Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Corporate Brand Services AB, Sweden.
Respondent is Ruli Friady of Tanjungpinang, Kepri, Indonesia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2011. On May 19, 2011, the Center transmitted by e-mail to eNom. a request for registrar verification in connection with the Domain Name. On May 19, 2011, eNom. transmitted by e-mail to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 15, 2011.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 27, 2011. 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
Complainant has manufactured construction toys and related products under the LEGO mark since 1953. The LEGO mark is famous and its renown is widespread. Complainant alleges that its products are sold in more than 130 countries, including Respondent’s country Indonesia. Complainant’s revenues in 2009 exceeded $2.8 billion. Complainant has registered the LEGO mark and many LEGO-formative marks in numerous jurisdictions around the world. One of the products marketed by Complainant is LEGO City Set #8404.
Respondent registered the Domain Name on October 28, 2010. The website to which the Domain Name currently resolves is a parking page, but the site previously contained information about Complainant’s products and featured a link to an A site where Complainant’s products are offered. The site also said: “ORDER HERE – THE BEST PRICE. Don’t spend more than you have to! We’ve already done the research for you.”
Complainant sent Respondent a cease-and-desist letter to Respondent on November 11, 2010. Respondent apologized for the registration and use of the Domain Name and offered to relinquish it for $110 -- $10 for the Domain Name registration and $100 for setting up the website. Complainant offered only to reimburse Respondent for the former expense. Respondent did not reply and Complainant sent a series of chaser messages to Respondent during the first few months of 2011. This Complaint followed. 5. Parties’ Contentions A. Complainant
Complainant’s salient factual assertions are set forth above. Complainant asserts that it has satisfied the three elements of the Policy and is entitled to a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant clearly has rights in the well-known mark LEGO, through registration and longstanding use. The Domain Name incorporates the famous mark and adds the text “cityset8404,” which describes a product marketed by Complainant under the LEGO mark. The Panel finds that this additional text does not diminish the confusing similarity between the mark and the Domain Name, particularly since Complainant specifically sells a LEGO City Set #8404.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122 (March 26, 2001). Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174 (April 22, 2003), correctly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not effectively rebut any of Complainant’s assertions. Nor did Respondent seek to justify its actions in its correspondence with Complainant.
There is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Respondent is in “bad faith” under paragraph 4(b)(iv) of the Policy. First, the Panel concludes that Respondent had Complainant’s LEGO mark in mind when registering the Domain Name. The LEGO mark is famous and does not also reflect a common word, at least in the English language. (The English language is considered important by the Panel here because Respondent also included common English words “city” and “set” in the Domain Name.) The fact that Respondent added to the LEGO mark the words “city” and “set” and the number 8404 makes it obvious that Respondent had Complainant’s mark in mind.
Second, Complainant alleges that Respondent was seeking to divert Internet users to his website and derive income from such diversion. This allegation is plausible in view of the content posted for a time at Respondent’s website, and this allegation is not rebutted by Respondent. The commercial content once found at Respondent’s website makes it reasonable to infer, particularly in the absence of any explanation or denial by Respondent, that Respondent has intentionally sought to attract, for commercial gain, Internet users to Respondent’s site by creating a likelihood of confusion between the LEGO mark and the Domain Name. The Domain Name’s current use does not change the Panel’s finding.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Dated: July 11, 2011
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