LEGO Juris A/S v. Weiwei Chu
Claim Number: FA1007001333647
PARTIES
Complainant is LEGO Juris A/S
(“Complainant”) represented by Anna
Mejlerö, of Melbourne IT Digital
Brand Services AB,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <legouniverse.us>,
registered with GoDaddy.com, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially
and to the best of his knowledge has no known conflict in serving as Panelist
in this proceeding.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on July 6, 2010; the Forum received a hard copy of
the Complaint on July 8, 2010.
On July 6, 2010, GoDaddy.com, Inc. confirmed by e-mail to the Forum that
the <legouniverse.us> domain name is registered with GoDaddy.com, Inc. and that Respondent
is the current registrant of the name.
GoDaddy.com, Inc. has verified that Respondent is bound by the
GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with the U. S.
Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 14, 2010, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 3, 2010 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On August 10, 2010, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed James A. Carmody,
Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <legouniverse.us> domain name is confusingly similar to Complainant’s LEGO mark.
2.
Respondent does not have any rights or
legitimate interests in the <legouniverse.us> domain name.
3.
Respondent registered and used the <legouniverse.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, LEGO Juris A/S, is in the
business of making and selling toy building blocks and construction kits. Complainant owns numerous trademark
registrations for the LEGO mark with trademark authorities around the world,
including the United States Patent and Trademark Office (“USPTO”) and the European
Union Office of Harmonization for the Internal Market (“OHIM”):
USPTO
Reg. No. 1,018,875 issued August 2, 1975;
Reg. No. 2,245,652 issued May 18, 1999; and
OHIM
Reg. No. CTM 39,800 issued May 10, 1998.
Respondent, Weiwei Chu, registered the <legouniverse.us> domain name on
March 11, 2010. The disputed domain name
resolves to a website selling online games, including Complainant’s game Lego
Universe.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules. The Panel is entitled
to accept all reasonable allegations and inferences set forth in the Complaint
as true unless the evidence is clearly contradictory. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb.
Forum July 31, 2000) (holding that the respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of the complaint to be
deemed true); see also Talk City,
Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint.”).
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
Complainant owns numerous trademark
registrations for the LEGO mark with trademark authorities around the world,
including the USPTO and the OHIM:
USPTO
Reg. No. 1,018,875 issued Aug. 2, 1975;
Reg. No. 2,245,652 issued May 18, 1999; and
OHIM
Reg. No. CTM 39,800 issued May 10, 1998.
The Panel finds that Complainant has established rights in the LEGO mark through its registration of the LEGO trademark with the USPTO and the OHIM for the purposes of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to UDRP ¶ 4(a)(i).”).
Complainant argues that Respondent’s <legouniverse.us> domain name is confusingly similar to Complainant’s LEGO mark. In creating the disputed domain name, Respondent merely adds the descriptive term “universe,” referring to Complainant’s game Lego Universe, and the country-code top-level domain (“ccTLD”) “.us” to Complainant’s mark. The Panel finds that the addition of a generic term to Complainant’s mark is insufficient to prevent confusing similarity. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under UDRP ¶ 4(a)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)). The Panel also finds that the presence of the ccTLD “.com” does nothing to diminish the confusing similarity between the disputed domain name and Complainant’s mark. See Allied Building Prods. Corp. v. Henkel, FA 827652 (Nat. Arb. Forum Dec, 11, 2006) (“Further, it is well established that the top-level domain, here “.us,” is insignificant with regards to [Policy] analysis.”); see also Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (“However, the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names. Therefore, the Panel finds that the <crocshoes.us> domain name is confusingly similar to Complainant’s CROCS mark pursuant to Policy ¶ 4(a)(i).”). Thus, the Panel finds Respondent’s <legouniverse.us> domain name is confusingly similar to Complainant’s LEGO mark according to Policy ¶ 4(a)(i).
The Panel finds
Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Complainant has alleged that Respondent does
not have any rights or legitimate interests in the <legouniverse.us> domain name.
The burden shifts to Respondent to prove that it does have rights and
legitimate interests pursuant to Policy ¶ 4(a)(ii)
when the Complainant makes a prima facie
case in support of its allegations. The
Panel finds Complainant has made a sufficient prima facie case. Due to
Respondent’s failure to respond to the Complaint, the Panel may assume Respondent
does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to
determine whether Respondent has rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c). See Vanguard Group, Inc. v.
Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that
because the respondent failed to submit a Response, “Complainant’s submission
has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.”); see also Domtar, Inc. v.
Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well
established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts
to respondent to show that it does have rights or legitimate interests pursuant
to paragraph 4(a)(ii) of the [UDRP].”).
There is no evidence in the record to
conclude that Respondent owns any service marks or trademarks that reflect the
<legouniverse.us> domain
name. Therefore, the Panel finds that
Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum
Aug. 20, 2002) (finding that there was no evidence that the respondent was the
owner or beneficiary or a mark that is identical to the <persiankitty.us>
domain name); see also Pepsico, Inc. v.
Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the
respondent did not own any trademarks or service marks reflecting the
<pepsicola.us> domain name, it had no rights or legitimate interests
pursuant to Policy ¶ 4(c)(i)).
Respondent has offered no evidence, and there
is no evidence in the record, suggesting that Respondent is commonly known by
the <legouniverse.us> domain
name. The WHOIS information for the
disputed domain name identifies the registrant as “weiwei chu,” a name which
does not appear to be associated with the disputed domain name. Complainant further asserts that Respondent
is not licensed or authorized to use Complainant’s LEGO mark in the disputed
domain name. Therefore, the Panel finds
that Respondent has not established rights and legitimate interests in the <legouniverse.us> domain name
pursuant to Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7,
2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007)
(concluding that the respondent was not commonly known by the
<lilpunk.com> domain name as there was no evidence in the record showing
that the respondent was commonly known by that domain name, including the WHOIS
information as well as the complainant’s assertion that it did not authorize or
license the respondent’s use of its mark in a domain name).
Complainant alleges that Respondent is using the <legouniverse.us> domain name to resolve to a website selling online games, including Complainant’s Lego Universe game. The Panel finds that Respondent’s appropriation of Complainant’s mark to sell Complainant’s goods without authorization, as well as the goods of Complainant’s competitors, is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds
Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Complainant contends that Respondent’s
website that resolves from the <legouniverse.us>
domain name offers online games that compete with Complainant’s online
games. Selling competing goods under
Complainant’s mark disrupts Complainant’s business because Complainant’s mark
is used to attract customers to Respondent’s website. These customers may subsequently become
customers lost to Complainant if the Internet users purchase competitors’ goods
advertised on Respondent’s resolving website.
The Panel finds that Respondent’s offers to compete with and disrupt
Complainant’s business while using Complainant’s mark is evidence of bad faith
registration and use according to Policy ¶ 4(b)(iii). See DatingDirect.com
Ltd. v. Aston, FA
593977 (Nat. Arb. Forum Dec. 28, 2005)
(“Respondent is appropriating Complainant’s mark to divert Complainant’s
customers to Respondent’s competing business.
The Panel finds this diversion is evidence of bad faith registration and
use pursuant to [UDRP] ¶ 4(b)(iii).”); see also David Hall Rare Coins v.
Complainant asserts that Respondent’s <legouniverse.us> domain name
currently leads Internet users to Respondent’s website which sells online games
from different vendors, including games from Complainant, like Lego
Universe. Complainant argues that
Respondent’s use of Complainant’s mark in a domain name used for this purpose
aims to attract Complainant’s customers and mislead them into believing an
affiliation exists between Complainant and Respondent for Respondent’s
commercial profit. The Panel finds that
such misuse of Complainant’s mark for Respondent’s own financial gain
demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the
respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to UDRP ¶ 4(b)(iv)); see also Nokia Corp. v. Private,
D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant
to UDRP ¶ 4(b)(iv) where the domain name resolved to a website that offered
similar products as those sold under the complainant’s famous mark).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <legouniverse.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 12, 2010
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