WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. shilei
Case No. D2016-0152
1. The Parties
The Complainant is LEGO Juris A/S of Billond, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is shilei of Shaoxing, Zhejiang, China.
2. The Domain Names and Registrar
The disputed domain names <legowolds.com>, <legowords.com> and <wwwlegoworlds.com> are registered with Hangzhou AiMing Network Co., LTD (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 25, 2016. On January 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 27, 2016, 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 January 28, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. On January 28 2016, the Respondent submitted its request that Chinese be the language of the proceeding. On the same day, the Complainant submitted confirmation of 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 Chinese, and the proceeding commenced on February 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment on February 29, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on March 16, 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
The Complainant (based in Denmark) is the owner of the LEGO brand, and all other trade marks used in connection with the LEGO brand of construction toys and other LEGO-branded products. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in China and elsewhere. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in China.
The Complainant states it is the owner of over 4,300 domain names containing the trade mark LEGO. The trade mark LEGO is among the best-known trade marks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. The LEGO trade mark and brand have been recognized as being famous. In the list of the official top 500 Superbrands for 2015 provided by Superbrands UK, LEGO is the winner in the category "Child Products - Toys and Education". The Reputation Institute nominated the LEGO Group as number 5 on its list of "the World's Most Reputable Companies" 2015. TIME Magazine also announced LEGO to be the "Most Influential Toy of All Time".
The Complainant has expanded its use of the LEGO trade mark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Complainant also maintains an extensive website under the domain name <lego.com>.
The LEGO trade mark is registered in many countries including in China where the Respondent is located.
The disputed domain names were registered on June 1, 2015, and resolve to pay-per-click sites.
5. Parties' Contentions
1. The disputed domain names are confusingly similar to the Complainant's world famous trade mark LEGO. The dominant part of the disputed domain names incorporate the word "lego", which has been registered by the Complainant as trade marks and domain names in numerous countries all over the world, including in China.
The fame of the LEGO trade mark has been confirmed in numerous previous UDRP decisions (e.g. LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael
In addition to the trade mark LEGO, the disputed domain names comprise the generic term "worlds" or versions of that term omitting one letter, creating common spelling mistakes, in this case, "words" and "wolds." The fact that such a term "world" is closely linked and associated with the Complainant's brand and trade mark only serves to underscore and increase the confusing similarity between the disputed domain names and the Complainant's LEGO trade mark. The term "worlds" is representative of "LEGO Worlds", a recently-released LEGO sandbox adventure video game.
With respect to the disputed domain name <wwwlegoworlds.com>, the generic prefix "www" is added to the trade mark LEGO which takes advantage of a common typing error of eliminating the period between the "www" and the disputed domain name.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has not found that the Respondent has any registered trade marks or trade names corresponding to the disputed domain names. Neither has the Complainant found anything that would suggest that the Respondent has been using the term LEGO in any other way that would provide any rights or legitimate rights in the name.
Further, no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trade mark LEGO. The Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant.
It is clear that the Respondent was aware of the Complainant's legal rights in the trade mark LEGO at the time of the domain name registrations. In fact, it is rather obvious that it is the fame of the LEGO trademark that has motivated the Respondent to register the disputed domain names. The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen domain names based on a registered trade mark in order to generate traffic and income through websites with sponsored links. By this, the Respondent is using the LEGO trade mark in order to mislead Internet users to commercial websites.
3. The Respondent has registered and is using the disputed domain names in bad faith. The number of third-party domain name registrations comprising the trade mark LEGO in combination with other words were substantial the last several years.
Similarly to the many other registrations mentioned above, it is obvious that it is the fame of the LEGO trade mark that has motivated the Respondent to register the disputed domain names. The Respondent registered the three disputed domain names decades after the Complainant's mark was registered. The LEGO brand has grown significantly in Asia over the last years and the Complainant has seen an increase of more than 50% in sales to Chinese consumers over the past two years.
The disputed domain names are connected to websites which are commercial through the inclusion of sponsored links. Whether or not the Respondent had influenced what links should be included is irrelevant for the finding of bad faith in this case. It is also irrelevant whether or not the Respondent was actually getting revenue from the websites himself. The Respondent was clearly aware of the rights the Complainant has in the LEGO trade mark and the value of the trade mark at the point of the registrations. The Respondent is not making a legitimate, noncommercial or fair use, of the disputed domain names without intent for commercial gain.
The Complainant first tried to contact the Respondent on June 26, 2015, through cease and desist letters sent by email. The Complainant requested a voluntary transfer of the disputed domain names. The Complainant also offered compensation for the expenses of registration and transfer fees (not exceeding out-of-pocket expenses). The Respondent replied by claiming that the registrations were lawful according to ICANN and offered to sell the disputed domain names for USD1,500 per domain name, an amount far exceeding the Respondent's out-of-pocket expenses. The efforts to try to solve the matter amicably were unsuccessful.
The Respondent did not reply to the Complainant's contentions, and did not participate in this proceeding other than address the language issue, as recorded in the Procedural History.
6. Discussion and Findings
A. Language of the Proceeding
The language of the Registration Agreements in respect of the disputed domain names is Chinese but the Complaint was filed in English. The Complainant requested that English be the language of the proceeding for these reasons:
(i) The Complainant sent the cease and desist letter in English, and while the Respondent replied in Chinese, it is quite clear that he understands English, as evidenced by the correspondence provided. If the Respondent had not understood the content of the cease and desist letter, the natural thing would have been for it to send a short email stating that he did not understand the contents of the letter. The Respondent did not raise any objection to the letter or the correspondence being in the English language. In fact, the Respondent chose to address the issues raised in the letter.
(ii) The disputed domain names resolve to websites that feature pay-per-click links in English.
(iii) It would be cumbersome and to the Complainant's disadvantage to be forced to translate the entire Complaint into Chinese.
Paragraph 11(a) of the Rules states that: "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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."
Further, paragraph 10(b) and (c) of the Rules stipulate, respectively, that:
"(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition".
The Respondent requested that Chinese be maintained as the language of the proceeding.
The Panel determines in this case that it would be appropriate for English to be adopted as the language of the proceeding. Notably, the Respondent responded by way of two emails to the Complainant's cease and desist letter and email, negotiating for the amount of consideration for the transfer of the disputed domain names. It demonstrates a clear understanding by the Respondent of the English language. Moreover, the disputed domain names consists of the LEGO trade mark and the English word "worlds" (and what appear to be mis-spellings thereof).
As provided for in the Rules, the Panel has to ensure that the proceeding takes place with due expedition. Requiring the Complainant to translate the Complaint and accompanying evidence into Chinese would unduly delay the proceeding. There is nothing to suggest that the Respondent is incapable of understanding English.
The Panel therefore determines that English should be the language of the proceeding in this case.
B. Identical or Confusingly Similar
The Complainant undoubtedly has rights in the trade mark LEGO. The Panel agrees that LEGO is a well-known trade mark of the Complainant.
The question to be asked in relation to paragraph 4(a)(i) of the Policy is whether the disputed domain names <legowolds.com>, <legowords.com> and <wwwlegoworlds.com> are identical or confusingly similar to the LEGO trade mark. The Panel concludes that the disputed domain names are confusingly similar to the mark LEGO in which the Complainant has rights.
The trade mark LEGO features as the dominant element in each of the disputed domain names, and is clearly identifiable therein. The Panel is of the view that the additional words "wolds" and "words" in the first two of the disputed domain names does not suffice in removing the confusing similarity with the LEGO trade mark. In the context of the series of three domain name registrations, all on June 1, 2015, it can be surmised that the words "wolds" and "words" are mis-spellings of the word "worlds", which is reflected in the third of the disputed domain names. The Panel is of the view that the addition of the generic "www" to the beginning of the third disputed domain name essentially duplicates a common typing mistake made by Internet users. As has been expressed in paragraph 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), "[a] domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name."
The Panel's view on the issue is not altered even if "wolds" and "words" in the first two of the disputed domain names were not (or were not intended) to be mis-spellings of the word "worlds".
The Complainant has therefore satisfied the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Taking into account the fame and worldwide reputation of the LEGO trade mark, it is patently clear that no actual or contemplated bona fide or legitimate use of the disputed domain names could be claimed by the Respondent. Moreover, the Panel notes that in the two email responses of the Respondent to the Complainant's cease and desist letter, at no point did the Respondent assert that he had rights or legitimate interests in the disputed domain names. The Respondent did not claim there had been demonstrable preparations to use the disputed domain names (or names corresponding to the disputed domain names) in connection with a bona fide offering of goods or services; that he has been commonly known by the disputed domain names; or that he has been making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain. (Paragraph 4(c) of the Policy.)
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The case has not been rebutted by the Respondent.
The Complainant has therefore satisifed the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
For the reasons stated above, the Panel also concludes that the disputed domain names have been registered and are used in bad faith. The circumstances of this case, specifically the Respondent's request of USD 1,500 per disputed domain name from the Complainant, indicate that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain names ( paragraph 4(b)(i) of the Policy). "Further,[t]he incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith" (See Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273. See also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568).
The Complainant has therefore satisfied the third element of paragraph 4(a) 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 disputed domain names <legowolds.com>, <legowords.com> and <wwwlegoworlds.com> be transferred to the Complainant.
Date: April 2, 2016