The Complainant is LEGO Juris A/S of Billund, Denmark, of Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Aswadi Aziz of Shah Alam, Selangor, Malaysia. 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 June 14, 2013. On June 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 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 June 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2013. On June 20, 2013, the Complainant requested a suspension of proceedings to allow the parties to settle. However, the Respondent did not transfer the disputed domain name and, upon the Complainant’s request, a notice of reinstitution of the proceedings was issued by the Center on July 17, 2013. The new due date for Response was August 6, 2013. The Respondent did not submit any response in these proceedings. Accordingly, the Center notified the Respondent’s default on August 7, 2013.
The Center appointed Michel Vivant as the sole panelist in this matter on August 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 the owner of the trademark LEGO, and other trademarks used in connection with the first one, among others in Malaysia (place where the Respondent is located). The Complainant and its licensees – the LEGO Group – through their predecessors commenced use of the trademark LEGO in the United States of America during 1953. The Complainant owns also many domain names containing the name LEGO.
The disputed domain name was registered on March 21, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that it owns a very famous trademark, well-known in the sense of Paris Convention and TRIPS agreement.
It underlines that the dominant part of the disputed domain name is “lego”, which is identical to the registered trademark LEGO and emphasizes that a domain name which incorporates a well-known trademark is confusingly similar to this trademark.
The Complainant argues that the Respondent has no registered trademarks or trade names corresponding to the disputed domain name and has not received from the Complainant any kind of authorization to use the trademark. Furthermore, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services as far as the Respondent’s site hosts links to online shop of toys.
The Complainant further claims that the Respondent, which “[i]s using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark”, tries to exploit the reputation of the trademark. Lastly, the Respondent proposed to sell the disputed domain name at an unjustified price. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
As it was established in previous UDRP cases, it is indisputable that “LEGO is clearly a well-known mark” (see for instance LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260). A domain name as obviously incorporates the Complainant’s trademark and creates a false association with it. It can be understood as a simple variation on the basis of the trademark, all the more the addition of the words “house of” is the addition of generic terms, judged by the panels without consequences (see for instance Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; or Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727).
Furthermore, it is well established in UDRP cases that a domain name which incorporates a well-known trademark is confusingly similar to this trademark (see LEGO Juris A/S v. WhoisGuard / Susan Bridges, WIPO Case No. D2011-1409).
So, in the view of the Panel, the disputed domain name is typically confusingly similar to the Complainant’s trademarks, according to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent does not appear to have registered trademarks or trade names corresponding to the disputed domain name. As the Complainant put forward, the Respondent has not received from the Complainant any kind of authorization to use the trademark.
Furthermore, the disputed domain name has no real function other than to attract the Internet users to a site which redirects them to an online shop which sells products from different companies, including LEGO. Obviously, that cannot be considered as a bona fide or legitimate use of the disputed domain name and this is further evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
It can be added that the Respondent’s initial willingness to transfer the disputed domain name to the Complainant tends to demonstrate that the Respondent has no legitimate interests in the disputed domain name.
The Panel thus finds that the Respondent has no rights or legitimate interests in the disputed domain name, according to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Respondent does not appear to have had any specific good faith reason to register the disputed domain name which can be understood as a variation of the trademark of the Complainant. In fact, this practice partakes of a general phenomenon of undue registration of domain names built on the basis of the LEGO trademark (the Complainant quotes 19 cases between 2010 and 2012).
In the present case, in the Panel’s view, the sole utility this registration can have is to attract consumers, misled by the proximity of the trademark and the disputed domain name, to the Respondent’s website where LEGO products are sold but also products from direct competitors of LEGO.
Hence, the Respondent may generate revenue directly from the initial interest arising out of the use of LEGO trademark in the disputed domain name.
Moreover, the Panel notes that the Respondent tried to sell the disputed domain name to the Complainant at a price of USD 500, an amount that exceeds the Respondent’s out-of-pocket costs directly related to the disputed domain name and, therefore, it may be regarded as a further indication of bad faith.
Therefore, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, according to the Policy, paragraph 4(a)(iii). 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.
Michel Vivant
Sole Panelist
Date: August 15, 2013
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