NATIONAL ARBITRATION FORUM

 

DECISION

 

LEGO Juris A/S v. Zheng Kang

Claim Number: FA1101001369800

 

PARTIES

Complainant is LEGO Juris A/S (“Complainant”) represented by Anna Mejlerö, of Melbourne IT Digital Brand Services AB, Sweden.  Respondent is Zheng Kang  (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lego-onsale.us>, registered with eNom, INC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 27, 2011; the Forum received a hard copy of the Complaint on January 31, 2011.

 

On January 27, 2011, eNom, INC. confirmed by e-mail to the Forum that the <lego-onsale.us> domain name is registered with eNom, INC. and that Respondent is the current registrant of the name.  eNom, INC. has verified that Respondent is bound by the eNom, 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 February 3, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 23, 2011 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 February 28, 2011, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 <lego-onsale.us> domain name is confusingly similar to Complainant’s LEGO mark.

 

2.      Respondent does not have any rights or legitimate interests in the <lego-onsale.us> domain name.

 

3.      Respondent registered and used the <lego-onsale.us> domain name in bad faith.

 

B. Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, LEGO Juris A/S, uses the LEGO mark in connection with its toy building blocks.  Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the LEGO mark (e.g., Reg. No. 1,018,875 issued August 26, 1975). 

 

Respondent, Zheng Kang, registered the <lego-onsale.us> domain name on August 11, 2010.  The disputed domain name resolves to a directory website that provides hyperlinks for Complainant’s competitors.

 

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 claims rights in the LEGO mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 1,018,875 issued August 26, 1975).  The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the LEGO mark pursuant to Policy ¶ 4(a)(iii).  See 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).”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to UDRP ¶ 4(a)(i)).  In addition, the Panel finds it is irrelevant whether Complainant holds trademark registrations with the trademark authority in the country in which Respondent resides.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant argues that Respondent’s <lego-onsale.us> domain name is confusingly similar to its LEGO mark.  Respondent fully incorporates Complainant’s mark in the disputed domain name.  Respondent then attaches a hyphen and the generic terms “on” and “sale” to Complainant’s mark.  Finally, Respondent affixes the country code top-level domain (“ccTLD”) “.us” to Complainant’s mark in the disputed domain name.  The Panel finds that these additions do not negate a finding of confusingly similar.  See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to [UDRP] ¶ 4(a)(i).”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark).  Therefore, the Panel determines that Respondent’s <lego-onsale.us> domain name is confusingly similar to Complainant’s LEGO mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant must first establish a prima facie case demonstrating that Respondent lacks rights and legitimate interests in the <lego-onsale.us> domain name under Policy ¶ 4(a)(ii).  The burden then shifts to Respondent to show it has rights or legitimate interests in the disputed domain name.  The Panel may find that Respondent’s failure to submit a Response indicates that Respondent lacks rights and legitimate interests.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under [UDRP] ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  Despite Respondent’s failure to respond, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <lego-onsale.us> domain name under Policy ¶ 4(c).

 

There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <lego-onsale.us> domain name.  Therefore the Panel finds that Respondent does not have rights and 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 Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because 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)).

 

Complainant claims it has not licensed or authorized Respondent to use its LEGO mark.  Furthermore, the WHOIS information lists “Zheng Kang” as the registrant of the disputed domain name, which the Panel finds is not similar to the <lego-onsale.us> domain name.  Without evidence to the contrary, the Panel finds that Complainant’s assertion combined with the WHOIS registrant information indicates that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); see also 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).

 

Complainant alleges the <lego-onsale.us> domain name resolves to a directory website that displays hyperlinks to third-party websites, some of which compete with Complainant’s business.  A screen shot of the resolving website shows a page that features links with sites that incorporate the LEGO mark.  The Panel presumes that Respondent profits from its use of the disputed domain name through the receipt of pay-per-click fees.  Based on the evidence in the record, the Panel concludes that Respondent uses the disputed domain name to operate a pay-per-click website that provides hyperlinks for Complainant’s competitors.  Accordingly, the Panel holds that Respondent does not use the <lego-onsale.us> domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iv).  See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration or Use in Bad Faith

 

The Panel finds that Respondent’s domain name redirects Internet users seeking Complainant’s products to a website that displays hyperlinks for Complainant’s competitors.  Therefore, the Panel finds that Respondent’s domain name disrupts Complainant’s business, which constitutes registration and use in bad faith under Policy ¶ 4(b)(iii).  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”).

 

The Panel also finds that Respondent likely profits from its use of the disputed domain name through the receipt of pay-per-click fees.  Moreover, the <lego-onsale.us> domain name is confusingly similar to Complainant’s LEGO mark.  Therefore, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s site.  Consequently, the Panel finds that this behavior provides further evidence that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under UDRP ¶ 4(b)(iv)); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <lego-onsale.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  March 11, 2011