The Complainant is LEGO Juris A/S Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Aulia Haryono, jawa timur, 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 October 26, 2011. On October 26, 2011, the Center transmitted by email to October 26, 2011 a request for registrar verification in connection with the disputed domain name. On October 26, 2011, eNom 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 November 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2011.
The Center appointed Christophe Imhoos as the sole panelist in this matter on January 4, 2012. 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.
On January 7, 2012, the Center received a request from the Respondent stating his willingness to transfer the disputed domain name. The same day the Complainant requested that the administrative proceeding be suspended as the Respondent might transfer the domain name and the Complainant needed to sort out if Respondent would do this or not. The Center forwarded these communications to the Panel upon receipt of which the latter confirmed that the administrative proceeding was suspended until February 9, 2012. On February 10, 2012, the Panel was informed by the Center that the suspension period had ended and that the Complainant had asked the Panel to proceed with its decision as the disputed domain name had not been transferred by the Respondent to the Complainant. 4. Factual Background
The Complainant is the owner of LEGO, and all other trademarks used in connection with LEGO brands of construction toys and other LEGO branded products (Annex 7 to the Complaint). The Complainant and its licensees commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them.
The Complainant is the owner of numerous trademark registrations, including a U.S. trademark registration registered in 1975, with registration number 1018875, in addition to the Indonesian trademark registration, with trademark number 430.237 (Annex 6 to the Complaint).
The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in Indonesia and elsewhere.
The Complainant is also the owner of more than a thousand domain names containing the term “lego” (Annex 8 to the Complaint). It is the strict policy of the Complainant that all domain names containing the word LEGO should be owned by the Complainant.
The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive web site under the domain name (Annex 10 to the Complaint).
The disputed domain name was registered on August 21, 2011. 5. Parties’ Contentions A. Complainant
The Complainant’s arguments are mainly the following:
(i) The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The dominant part of the domain name comprises the term “lego”, which is identical to the registered trademark LEGO, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world (Annexes 6 and 8 to the Complaint).
The disputed domain name is clearly confusingly similar to the Complainant’s world famous trademark LEGO. The suffix “starwarsadvent” does not detract from the overall impression and the said domain name; it is rather fitted to strengthen the impression that the disputed domain name belongs to, or is affiliated with Complainant and must therefore be considered to be confusingly similar with the Complainant’s trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent cannot claim any rights established by common usage as it has neither any registered trademarks or trade names corresponding to the domain name in dispute nor anything that would suggest that Respondent has been using LEGO in any other way that would give it any rights or legitimate interests therein.
In addition, no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO.
Moreover, the Respondent having registered on August 21, 2011 it is highly unlikely that it would not have known the Complainant's legal rights on the name LEGO at the time of registration.
Lastly, the Respondent is not using the disputed domain name in connection with a bona fide offer of goods or services. Instead, the Respondent has intentionally chosen a domain name based on registered trademarks in order to generate traffic to a site where visitors are redirected to to do the actual purchase (Annex 11 to the Complaint).
(iii) The disputed domain name was registered and is being used in bad faith.
LEGO is a famous trademark worldwide. It is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration.
By using the disputed domain name, the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain. In effect, the disputed domain name is currently connected to a web site containing links that lead to “www.” selling LEGO products, from which the Respondent most likely derives income once a visitor clicks on the links and is redirected to “www.” (Annex 11 to the Complaint).
In addition, the Complainant first tried to contact the Respondent on September 26, 2011 through a cease and desist letter (Annex 12 to the Complaint). In that letter, the Complainant advised the Respondent that the unauthorized use of the LEGO trademark in the disputed domain name violated the rights in the trademark LEGO, owned by the Complainant. The Complainant requested the immediate transfer of the said domain name and offered compensation for the expenses of registration and renewal fees (not exceeding out of pocket expenses). No reply was received and the Complainant sent two reminders on October 4 and October 19, 2011 respectively but without any reply. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file this Complaint. It has been mentioned in earlier disputes that the failure of a respondent to respond to a cease and desist letter, or a similar attempt of contact, has been considered relevant in a finding of bad faith (see e.g. News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460).
Based on the afore-mentioned grounds, the Complainant requests the Panel that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not file any reply to the Complaint. The only communication received during the proceedings, was the email of January 7, 2012 stating the respondent’s willingness to hand over the domain name. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Respondent’s domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to paragraph 4(a) of the Policy.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
The Complainant has established its rights in the trademark LEGO in the Indonesia and the United States (Annex 6 to the Complaint).
The Complainant’s trademark LEGO is obviously confusingly similar to the domain name . The combination of the trademark LEGO with STAR WARS does not alter such a finding (see Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC,WIPO Case No. D2003-0112 mentioned by the Complainant in its Complaint). The same is also true for the suffix "advent" (see Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, cited by the Complainant).
Last but not least, this Panel shall not depart from a previous finding (LEGO Juris A/S v. school,WIPO Case No. D2011-0639) regarding the domain name . The panel stated that; “The disputed domain name consists of the Complainant's trade mark in its entirety, together with a mark under which an extremely successful product line has been sold for over a decade. Far from resolving any confusion caused by the use of the term ”lego”, the addition of the term “Starwarsets” actually exacerbates it. In this Panel’s view, there can be no doubt that the disputed domain name is identical or confusingly similar to the Complainant's marks.”
The Panel finds therefore that the disputed domain is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the disputed domain name. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (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 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.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 or Isabelle Adjani .v. Second Orbit Communications, Inc.,WIPO Case No. D2000-0867).
The Complainant should nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Complainant does not seem to have granted any license or to have otherwise permitted the Respondent to use the Complainant’s trademark or to apply for any domain name incorporating the Complainant’s trademark. Moreover, the Respondent is not known by the domain name at stake.
The Panel shares the Complainant's contention that the Respondent is not using the disputed domain name in connection with a bona fide offer of goods or services. Indeed, the Respondent, when using the disputed domain name based on registered trademarks, generates traffic to a site where visitors are redirected to to do the actual purchase (Annex 11 to the Complaint), thereby misleadingly diverting consumers for his own commercial gain.
Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the disputed domain name.
As a result, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Anyone of the following behaviors is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.
As already mentioned, the Respondent did not file any formal response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000-0944).
The Panel shares the Complainant's view that the trademark LEGO has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world. The Respondent, when registering the disputed domain name, could not have been unaware of the trademark LEGO and its value.
The Panel also endorses the Complainant's contention that the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain when connecting the disputed domain name to a web site containing links that lead to selling LEGO products, from which the Respondent most likely derives income once a visitor clicks on the links and is redirected to (Annex 11 to the Complaint). Furthermore, the Panel follows the consensus view in all three cases that involved the same scenario (i.e. displaying Amazon ads and redirecting the visitors to a third party website: WIPO Cases Lego Juris A/S v. Adry Asry, WIPO Case No. D2011-224; LEGO Juris A/S v. Andrew Vierling,WIPO Case No. D2010-1913 and LEGO Juris A/S v. James Mills, WIPO Case No. D2011-1000): although the website itself does not offer goods for sale, but re-directs customers to e.g. where the respondent may obtain revenue from click-through advertising, it is not necessary to show it is using the domain name in dispute in bad faith, but where the use is extended to a domain name which is confusingly similar to the complainant’s trademark, such use will constitute bad faith use when it is made to intentionally attempt, for commercial gain, to divert Internet traffic to its website.
Last but not least, the fact that the Respondent did not consider responding to the Complainant's desist letter of September 26, 2011 (Annex 12 to the Complaint) and its reminders of October 4 and 19, 2011 is an aggravating factor.
For the reasons stated above, the Respondent's conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy. 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 disputed domain name be transferred to the Complainant.
Christophe Imhoos
Sole Panelist
Dated: February 17, 2012
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