The Complainant is LEGO Juris A/S, Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Saputro Wijayanto, Jawa Tengah, Indonesia. 2. The Domain Names and Registrar
The disputed domain names and are registered with R, Inc (“the Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2013. On May 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 24, 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 May 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2013.
The Center appointed Ana María Pacón as the sole panelist in this matter on July 17, 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 language of the proceeding is English, as per paragraph 11(a) of the Rules. 4. Factual Background
The Complainant is a Danish company founded in 1953. It is a market leader in construction toys with operation in more than 130 countries, including Indonesia. The LEGO Group has in the last years expanded its activities to computer hardware and software, books, videos and computer controlled robotic construction sets.
The Complainant has several trademark registrations for the trademark LEGO. As an example, reference is made to European Union Registration CTM No. 39800, to the United States of America “US” registrations No. 2.245.652 and 1.018.875, and to the Indonesian registration No. IDM000208750. These trademarks have been also incorporated in domain name registrations in the “.com”, “.info”, “.org” and “.net” TLDs. The Complainant is the owner of more than 1,000 domain names.
According to a printout of the WhoIs database the disputed domain name was registered on June 13, 2012 and the disputed domain name was registered on June 14, 2012. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
- The trademark LEGO is among the best–known trademarks of the world. In fact, in a list of the official 500 top Super brands for 2009/2010 LEGO was number 8. Also previous UDRP cases have stated the notoriety of its trademark.
- The disputed domain names comprise the word “lego”, which is identical to the registered trademark LEGO. The addition of the terms “games and toys” and “star wars death star” are not relevant. Considering that said suffixes are closely associated with the Complainant’s field of business, the addition of said suffixes strengthen the impression that the disputed domain names are owned or in some way connected to the Complainant.
- The mere adjunction of the TLDs “.com” and “.org” are insufficient to avoid a finding of confusing similarity.
- By using the trademark as a dominant part of the disputed domain names, the Respondent exploits the goodwill and the image of the Complainant’s trademark, which may result in dilution and other damage for the Complainant’s trademark.
- The Respondent doesn’t have any registered trademarks or trade names corresponding to the disputed domain names. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO in any other way. Consequently, the Respondent may not claim any rights established by common usage.
- No license or authorization of any other kind has been given by the Complainant to the Respondent to use its trademark.
- The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of a domain name.
- It is unlikely that the Respondent would not have known of the Complainant’s rights in the trademark LEGO at the time of the registration of the disputed domain names. This is a proof that the Respondent’s interests are not legitimate.
- The Respondent is not actually using the disputed domain names to offer goods or services. Instead of that the domain names are connected to a parked pay-per-click web sites. Consequently, the Respondent is using the domain names to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites. It is irrelevant for the finding of bad faith whether or not the Respondent has influenced what links should be included on the site. It is also without relevance whether or not the Respondent is actually getting revenue from the page itself.
- The Complainant tried to contact the Respondent on August 12, 2012, through a cease and desist letter. The Complainant requested a voluntary transfer of the disputed domain names and offered compensation for the expenses of registration and transfer fees. The Respondent first agreed to transfer the domain names. However, despite several reminders sent, the transfers never took place. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
A complainant must establish two elements under paragraph 4(a)(i) of the Policy: i) the Complainant has rights in a trademark or a service mark, and ii) the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights.
The Complainant has provided sufficient evidence of its rights in the trademark LEGO in several countries worldwide, including Indonesia, where the Respondent is located.
The relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common terms typically being regarded as insufficient to present threshold Internet user confusion. This will particularly be the case where the trademark is inherently distinctive and widely-known. (Lilly ICOS LLC v. John Hopking/Neo net Ltd.,WIPO Case No. D2005-0694).
In the present case, the disputed domain names and contain the trademark LEGO in its entirety. UDRP cases agree that incorporating a trademark into a domain name may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark (Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleR, WIPO Case No. D2010-1059; F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358).
The addition of the terms “games and toys” and “star wars death star” are common terms in English and are related to the area of business of Complainant’s trademark. In addition the terms “Star Wars” correspond with a product line offered by the Complainant and Internet users would likely be confused into thinking that Respondent’s websites are owned or associated with the Complainant.
The addition of the generic top level domain name “.com” and “.org” may be disregarded for the purpose of this comparison. It is well established in previous UDRP cases that the added of top-level domains – being a required element of every domain name – is irrelevant when assessing whether or not a mark is identical or confusingly similar.
In the light of the above, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark LEGO. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name.
The following are examples of circumstances where Respondent may have rights or legitimate interests in a disputed domain name (paragraph 4(c) of the Policy):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is the Complainant’s burden to prove that the Respondent lacks rights or legitimate interests (Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270). Because it is difficult to produce evidence to support a negative statement, it has been accepted that the Complainant makes out a prima facie showing on this element and the burden of production shifts to the Respondent, although the burden of proof always remains on the Complainant (Do The Hustle, LLC v.Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). See also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.).
Here, the Complainant has made a prima facie showing that Respondent lacks rights to or legitimate interests in the disputed domain names. In particular, the Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain names or to use the trademark LEGO.
The Complainant has prior rights in the trademark LEGO which precede the Respondent’s registration of the disputed domain names. There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that the Respondent is using the disputed domain names with a bona fide offering of goods and services. The Respondent is using its disputed domain names to attract Internet users to websites offering Complainant’s products (Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404, see also the WIPO Overview 2.0, paragraph 2.6.).
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i) to (iii) of the Policy in respect of the disputed domain name. C. Registered and Used in Bad Faith
Even if the Respondent has not responded to the Complaint, as is the case here, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered and used the disputed domain name in bad faith. The language of paragraph 4(a)(iii) of the Policy requires that both bad faith registration and bad faith use be established.
Pursuant to paragraph 4(b) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
(i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location.
As to registration in bad faith, in light of Complainant’s numerous trademark registrations and the fact that LEGO is a well-known trademark in the field of toys, in the Panel’s opinion, it cannot reasonably be argued that the Respondent could have been unaware of the trademark rights vested therein when registering the disputed domain names (Inter-IKEA Systems B.V. v. McLaughlin Mobility, WIPO Case No. D2000-0499). In addition, the Respondent never denied knowledge of the Complainant's trademark.
As to use in bad faith, at the date of this decision, the disputed domain names are being used to redirect to other websites offering Complainant’s goods and competitive products.
Further, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites to which the disputed domain names are resolved. Noting also that no clarification as to Respondent’s relationship to Complainant is made on the homepage of the Respondent’s websites.
In addition, the Panel is of the view that the Respondent’s refusal to voluntarily transfer the disputed domain names may be relevant in a finding of bad faith (Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598).
Although not decisive, the Panel also puts weight on the fact that the Respondent has not honored the Panel with a response and thus provided no evidence of any actual or contemplated good faith use of the disputed domain name.
Thus the Panel concludes, under the specific circumstances of this case, that the Respondent has registered and is using the disputed domain names 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.
Ana María Pacón
Sole Panelist
Date: July 31, 2013
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