The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Andika Jaya Kusuma, of Sumatera Utara, Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (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 name. On January 17, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name 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 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2013.
The Center appointed David Stone as the sole panelist in this matter on February 12, 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 Complainant LEGO Juris A/S is a leading global manufacturer of toys under the trade mark LEGO. LEGO products are sold in more than 130 countries, including in Indonesia, where the Respondent is located. The Complainant owns trade mark registrations around the world for the mark LEGO in relation to various goods and services. The LEGO trade mark was registered in Indonesia in 1979.
The Complainant also owns more than 1000 domain names containing the term LEGO.
The disputed domain name was registered on November 28, 2012. The Complainant asserts that the disputed domain name directs to a website displaying the Complainant’s logo and offering the Complainant’s products for sale. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its registered trade mark LEGO. The disputed domain name incorporates the Complainant’s mark in its entirety with the addition of the descriptive word “store” in combination with a hyphen. The Complainant submits that the addition of the word “store” will not have any impact on the overall impression of the dominant part of the disputed domain name.
The Complainant contends that there is no evidence to suggest that the Respondent has been using LEGO in any way that would give it legitimate rights in the name, and consequently that the Respondent may not claim any rights established by common usage. The Complainant further contends that the Respondent is not in any way affiliated with the Complainant or authorised or licensed to use the LEGO trade mark.
The Complainant submits that LEGO is a well-known trade mark worldwide, and that it is highly unlikely that the Respondent would not have known of the Complainant’s rights in the trade mark at the time of the registration: indeed, the Respondent uses the Complainant’s logo on the website located at the disputed domain name.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith.
The Respondent is using the disputed domain name to generate traffic and income through an online shop displaying the Complainant’s products. The use of the LEGO trademark misleads Internet users and falsely creates the impression of association with the Complainant. Further evidence of the Respondent’s bad faith is represented by the failure to respond to the cease and desist letter sent by the Complainant on January 3, 2013.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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. Identical or Confusingly Similar
The Complainant provided evidence that it has prior registered rights in the mark LEGO in at least Asia and Indonesia. From the evidence supplied, the Panel finds that LEGO is a well-known mark, at least in relation to toys. Several other UDRP panels have made similar findings: see LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator,WIPO Case No. D2010-1260; LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680.
The disputed domain name incorporates the Complainant’s trade mark in its entirety. The generic term “store” is used within the disputed domain name. Previous UDRP panels have held that adding common terms to a registered trade mark and registering the result as a domain name does not mitigate the confusing similarity between the domain and the mark: see Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No.D2008-0923; Deutsche Telekom AG v. Gems N Pearls International Holding, WIPO Case No. D2005-0820.
Accordingly the Panel finds that the Complainant has established the first element under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Guidance regarding establishing rights or legitimate interests is provided in paragraph 4(c) of the Policy.
Three circumstances are identified that would establish rights or legitimate interests:
(i) bona fide prior use;
(ii) common association with the domain name; and
(iii) legitimate noncommercial use.
The Panel notes that the Respondent is selling the Complainant’s products at the website at the disputed domain name. Paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition expresses the consensus view that to establish a bona fide offering of goods and services, a reseller or distributor of trade marked goods should comply with certain requirements, including accurate disclosure of its relationship with the trade mark holder: Oki Data Americas, Inc. v ASD, Inc.,WIPO Case No. 2001-0903. In the Panel’s view, there is no such accurate disclosure in this case and thus the Panel finds that the Respondent is not making a bona fide offering of goods or services.
The Complainant has made a prima facie case that none of the circumstances under paragraph 4(c) applies. The Respondent did not exercise its right to respond substantively in these proceedings. Thus, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other argument supporting rights or legitimate interests.
Consequently, the Panel finds that the Complainant has established the second element under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides guidance regarding establishing bad faith.
Four non-exhaustive circumstances are identified where the respondent’s intention in registering a domain name may be evidence of bad faith. These intentions may be summarized as follows:
(i) to sell the domain name to the rights-holder at a profit;
(ii) to prevent the rights holder from registering a domain name;
(iii) to disrupt the business of a competitor; and
(iv) to divert Internet traffic for commercial gain.
Given that the LEGO trade mark is well-known, the Panel finds that in all likelihood the Respondent would have been aware of the Complainant’s trade mark at the time the disputed domain name was registered. Previous UDRP panels have made a finding of bad faith where the complainant’s trade mark was shown to be well known or in wide use at the time of registration of the disputed domain name (SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
The disputed domain name displays the Complainant’s trade mark and contains links to LEGO branded products available for sale. The Respondent is not an authorised reseller or distributor of the Complainant’s products. Applying the comments of the panelist in Lego Juris A/S v. Probuilders, WIPO Case No. D2011-0226, the sale of the Complainant’s products by the Respondent under the banner of the Complainant’s logo is clearly designed to imply a connection between the Respondent and the Complainant.
The Panel finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its web site (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant’s mark.
The Respondent’s failure to respond to the Complainant’s cease and desist letter is an additional indication of bad faith (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; America Online Inc. v Antonia R. Diaz.,WIPO Case No. D2000-1460).
Accordingly the Panel finds that the Complainant has established the third element under paragraph 4(a)(iii) 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.
David Stone
Sole Panelist
Date: February 22, 2013
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