The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is toto ponco hartanto of Gorontalo, Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Domain Name”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2012. On April 2, 2012, the Center transmitted by email to GoD, LLC. a request for registrar verification in connection with the Domain Name. On the same date, GoD, LLC. 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 April 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2012.
The Center appointed Thomas Hoeren as the sole panelist in this matter on May 25, 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. 4. Factual Background
The Complainant is the holder of the LEGO trademark and all other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products (Annex 6 of the Complaint). The trademark LEGO is among the best-known trademarks in the world, which is prominently depicted on all products, packaging, displays, advertising, and promotional materials of the Complainant.
The Domain Name was registered on December 17, 2011.
The Domain Name resolves to an online shop where the Complainant’s products, as well as competitor’s products, are offered for sale (Annex 11 of the Complaint). 5. Parties’ Contentions A. Complainant
The Complainant held that the Domain Name is confusingly similar to the Complainant’s trademark LEGO. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way that would give it any legitimate rights in the name. Consequently the Respondent may not claim any rights established by common usage. It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO.
The Complainant first tried to contact the Respondent on February 3, 2012 through a cease and desist letter. In the letter the Complainant advised the registrant that the unauthorized use of the LEGO trademark in the Domain Name violated the rights in the trademark LEGO, owned by the Complainant. The Complainant sent two reminders on February 6, 2012 and March 9, 2012. The Complainant never heard back from the Respondent following the reminders. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint under the UDRP. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed in its Complaint, the Complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the Panel of the following three elements:
(i) the 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 Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Complainant holds numerous registrations for the trademark LEGO which precede the registration of the Domain Name. It has evidenced registrations for the trademark LEGO in several countries including the United States of America. The Domain Name incorporates the Complainant’s trademark LEGO in its entirety. This is in itself sufficient to support the claim that the Domain Name is confusingly similar to the Complainant’s marks. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”), and also Oakley, Inc. v. Zhang Bao,WIPO Case No. D2010-2289). The addition of the suffix “feuerwehr” (a German word for fire brigade – one of the game products of LEGO) is not relevant and does not have any impact on the overall impression of the dominant part of the name, LEGO. B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy. According to a consistent series of UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence. See, among others, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
The Panel notes that the Respondent has failed to file a Response to prove its rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy. For all of the above reasons and as further discussed under the third element, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Panel finds that the Respondent knew or should have known the products and trademark of the Complainant when registering the Domain Name. The Domain Name was registered many years after the Complainant registered its trademark LEGO. The Complainant’s trademark has a strong reputation and is widely known, as evidenced in the Complaint. The Respondent failed to respond to the Complaint. As evidenced in the Complaint the Domain Name resolves to a website where not only products of the Complainant are offered for sale but also those of the Complainant’s competitors. It has also been evidenced by the Complainant that the Respondent has been contacted through a cease and desist letter, sent by e-mail. There was no reply to this communication. The Panel considers this fact as a further indication of bad faith vis-à-vis the Respondent. Finally, in the Panel’s view, all these activities carried out by the Respondent in relation to a widely-known trademark are a clear indication of bad faith not only in the registration stage but also in the use of the Domain Name. 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 the Complainant.
Thomas Hoeren
Sole Panelist
Dated: June 6, 2012
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