Complainant is Lego Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is dwi agus helmi bisri, of bondowoso jawa timur, Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 2012, the Registrar 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 November 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2012. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on November 29, 2012.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on December 12, 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
Complainant is a Danish company, owner of LEGO and all other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products. Complainant initiated the use of the LEGO trademark in 1953 and is currently a leading company specialized in constructions toys for children.
Complainant's licensees are authorized to exploit Complainant's intellectual property rights, including its trademark rights, in Indonesia (where Respondent resides) and elsewhere. Complainant holds an Indonesian trademark registration No. IDM000208750 LEGO and several other trademark registrations throughout the world.
Complainant is also owner of over 2,400 domain names incorporating the term “lego” (Annex 8 of the Complaint).
The present dispute concerns the disputed domain name , registered by Respondent on July 3, 2012. 5. Parties’ Contentions A. Complainant
Complainant is the owner of numerous trademark registrations throughout the world, and over 2,400 domain names containing the word LEGO, highly distinctive and famous in its market segment. It states that LEGO is undoubtedly a well-known trademark, being one of the best-known trademarks in the world, due in part to decades of extensive advertising.
Complainant proves the status of its well known trademark LEGO with an official list of top 500 Superbrands for 2009/2010, provided by Superbrands UK (Annex 9 of the Complaint), which shows LEGO as number eight of the most famous trademarks in the world.
In support of this argument, Complainant refers to a number of UDRP decisions made by previous UDRP panels in cases involving the LEGO trademark, where LEGO was acknowledged as being a well known trademark.
Complainant contends that the disputed domain name is confusingly similar to its trademark, since it contains the word LEGO and Respondent has no license or authorization to use this term. It also explains that the LEGO Group has expanded the use of the trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. It also states that the addition of the top-level domain (Tld) “.info” does not have any impact on the overall impression of the dominant portion of the disputed domain name, being irrelevant to determine the confusing similarity between Complainant’s trademarks and the disputed domain name.
Complainant also informs that since it has a product line for LEGO Mindstorms, the addition of this term after LEGO in the disputed domain name only enhances the similarity between Complainant’s trademark and the disputed domain name.
Complainant alleges it tried to contact Respondent through a cease and desist letter on August 30, 2012, requesting the immediate transfer of the disputed domain name. Even after a few reminders, Respondent never replied.
Complainant argues that Respondent has no rights or legitimate interests with regard to the disputed domain name since it could not find any trademarks registered by Respondent corresponding to the disputed domain name.
Complainant claims the website in question provides links to other websites where LEGO products are sold. Thus, Respondent is using the disputed domain name to intentionally attempt to attract Internet users to the website, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website. Therefore, Complainant concludes the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to succeed in a UDRP proceeding, Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in respect of which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
These three elements are considered hereinafter.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules. A. Identical or Confusingly Similar
Complainant has duly proved the first element under paragraph 4(a) of the Policy by attesting that it is the owner of several trademark registrations for LEGO worldwide and that such trademark is incorporated in the disputed domain name .
The Panel acknowledges the fame of trademark LEGO and that it is a well known trademark. Facts which have been confirmed in previous UDRP decisions. See LEGO Juris A/S v. Domain Administrator,WIPO Case No. D2010-1260 (“In the present case, the disputed domain names incorporate Complainant’s well-known registered trademark LEGO”); LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840 (“LEGO is clearly a well-known mark”), and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680 (“LEGO is a mark enjoying high reputation as construction toys popular with children”).
The Panel agrees that the addition of the word “mindstorms” in the disputed domain name may increase chances of consumer’s confusion given that Complainant has a specific product line for LEGO Mindstorms, which identifies robotic toys, as per extract from Complaint’s official website (Annex 14 of Complaint).
As for the use of the top-level domain (“Tld”) “.info” it is well-settled in UDRP decisions that “the applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“ WIPO Overview 2.0”, 1.2). In this case, the use of the Tld “.info” does not, in any way, diminish the risk of confusion between the disputed domain name and Complainant’s trademark LEGO.
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s trademark LEGO. B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview, 2.0 as follows: “[A] complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If Respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If Respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on Complainant.”
In this case, Complainant has provided sufficient prima facie proof of no rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not filed any Response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name .
The Panel recognizes that Complainant has never authorized Respondent to incorporate its trademark LEGO into the disputed domain name, and since Respondent has not chosen to present any argument in this matter or attempted to prove any right, it is apparent that its only intention when registering the disputed domain name was to attract for commercial gain Internet users to its website by creating a false association with Complainant’s mark.
In view of the above, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the disputed domain name, Respondent having 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 it is highly unlikely that Respondent was not aware of Complainant’s legal rights to the trademark LEGO at the time of registration of the disputed domain name, considering its fame and well known status. The fact that the disputed domain name resorts to links where online sales of toys are made, and as the LEGO trademark also identifies toys, is another sign that Respondent was acting in a way as to make an undue profit from the use of a domain name confusingly similar to Complainant’s trademark.
Thereby, based on paragraph 4(b)(iv) of the Policy, the Panel holds that Respondent is using the disputed domain name to intentionally attempt to attract Internet users to the website at the disputed domain name, by creating a likelihood of confusion with Complainant’s trademark, which leads to a finding of bad faith of Respondent while registering and using the disputed domain name.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith. 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 Complainant.
Gabriel F. Leonardos
Sole Panelist
Date: December 26, 2012
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