Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is i Made Irawan of Denpasar, Bali, 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 June 19, 2013. On June 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 21, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 19, 2013.
The Center appointed M. Scott Donahey as the sole panelist in this matter on August 1, 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
Complainant’s registration of the famous trademark LEGO and related marks dates back to a 1957 registration in the United Kingdom of Great Britain and Northern Ireland. Complainant’s registration of the LEGO mark in Indonesia, where Respondent resides, dates back to 1979. Complaint, Annex 6. Complainant has licensees in Indonesia who have the exclusive right to use the trademark in that country. Respondent is not a licensee of Complainant.
Complainant and its licensees began using the LEGO mark in the United States in 1953. By the year 2009, the revenues derived from products using the LEGO mark reached USD 2.9 billion annually. The Center for Brand Analysis in its list of the 500 Super Brands for the year 2009/2010 listed LEGO as the number 8 Super Brand, just behind COCA-COLA and ahead of such Super Brands as APPLE, ENCYCLOPAEDIA BRITTANICA, and BMW. Complaint, Annex 9.
Respondent registered the domain name at issue on March 26, 2013. Respondent, who is not an affiliate or authorized dealer or distributor of Complainant, uses the disputed domain name to resolve to a web site at which Complainant’s famous LEGO logotype is prominently displayed and at which LEGO products are offered for sale. Complaint, Annex 11.
On April 18, 2013, Complainant sent Respondent a cease and desist letter, demanding that Respondent cease using the disputed domain name to resolve to a web site which uses Complainant’s famous MARK and logotype and which attempts to profit from the good will established by Complainant. Complaint, Annex 12. Follow up letters were sent on May 15, 2013, and May 30, 2013. Respondent never replied to any of the letters. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant’s famous mark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith by profiting from the good will that Complainant has established in its mark over many years of promotion and use, such that now it is one of the most well-known marks in the world. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s famous trademark LEGO proceeded by the English word “store.” It has long been held that the addition of a common word to a trademark in a domain name is confusingly similar to the trademark. SGS Société Générale de Surveillance SA v. Inspectorate Korea,WIPO Case No. D2000-0025 (addition of the English word “group” to trademark SGS in the domain name is confusingly similar to the SGS mark). In fact, the addition of the same English word “store” along with the letters “us” to the mark OLYMPIC was found to be confusingly similar to the OLYMPIC trademark. United States Olympic Committee v. MIC,WIPO Case No. D2000-0189. B. Rights or Legitimate Interests
The consensus view of UDRP Panels concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), Section 2.1.
In the present case the Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights.
In addition, Complainant has alleged and Respondent has failed to deny that Respondent is using the disputed domain name to resolve to a web site at which Complainant’s famous trademark and logotype are featured prominently and Complainant’s products are being offered for sale without any authorization from Complainant. The Panel finds that this does not confer any rights of legitimate interests to Respondent. C. Registered and Used in Bad Faith
In the present case, since Respondent registered the domain name at issue long after Complainant had established its trademark rights and long after the trademark had become world famous.
Moreover, Respondent has registered a domain name that is confusingly similar to Complainant’s famous trademark and is using the domain name to resolve to a web site which prominently features Complainant’s famous trademark and logotype. Respondent, who has never been authorized by Complainant to sell Complainant’s goods or use Complainant’s trademarks, is offering Complainant’s goods for sale on this web site. In addition, Respondent has failed to respond to repeated letters demanding that Respondent cease and desist from such conduct and has failed to respond to the Complaint in this matter. Under all of the facts and circumstances, Respondent may be said to be acting 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.
M. Scott Donahey
Sole Panelist
Date: August 15, 2013
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