first to file, first to serve", which is applied in Viet Nam and in the majority of countries around the world; (b) the Respondent is trading products of food industry. The name "Legocafe", which means organic coffee products and energy for life, is a corresponding name to the Disputed Domain Name for offering pure roasted coffee beans and delivery services; (c) the Respondent has a restaurant chain using the Respondent's products which is known by the public, the Complainant has no rights to the trademarks or service marks; and (d) the Respondent is legitimately using the Disputed Domain Name without intent for commercial gain; the Respondent does not intend to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

On email conversation of August 26, 2015, the Respondent further submitted that:

First, the Respondent submits that in the Complaint, the Complainant did not provide satisfactory evidence for the following three simultaneous circumstances that (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith.

Second, the Respondent argues that the Respondent's registration and use of the Disputed Domain Name are not in bad faith as: (a) the Respondent has registered or acquired the Disputed Domain Name primarily for providing information to the Respondent's clients within its chain of coffee shops, not for the purpose of selling, renting, or otherwise transferring the domain name registration; (b) the Respondent has registered the Disputed Domain Name not to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, or the Respondent has not engaged in a pattern of such conduct; (c) the Respondent has not registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; and (d) the Respondent, by using the Disputed Domain Name, has not intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website 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 the Complainant.

Third, the Respondent claims that it has rights to and legitimate interests in the Disputed Domain Name in responding to the Complaint: (a) the Respondent, before being noticed of the dispute, has used of the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with its real offering of pure roasted coffee beans; (b) the Respondent has been commonly known by the Disputed Domain Name for offering pure roasted coffee beans even if the Respondent has acquired no trademark or service mark rights; and (c) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

6. Discussion and Findings

A. Procedural Issues

(i) Language of the Proceeding

The Complaint was filed in the English language on August 17, 2015. On August 20, 2015, the Registrar informed that the language of the Registration Agreement is Vietnamese.

As the Complaint was filed in English, the Center, in its notification dated August 26, 2015 in English and Vietnamese, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or a translation of the Complaint in Vietnamese, or (ii) a substantiated request for English to be the language of the proceeding. On the same day, the Respondent sent two email communications requesting that Vietnamese to be the language of the proceeding and submitted a reply in relation to the Complaint.

On August 31, 2015, the Complainant confirmed its request that English be the language of the proceeding.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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 proceeding.

Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties' level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In the present case, in consideration of the above circumstances of the proceeding, including, but not limited to the nationality of the parties; the fact that the Complainant does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents submitted translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; email conversations from the Respondent and the Complainant which indicates that the parties are able to communicate in English; and for the purpose of easy comprehension of the Complainant (the only party actively taking part in the proceeding) of the Panel's decision without any necessity of translations, and in the interest of fairness to both parties as well as the Panel's obligation under paragraph 10(c) of the Rules, which provides that "the Panel shall ensure that the administrative proceeding takes place with due expedition", the Panel hereby decides, under paragraph 11(a) of the Rules, that the Panel accepts the Complaint and documentation submitted by the Complainant in English and the documentation submitted by the Respondent in Vietnamese and English, but shall render its decision in English.

(ii) The Respondent's Failure to Respond

The Panel notes that the Respondent did not file any formal Response to the Complaint in the period set therefor (from September 2, 2015 to September 22, 2015). However, in the emails of August 24 and 26, 2015, besides the matter of the language of the proceeding, the Respondent also raised its opinions on the substantive issues of the case regarding the three criteria of the UDRP. For the purpose of issuing a decision on the subject case, the Panel regards these emails as response by the Respondent against the Complainant's contentions and considers them alongside other evidence/documents available in this case.

In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each the following three elements are present:

(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the 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.

B. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.

First, the Complainant has clearly evidenced that it has trademark rights in and to the LEGO Trademarks, registered since as early as 1954, and thus, long before the registration of the Disputed Domain Name. In Viet Nam, where the Respondent is located, the Complainant applied for registration and has rights to the LEGO Trademarks since 1988, which is also well prior to the registration date of the Disputed Domain Name. Further, it is evidenced that the Complainant has made lengthy use of its LEGO Trademarks for its commercial activities, and in particular to offer numerous goods in child products industry including without limitation to construction toys and other products, for personal or educational use worldwide.

Second, the Panel finds that the Disputed Domain Name comprises the Complainant's distinctive and well-known LEGO Trademark in its entirety. The difference between the Disputed Domain Name and the LEGO Trademark is the addition of the suffix "cafe", which is an English term for "cafeteria" or "coffee shop", after the word "lego". In addition, the term "cafe" or "café" is quite familiar to Vietnamese customers, and it is very likely that they will perceive it as "cà phê" in Vietnamese ("coffee" in English). Thus, this element should be considered as a descriptive term. Consequently, the Panel finds that LEGO is the dominant element in the Disputed Domain Name and that the addition of the word "cafe" does nothing to distinguish the Disputed Domain Name from the LEGO Trademarks, nor to dispel the risk of confusing similarity, as it was found in previous UDRP decisions (see, e.g., Playboy Enterprises International Inc. v. Joao Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNIC.com / Domain for Sale, WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours, WIPO Case No. D2004-0388).

Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD ".net" to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see e.g. Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

On the basis of the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's LEGO Trademarks, and the first element under paragraph 4(a)(i) of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent's rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

"When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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."

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant's asserted facts, that no license, permission or authorization of any kind to use the Complainant's trademarks has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any country in the world. Thus, the Panel finds that the Respondent has no rights in the LEGO Trademarks.

The Panel finds that before the date of notice to the Respondent of the dispute and as of the date of this Decision, the Disputed Domain Name resolves to a website promoting the sale of pure roasted coffee beans ("Website"). On the Website, the LEGO Trademark in stylization is prominently displayed.

The Respondent, via the Website, promotes the sale of pure roasted coffee beans, which appear to be non-competing products to those sold under the LEGO Trademarks of the Complainant. The products promoted under the Website are not the trademarked products. The Panel finds however that the LEGO Trademarks are worldwide known marks, and that the use of a commercial indication, i.e., the Disputed Domain Name in this case, which comprises the LEGO Trademark in its entirety, for goods other than those the LEGO Trademarks are famous for, is rather misleading. In the Panel's point of view, such misleading use cannot be considered bona fide use.

Taking into account the fame of the LEGO Trademarks, the Panel opines that the Respondent had knowledge of the LEGO Trademarks. The inclusion of the LEGO Trademark in the Disputed Domain Name itself, and the display of a stylized LEGO Trademark on the Website in this Panel's opinion creates an immediate association between the Complainant and the owner/ operator of the Website. However, there is no indication on the Website regarding the (non-existent) relationship between the Complainant and the Respondent.

Under the circumstances, the Panel finds that the Respondent is using the LEGO Trademarks in the Disputed Domain Name to bait consumers for commercial gain. In the Panel's opinion, such pattern cannot form a bona fide use.

For these reasons, the Panel finds that the Respondent's use of the Disputed Domain Name cannot be considered as use in connection with a bona fide offering of goods or services.

Moreover, the Panel finds that the Respondent does not submit any evidence that it would be commonly known under the Disputed Domain Name. Mere statements by the Respondent to this effect do not suffice to rebut the Complainant's prima facie case.

The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, despite its statement in the email that the Respondent is legitimately using the Disputed Domain Name without intent for commercial gain, it appears that the Respondent is actually using the Disputed Domain Name for commercial gain. Assertions and evidence support that the Respondent had full knowledge of the Complainant's LEGO Trademarks and had an intention to gain profit by riding on the good reputation of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) 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."

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of "registration and use of a domain name in bad faith".

The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith.

The Panel further finds that the Complainant's LEGO Trademarks have been registered on a worldwide basis, and enjoy significant reputation in numerous countries around the world. The Complainant's LEGO Trademarks have been registered and used in, among others, Viet Nam, where the Respondent resides.

The Complainant also owns and operates websites under numerous domain names comprising the word element "lego". The Disputed Domain Name is confusingly similar to those domain names, particularly the domain name <lego.com>, except the addition of the descriptive term "cafe" and gTLD ".net". Both the Complainant's LEGO Trademark, which was first registered in Viet Nam in 1988, and the domain name <lego.com>, which was registered in 1995, well predate the Disputed Domain Name. In addition, LEGO is neither descriptive nor generic in respect of any products or services.

These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent knew of the Complainant and the Complainant's LEGO Trademarks and the domain name <lego.com> before its registration of the Disputed Domain Name, and the Panel considers the registration to be an attempt by the Respondent to take advantage of the Complainant's goodwill.

In the Panel's opinion, the Respondent's use of the Disputed Domain Name constitutes improper use of the Complainant's mark. The Respondent registered the confusingly similar Disputed Domain Name and takes advantage of the goodwill and fame established by the Complainant in the trademark for commercial gain. See Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774. The Panel finds that such behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Taking into account all of the above, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established.

7. Decision

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 <legocafe.net> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: October 29, 2015