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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Deng Yi Xia
Case No. D2009-0644
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Deng Yi Xia of Shanghai, People`s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <legobionicles.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 18, 2009. On May 18, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the "Registrar") a request for registrar verification in connection with the disputed domain name. On May 19, 2009, 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. 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 May 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on June 15, 2009.
On June 15, 2009 the Center sent an email to the Registrar informing that the registrant information for the domain name <legobionicles.com> changed after the registrar verification response sent to the Center on May 19, 2009. The Center asked the Registrar to confirm that the registrant of the disputed domain name was still the Registrant previously confirmed by the Registrar and as named in the Notification of Complaint and commencement of Administrative Proceedings, namely Deng Yi Xia, and to restore the Registrant details as set out in the publicly available WhoIs at the time of the filing of the Complaint and as confirmed by the Registrar as under Registrar lock. On June 17, 2009, the Center sent a reminder the Registrar.
On June 22, 2009, the Registrar confirmed that the Registrant had not changed and that the Registrar placed a Registrar Lock on the domain name <legobionicles.com>. However, the Registrant was able to modify his contact details by directly modifying the contact database. The Registrar therefore restored the previous Registrant contact details and applied "client update prohibited" and "client delete prohibited" on these contact details directly at the registry.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on July 3, 2009. 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 disputed domain name was registered on January 10, 2009.
The Complainant owns registrations for trademarks LEGO and BIONICLE in different countries. The Complainant also owns numerous domain names containing the terms LEGO and BIONICLE, including <lego.com> and <bionicle.com>, the latter redirecting to the Complainant`s main website at "www.lego.com".
The LEGO trademark has been present in China for 15 years and the Lego Group opened a flagship store in China at the World Shopping Mall in Beijing in September 2007. The LEGO trademark has been registered in China since October 2007.
On February 12, 2009, the Complainant sent a cease and desist letter to the Respondent advising that the unauthorized use of the trademarks LEGO and BIONICLE within the domain name <legobionicles.com> infringed the Complainant`s rights. The Complainant required immediate transfer of the domain name and offered the reimbursement of the out-of-pocket expenses directly related to it. The Respondent did not reply to the Complainant`s letter and subsequent reminders.
5. Parties` Contentions
The Complainant`s LEGO and BIONICLES trademarks are used in connection with construction toys and other products, such as, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets, and clothing. The BIONICLE part of the "www.lego.com" website is one of the most visited pages with an average of more than 9 minutes for each access.
Trademark LEGO enjoys extensive reputation as also recognized in two books, "The World`s Greatest Brands", published by Mac Millan Business in 1996, and "Famous Brands", published by Markgraaf BV in 1985.
The BIONICLE line is the LEGO Group`s biggest-selling line and has been so ever since its introduction in 2001. The use of the BIONICLE mark started at the beginning of 2001 to identify toys. Today products bearing the BIONICLE mark are sold in over 30 countries, including Europe, the United States ("US"), Canada, Australia, Japan, Singapore, Korea, South Africa. During the years 2001-2004, over 52.000.000 pieces/boxes bearing the mark have been sold, generating a selling figure of 1.780.000.000 DKK. The BIONICLE mark has been used extensively on packaging, products and promotional materials and the advertising expenditures during the years 2001-2006 amounted to approximately DKK 500 millions.
The BIONICLE mark and related products have won numerous awards, including the prize for "Most innovative toy of the year" by the US Toy Industry Association.
(1) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The disputed domain name comprises the Complainant`s registered marks LEGO and BIONICLE. A combination of two trademarks can still be considered to be confusingly similar (see Credit Industriel et Commercial S.A. v. Richard J.
WIPO Case No. D2005-0569 and Société des Produits Nestlé SA v. Stuart Cook,
WIPO Case No. D2002-0118).
The domain name <legobionicles.com> is a misspelling of the Complainant`s trademark, as it consists of the mark BIONICLE to which the last letter "s" was added. By using the BIONICLE trademark with an "s", the trademark risks being degenerated into a generic term.
The addition of the top-level domain ".com" does not have any impact on the overall impression of the domain name and is therefore irrelevant to determine the confusing similarity between the trademarks and the domain name at issue.
Anyone who sees the domain name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the Complainant`s trademark. There is a considerable risk that the trade public will perceive the disputed domain name as a Complainant`s domain name, or will consider that there is some kind of commercial relation with the Complainant.
By using the LEGO and BIONICLE marks in the disputed domain name, the Respondent exploits the LEGO mark goodwill and image, which may dilute or otherwise damage the Complainant`s trademarks. Persons seeing the domain name, even without being aware of its content are likely to think that <legobionicles.com> is in some way connected to the Complainant ("initial interest confusion").
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the domain name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO or BIONICLE in any other way that would give him a legitimate right in the name. Thus, the Respondent cannot claim any right or legitimate interest established by common usage.
Moreover, no license or authorization of any kind to use the LEGO or BIONICLE marks has been given to the Respondent. The Respondent is not an authorized dealer of the Complainant`s products and has never had a business relationship with the Complainant.
The mere registration of the domain name does not give the owner a right or a legitimate interest in the domain name.
Due to the reputation of the LEGO trademark, it is highly unlikely that the Respondent was unaware of the Complainant`s legal rights in the term LEGO at the time of the registration of the domain name <legobionicles.com>. The fact that the Respondent has chosen another trademark from the LEGO Group, BIONICLE, to combine with LEGO further supports the impression that the Registrant is very well aware of the nature of these trademarks. Accordingly, the Respondent cannot claim to have been using LEGO and BIONICLE without being aware of the Complainant`s rights to them. This circumstance, among others, proves that the Respondent`s interest cannot have been legitimate.
The Respondent is not using the domain name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen a domain name based on two registered trademarks in order to generate traffic to the website and income through sponsored links. The Respondent is misleading Internet users to commercial sites and consequently is tarnishing the LEGO and BIONICLE marks. No evidence was found that the Respondent uses the names as company names or has any other legal right in the terms LEGO and BIONICLE. Therefore, the Respondent is trying to sponge off the Complainant`s world famous trademarks.
The Respondent owns 3914 other domain names, which indicates that he is a "domainer" or "cybersquatter", some examples of domain names owned by the Respondent have been enclosed as Annex 13 to the Complaint.
For all these reasons, the Respondent has no rights or legitimate interests in the <legobionicles.com> domain name.
(3) The Domain Name was registered as is being used in bad faith
The LEGO mark is well-known worldwide. The awareness of this mark is significant. The number of third parties` registrations comprising the trademark LEGO in combination with other words has skyrocketed the last years. The considerable value and goodwill of the LEGO mark is most likely a large contribution to this and also what made the Respondent register the disputed domain name.
The fact that the Respondent has chosen another trademark from the LEGO Group, BIONICLE, to combine with LEGO, further supports the impression that the Respondent is very well aware of the nature of these trademarks. In addition, to the Complainant`s knowledge, the Respondent has no trademarks corresponding to either LEGO or BIONICLE. The Respondent was not authorized to use the Complainant`s mark. These circumstances strongly suggest that the <legobionicles.com> domain name was registered in bad faith.
The Complainant sent to the Respondent a cease and desist letter requesting the assignment of the disputed domain name in exchange of the documented out-of-pocket expenses. The Respondent never replied to the Complainant`s letter and subsequent reminders.
At the time of the filing of the Complaint, the domain name was connected to a website containing sponsored links. The Respondent was thus using the domain name to intentionally attempt to attract for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant`s mark as to the source, sponsorship, affiliation or endorsement of its website.
Whether or not the Respondent has influenced what links should be included on the sites is irrelevant for a finding of bad faith in this case. It is also without relevance whether or not the Respondent is actually getting revenue from this page himself. The Complainant makes reference to Villeroy & Boch AG v. Mario Pingerna,
WIPO Case No. D2007-1912, in which the panelist found that the fact that the Respondent did not receive any money from the website connected to the disputed domain name, did not exclude, per se, the existence of bad faith.
The Respondent did not reply to the Complainant`s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that 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; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown that it is the owner of trademarks LEGO and BIONICLE in various countries worldwide.
The disputed domain name consists of the union of the Complainant`s trademarks LEGO and BIONICLE at the end of which the letter "s" is added.
The Complainant has provided evidence of the reputation of the LEGO trademark and of the continuously growing success of the BIONICLE marked products since their launch in 2001. The Complainant has proved that the BIONICLE products won several prizes, including a prize for the "Most Innovative Toy of the Year" by the Toy Industry Association in the US. It is therefore likely that although not as well-known as the trademark LEGO, BIONICLE also enjoys some reputation.
In the Panelist`s view, there is a confusing similarity whenever a domain name coincides with two renowned trademarks in which the Complainant has rights. In the instant case, the LEGO trademark is well-known worldwide and its fame has also contributed to the reputation of the BIONICLE trademark. Indeed, as the Complainant points out, the BIONICLE section of the <lego.com> website is the one with the longest average time per visit, at 9 minutes. Moreover, the Complainant has mentioned important sales of the BIONICLE products in the last 4 years.
It is therefore highly likely that Internet users, when seeing the <legobionicles.com> domain name immediately associate it to the Complainant. The mere addition of the letter "s" placed at the end of the BIONICLE trademark cannot affect this conclusion, as most probably, such a small difference with the Complainant`s BIONICLE trademark will go unnoticed to Internet users. Likewise, the addition of the generic top level domain ".com" cannot modify the general impression of similarity of the disputed domain name with the two Complainant`s trademarks.
For all these reasons, the Panelist finds that the Complainant has successfully proved that the disputed domain name is confusingly similar to the Complainant`s trademarks LEGO and BIONICLE.
B. Rights or Legitimate Interests
According to the Complainant, the Respondent is not an authorized dealer of the LEGO and/or BIONICLE goods and was never authorized to use the Complainant`s trademarks. Moreover, nothing suggests that the Respondent is commonly known by the domain name or the terms LEGO and/or BIONICLE.
The Respondent is not appearing to make a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert Internet users or to tarnish the trademarks at issue. The <legobionicles.com> domain name is used to connect to a parking page containing sponsored links. Whilst in principle connecting a domain name to a parking page containing sponsored links is not per se illegitimate, using a third party`s well-known trademark to increase access to the parking page and as such generate more revenues cannot be considered a legitimate non commercial or fair use of the domain name (see also Owens Corning vs. NA,
WIPO Case No. D2007-1143).
Therefore the Panelist finds that the Complainant has successfully proved that the Respondent lacks rights to, and legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panelist finds that the Complainant has successfully proved that the disputed domain name has been registered and is being used in bad faith.
As far as registration in bad faith is concerned, the Complainant has enclosed, as Annex 8, two publications on famous trademarks worldwide. Although these publications are quite old (1985 and 1996), there are no circumstances that could make the Panelist believe that the situation has meanwhile changed. Nor did the Respondent object to the reputation of the LEGO trademark.
The Panel is also satisfied that the Complainant has successfully proved a certain amount of reputation in respect of the BIONICLE trademark, by showing important sales and advertisement investments from 2001 to 2004 and proving that the BIONICLE products won important prizes and awards.
As a consequence, the Panelist agrees with the Complainant`s statement that;
"[T]he fact that the Respondent has chosen another trademark from the LEGO Group, BIONICLE, to combine with LEGO further supports the impression that the Registrant is very well aware of the nature of these trademarks. That is, the Respondent cannot claim to have been using LEGO and BIONICLE without being aware of the Complainant`s rights to it."
In this case, the registration of a domain name containing a well-known and highly recognizable trademark coupled with another reputed trademark belonging to the same entity, constitutes a bad faith registration as it is clear evidence that the Respondent purportedly registered the domain name to benefit from the goodwill and reputation of the third party`s trademarks.
Moreover, the fact that the Respondent is the owner of other domain names identical or confusingly similar to other well-known third parties` trademarks, evinces a pattern of conduct, and constitutes evidence of the Respondent`s registration of the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.
As to use in bad faith, the Complainant proved that at least at the time of the filing of the Complaint, the domain name was used to connect to a website containing sponsored links (see Annex 12 to the Complaint).
The fact that the sponsored links are placed on a parking page of the domain name provider is irrelevant. Indeed, the Respondent had the control of the website at any time, and the full power to decide its content and prevent third parties from using the domain name for illegitimate purposes. However, not only did the Respondent not amend the contents of the website to which the domain name directed, but he also tried to change its contact details as soon as the Center notified him of the Complaint, showing continuous bad faith in the maintenance of the domain name.
In addition, the Complainant proved that it offered to reimburse the out-of-pocket costs directly related to the domain name in exchange of the domain name assignment. However, the Respondent did not accept this offer, nor did he adduce any reason for refusing to assign the domain name in exchange of the documented out-of-pocket expenses. By doing so, the Respondent implicitly admitted that his maintenance and use of the domain name was not in good faith, and that he registered the domain name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant for valuable consideration in excess of his documented out-of-pocket costs.
In the light of the above, the Panelist finds that the domain name was not only registered, but also used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <legobionicles.com> be transferred to the Complainant.
Dated: July 15, 2009