Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Duma Haryanto of Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2011. On May 19, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On May 19, 2011, eNom transmitted by email 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 14, 2011.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on June 16, 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 is a major international toy company based in Denmark. Complainant is the owner of several marks for LEGO around the world, including International Registration No. 000039800 (1998); United States Registration Nos. 1018875 and 2245652; and Registration No. 430237 in Indonesia, where Respondent’s address of record is listed. Due to extensive use, advertising, and revenue associated with its LEGO mark, Complainant enjoys a high degree of renown associated with these marks around the world. The international magazine Superbrands ranked Complainant, with the LEGO name and mark, the number 8 brand in the world for the year 2010/2011, just behind Coca-Cola, and ahead of Apple, BMW, Fisher-Price and Disney, making Lego “the most powerful toy brand” in the world according to “.”
In 1998, Complainant created a line of programmable construction toys known as Lego Mindstorms. The Lego Mindstorms toys were designed to run on an rcx platform. Accordingly, the toys are commonly known as Lego Mindstorms Rcx robotics or construction toys.
Complainant owns the registration for hundreds of domain names that include its registered LEGO mark, and Complainant runs a website at the URL associated with . Complainant uses this domain name to connect to a website through which it informs potential customers about its LEGO mark and its toys, theme parks and other services and products. Several of the other domain names that Complainant owns incorporate the term MINDSTORMS as well as LEGO, including ; ; ; ; and .
The disputed domain name was registered on October 21, 2010. Respondent has no affiliation with Complainant. Respondent has set up a website at the URL associated with the disputed domain name, with information about Complainant’s own Lego Mindstorms Rcx product, and provided sponsored links to other websites, including “”. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby. 5. Parties’ Contentions A. Complainant
Complainant contends that (i) is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions in this proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s well-known, registered trademark LEGO, and merely adds the descriptive words “mindstorms” and “rcx.”
The Panel finds that the added words would be perceived by Internet users as descriptive of a website where they could find information about Complainant’s Lego Mindstorms toys that run on the rcx platform, also known as “Lego Mindstorms Rcx” toys. This is particularly so since Complainant is known for, and indeed has various domain names that incorporate its Lego Mindstorms product. So, consumers would expect to find information offered by Complainant on such a website.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step-Web,WIPO Case No. D2000-1500 (transferring ); General Electric Company v. Recruiters,WIPO Case No. D2007-0584 (transferring ); CBS Broadcasting, Inc. v. Y2K Concepts Corp.,WIPO Case No. D2000-1065 (transferring ).
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users via sponsored links, to websites that are unaffiliated with Complainant or Complainant’s services.
To the extent that the question may be raised as to whether Respondent may be considered a legitimate reseller of Complainant’s goods for purposes of retaining the mark under the UDRP, this Panel finds it is not. See Lego Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913 (transferring ). Rather, as discussed in the latter case, this Panel finds that in showing that Respondent apparently offers or advertises LEGO products only via a third party (i.e., “”), Complainant has provided a sufficient prima facie case of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy, which Respondent has not rebutted. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has set up a website at the URL associated with the disputed domain name, and provided sponsored links to other websites. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Furthermore, considering the high degree of renown of Complainant’s LEGO marks around the world, and the fact that the website associated with the disputed domain name refers to the “Lego Mindstorms Rcx” product, this Panel would be hard-pressed to find a possibility that Respondent was unaware of Complainant’s rights in Complainant’s marks when registering it. Accordingly, this too, evidences bad faith by Respondent.
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Dated: June 24, 2011
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