The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Budi Irshandi of West Java, Indonesia/ Cha Licious of 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 November 28, 2012. On November 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 4, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 5, 2012.
The Center verified that the Complaint together with the amendment to 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 December 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2013.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on January 9, 2013. 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 Complianant is Lego Juris A/S, the company based in Denmark, worldwide leader in the field of toys.
The Complainant is is the owner of LEGO, and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products.
The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Indonesia.
The Complainant owns a large number of trademark registrations all over the world, including in Indonesia where the Respondent resides.
The Complainant’s trademark LEGO is one of the best-known trademarks in the world: in the official “Top 500 Superbrands for 2011/12”, provided by Superbrands UK, LEGO appears as number 31 in the list of the most famous trademarks and brands in the world.
The Complainant is also the owner of more than 1000 domain names containing the term LEGO.
The disputed domain name was registered on October 12, 2012; the disputed domain name resolves to a page displaying sponsored links, leading to the A website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s famous trademark LEGO. The fame of the Complainant’s trademark LEGO was confirmed by numerous previous UDRP panel decisions; for example see LEGO Juris A/S v. Rampe Purda, WIPO Case No. 2010-0840; LEGO Juris A/S v. Domain Administrator;WIPO Case No. 2010-1260; LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680; LEGO Juris A/S v. Level 5 Corp.,WIPO Case No. D2008-1692 and; LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715.
The addition of the suffix “uk”, that refers to the United Kingdom of Great Britain and Northern Ireland, is not relevant and will not have any impact on the overall impression of the dominant part of the domain name, LEGO, which is instantly recognizable as a world famous trademark.
Similarly the mere addition of the gTLD “.info” is irrelevant because the generic top level domain is not a distinctive element and is irrelevant to determine the confusing similarity between the trademark and the disputed domain name.
The Complainant contends that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed 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 the Respondent any legitimate interests in the name. Consequently the Respondent may not claim any rights or legitimate interests established by common usage.
The Complainant contends that no license or authorization has been given by the Complainant to the Respondent to use the trademark LEGO, and that the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
Furthermore, the Respondent did not demonstrate any use or demonstrable preparation to use the domain name in connection with a bone fide offering of goods or services. The disputed domain name directs Internet users to a website containing sponsored links, leading to the A website. Such use does not constitute a bona fide offering of goods and services. Moreover, the Complainant’s contends that no evidence has been found that the Respondent uses the name as a company name or has any other legal right in the name “Lego” and that the Respondent is trying to sponge off the Complainant’s famous trademark.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent’s bad faith registration is established by the fact that the Respondent was aware of the existence of the Complainant’s trademark given its status of a well-known and reputed trademark with a substantial and widespread value and goodwill all over the world.
Moreover, the Respondent replied to the cease and desist letter sent by the Complainant on August 27, 2012, asking for a reimbursement of USD 100. Since the Respondent could not provide any proof of these costs and considering the fact that USD 100 clearly exceeds the out of pocket expenses incurred by the Respondent, the Complainant chose to file a complaint according to the UDRP process.
The Respondent’s bad faith use of the disputed domain name is evidenced by the fact that the disputed domain name resolves to a website purporting to contain a LEGO blog. But actually, the website links to a third-party website, “www.a”, which offers products for both the Complainant and of its competitors.
Consequently, 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 attempting diverting consumers for the Respondent’s own commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the disputed domain name registered by the Respondent 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identity of the Respondent
Before addressing the requirements of the Policy it is convenient first to comment on the identity of the Respondent in this case.
“Cha Licious” is the name recorded on the publicly-available WhoIs database as the domain name holder for the disputed domain name, and the verification response from the Registrar confirms this. Cha Licious is therefore the formal Respondent in this case pursuant to paragraph 1 of the Rules (definition of “Respondent”) and, as such, the party against whom any Complaint concerning the disputed domain name should be initiated.
Nonetheless, the Panel also notes that the address confirmed by the Registrar regarding the Registrant “Cha Licious” seems to be a fake address as giving “KL (Kuala Lumpur), Indonesia”.
In the light of the foregoing circumstance, and considering that on the grounds of the documents annexed to the Complaint (see in particular annex 12) “Budi Irshandi” appears to be the “true” owner of the disputed domain name, to whom the cease and desist letter of the Complainant was originally addressed and who carried out negotiations with the Complainant for the transfer of the disputed domain name; and even considering that Budi Irshandi regularly received all the Center’s notifications and never contested its status of Respondent by filing a response to the Complainant, the Panel considers it appropriate to treat the actions of Budi Irshandi as the actions of the Respondent for the purposes of paragraph 4 of the Policy, as decided in similar cases (Building Trade 1868 Kft. v. RegisterF,WIPO Case No. D2006-0396; and Antonio de Felipe v. Registerf,WIPO Case No. D2005-0969). B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark, a well-known mark in which the Complainant has established rights through registration and extensive use.
The disputed domain name incorporates the Complainant’s LEGO trademark in its entirety; the only difference is the mere adjunction of the suffix “uk”. The mere addition of said geographical indicator (that clearly relates to the United Kingdom) is not enough to the Panel to prevent confusing similarity between the disputed domain name and the Complainant’s famous trademark (see America Online Inc. v. Yetech Communication Inc.,WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu,WIPO Case No. D2005-0987; for the addition of a geographical indicator see Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709; and PepsiCo Inc. v. QWO, WIPO Case No. D2004-0865).
Similarly, with regards to the gTLD “.info”, as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society,WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@,WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether it is identical or confusingly similar; indeed the gTLD is a necessary component of the domain name and does not give any distinctiveness.
There is no doubt that the disputed domain name is confusingly similar to the Complainant’s trademark. Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy. C. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain name, such as:
(i) use or preparation to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the disputed domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain name.
The Complainant states that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name or anything that would suggest that the Respondent has been using “Lego” in any other way that would give them any legitimate rights or interests in the name. Moreover no license or authorization has been given by the Complainant to the Respondent to use the trademark LEGO and the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
Furthermore, the use of the disputed domain name cannot be considered a bona fide offering of goods or services. As a matter of fact, by registering the disputed domain name the Respondent clearly intended to profit from the use of a domain name which is confusingly similar to the Complainant’s well-known trademark, diverting Internet users to website where sponsored links exist and lead to the A web-site, which offers products from competitors of the Complainant and the Complainant.
Such use cannot be considered by any means as a “bona fide use”, as stated in various previous UDRP decisions in similar cases, and in particular in the following decision, where the panel stated:
“Here, Respondent contends that it has a legitimate interest because it offers goods for sale at its site and did so before it received an objection from Complainant. Respondent also contends that it has a legitimate interest in using the AMPHENOL mark because it purchases products from Complainant… It appears that Respondent used the Domain Name as a means of attracting Internet Users to its site where it sells cable assemblies comprised of parts from Complainant and from other companies… the mark is used as ‘bait’ to lead consumers to its own hybrid cable assemblies. Other cases have found that the use of a trademark as part of a domain name leading to a site selling other products was not bona fide. Similarly I believe that Respondent does not have a legitimate interest in using Complainant's mark to lead customers to a site that sells its own hybrid cable assemblies.”
(Amphenol Corporation v. Applied Interconnect, Inc,WIPO Case No. D2001-0296, internal citations omitted).
Since the Respondent has registered and is using the disputed domain name with the clear intention to use the Complainant’s marks and name for its own profit, misleading Internet users to commercial web-sites by seeking to create an impression of association with the Complainant (see Drexel University v. David Brouda,WIPO Case No. D2001-0067), it can be stated that such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name.
Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the disputed domain name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493; and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met. D. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and is being used in bad faith.
The Complainant’s name, trademark and activities are well-known throughout the world and considering the widespread use and fame of the Complainant’s trademark, in this Panel’s view the Respondent must have been aware of them when it registered the disputed domain name. And indeed, the Respondent’s awareness of the Complainant’s activity and rights may be inferred by the fact that the Respondent registered the disputed domain name incorporating the LEGO trademark in its entirety, with the mere addition of the suffix “uk”. However, the Respondent itself in an e-mail to Complainant dated August 29, 2012, recognized its knowledge of the Complainant’s LEGO trademark.
As the Panel has found that the Respondent has no rights or legitimate interests in the disputed domain name, in line with other prior UDRP decisions (Banca Sella s.p.a. v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano,WIPO Case No. D2000-1794; and Ferrero S.p.A. v. Publinord S.r.l.,WIPO Case No. D2002-0395) the Panel believes that, given the circumstance of this case and in the absence of any rights or legitimate interests, and lacking any contrary evidence by the Respondent, the Respondent’s registration of disputed domain name confusingly similar to the Complainant’s worldwide well-known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates,WIPO Case No. D2007-1412 and Mastercard International Incorporated v. Total Card Inc.,WIPO Case No. D2007-1411).
Concerning the use of the disputed domain name, the Complainant has proven that it resolves to a website where sponsored links exist and lead to the A website, which offers products from competitors of the Complainant, and the Complainant.
In the Panel’s opinion the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s products and to obtain information about the Complainant’s activities, to its own website, by creating a likelihood of confusion with the Complainant’s trademark and business, as to inter alia, the source of its website and obtaining revenues from the diverted traffic (see Philip Morris Inc. v. Alex Tsypkin,WIPO Case No. D2002-0946; MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios,WIPO Case No. D2008-0325; and Giorgio Armani S.p.A. v. Daulet Tussunbayev,WIPO Case No. D2011-2082).
Furthermore, in the Panel’s view, the bad faith of the Respondent in registering and using the disputed domain name can be inferred from the Respondent’s reply to Complainant’ s cease and desist letter (Complaint, annex 12). Indeed, the Respondent asked an amount of USD 100 for the transfer of the disputed domain name and, according to previous UDRP decisions (DHL Operations B.V. v. Karel Salovsky,WIPO Case No. D2006-0520 and AstraZeneca AB v. Alvaro Collazo,WIPO Case No. D2005-0367) this amount is a valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
In light of all the above circumstances, the Panel is satisfied that the third element is met and 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 the Complainant.
Alessandra Ferreri
Sole Panelist
Date: January 22, 2013
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