The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Hindira Subekti of Indiana, United States of America. 2. The Disputed Domain Names and Registrar
The disputed domain names , and are registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2013. On January 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 17, 2013, the Registrar 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 January 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2013.
The Center appointed Steven A. Maier as the sole panelist in this matter on February 25, 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.
The Panel finds that it is proper for the Complaint to relate to all three of the disputed domain names because all of the disputed domain names are registered by the same domain name holder (paragraph 3(c) of the Rules). 4. Factual Background
The Complainant is a limited company incorporated in Denmark and is a manufacturer of construction toys and other products under the brand name and mark LEGO.
The Complainant is the owner of numerous trademark registrations throughout the world for the mark LEGO in International Class 28 and otherwise.
The Respondent registered all three of the disputed domain names on December 8, 2012.
The disputed domain names have been used for the purposes of online stores, unconnected with the Complainant, offering a variety of merchandise. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant submits evidence of its trademark registrations for the mark LEGO, including several hundred such marks that are registered in jurisdictions throughout the world. The registrations date from as early as 1954 and include, for example, Community Trade Mark number 39800 registered on October 5, 1998 for numerous classes of goods and services including games and playthings in International Class 28 and United States trademark number 1018875 registered on August 26, 1975 for toy building blocks and related products in International Class 28.
The Complainant also claims wide public recognition of the LEGO name and brand throughout the world. It states that it has made and sold goods under that mark for many years and that it sells products in more than 130 countries throughout the world. It states that it owns over 1,000 domain names which include the term “lego” and that the LEGO name and mark enjoy a high degree of recognition throughout the world. It also provides evidence that it was the 13th most famous brand in the world according to a survey conducted by Superbrands UK in 2012. It submits in the circumstances that the mark LEGO has the status of a “well-known” mark for the purposes of the TRIPS Agreement 1995 and otherwise and therefore enjoys protection from the use of confusingly similar marks, including protection that extends beyond the scope of the goods and services for which it is specifically registered.
The Complainant submits that (ignoring the top level domains, respectively “.com”, “.net” and “.org”) the disputed domain names comprise its LEGO mark together with the suffix “laptop”. The Complainant submits that that suffix is not relevant and can have no impact on the impression given by the dominant and instantly recognizable part of the name, i.e. LEGO.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names (paragraph 4(a)(ii) of the Policy).
The Complainant submits that it has never licensed or authorised the Respondent to use its LEGO mark and that the Respondent is not an authorised dealer in the Complainant’s products. Nor has the Complainant found any evidence of any similar trademark registered by the Respondent or any other legitimate use of the LEGO name by the Respondent in the course of trade. The mere fact of registration of the disputed domain names does not give rise to any rights or legitimate interests in those names.
The Complainant submits evidence that the Respondent is using each of the disputed domain names for the purposes of an online store offering a variety of products unrelated to the Complainant. The products include jewellery, clothing, watches, cameras and sex toys. The Complainant contends that, given the fame of the Complainant’s mark, it is highly unlikely that the Respondent was unaware of it at the date of registration of the disputed domain names. On the contrary, the likelihood is that the Respondent was aware of the LEGO mark and was motivated to register the disputed domain names precisely because of its fame. In the circumstances, the Respondent is using the disputed domain names in order to “sponge” off the Complainant’s trademark and is tarnishing that trademark in the process. Specifically, the Respondent is using the disputed domain names to create an impression of association with the Complainant and to mislead Internet users into visiting websites which offer sales from which the Respondent derives revenue. This is not a bona fide use of the disputed domain names and does not give rise to any rights or legitimate interests in them.
The Complainant submits that the disputed domain names were registered and are being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainant relies on the same factual submissions as in the case of “rights or legitimate interests”.
The Complainant submits that the Respondent is using the disputed domain names to mislead Internet users into visiting websites which offer products unrelated to the Complainant. Internet users are likely to visit those sites in the mistaken belief that they are operated by the Complainant or that the products sold on those sites are authorised by the Complainant. Even if that confusion is dispelled upon reaching the website the Internet user will nevertheless have been misled into visiting the site as a result of “initial interest confusion”. In the circumstances described, the Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to their websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites. This represents registration and use of the disputed domain names in bad faith.
The Complainant submits evidence that it sent a “cease and desist” letter to the Respondent on January 3, 2013 requesting a transfer of the disputed domain names and offering to pay registration and transfer expenses, but the Respondent did not reply to the letter.
The Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
Even in a case such as this where the Respondent has failed to reply to the Complaint, it is still necessary for the Complainant to prove its case in respect of each of the above elements. A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of numerous registered trademarks for the name LEGO throughout the world. These include Community and United States trademarks for construction toys and related products in Class 28. The Complainant has also provided evidence of the significant worldwide recognition of the LEGO brand dating back to the 1950s. The Panel finds this sufficient to establish that the Complainant also enjoys significant unregistered rights in the name and mark LEGO in numerous territories worldwide and, further, that the mark LEGO has the status of a “well-known” trademark.
The disputed domain names consists of the components “lego” and “laptop” in addition to the respective suffixes “.com”, “.net” and “.org”, which may be disregarded for the purposes of considering confusing similarity under the first element of paragraph 4(a) of the Policy. The term “laptop” is generic and/or descriptive and the Panel accepts the Complainant’s contention that its inclusion does not serve to distinguish the disputed domain names from the term “lego”, which is the distinctive component of the disputed domain names.
Accordingly, the Panel finds that each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel accepts the Complainant’s evidence that it has never licensed or authorised the Respondent to use its LEGO mark and that the Respondent is not an authorised dealer in the Complainant’s products.
The Respondent has failed to reply to the Complaint and has not therefore provided any evidence of rights or legitimate interests in the disputed domain names, whether in accordance with the circumstances mentioned in paragraph 4(c) of the Policy or otherwise. Nor does any other evidence of rights or legitimate interests on the part of the Respondent appear from the material available to the Panel.
On the basis of the evidence submitted by the Complainant, which the Respondent has not contradicted, the Panel finds that the Respondent has used the disputed domain names for the purposes of websites which offer for sale a variety of products unrelated to the Complainant. It is to be inferred that these websites produce revenue for the Respondent. In these circumstances, the Panel is of the view that the Respondent has used the disputed domain names in a manner which falsely suggests an association with the Complainant or its goods, unfairly to profit from the Complainant’s goodwill and in a manner likely to tarnish the Complainant’s trademark. The use of the disputed domain names in this manner does not establish any rights or legitimate interests in those names on the part of the Respondent.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Panel’s findings in connection with “rights or legitimate interests” are also relevant to the consideration of bad faith.
Under paragraph 4(b) of the Policy, it shall be evidence of registration and use in bad faith if the Complainant can show that, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on her website or location. The Panel finds that the Respondent has done so in the case. The Respondent has offered no explanation for the choice of the disputed domain names, nor did the Respondent respond to the Complainant’s “cease and desist” letter. In the circumstances, the Panel infers that the Respondent registered and has used the disputed domain names with the intention of unfairly profiting from the Complainant’s goodwill. This conduct constitutes registration and use of the disputed domain names in bad faith for the purpose of the Policy.
Accordingly, the Panel finds that the disputed domain names were registered and are 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 names , and be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: March 11, 2013
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