Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Badi Sakala, of Medan, Sumatera Utara, Indonesia. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with CV. Jogjacamp (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 17, 2015. On March 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 18, 2015, 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 March 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 13, 2015.
The Center appointed John C McElwaine as the sole panelist in this matter on April 28, 2015. 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.
As an initial procedural matter, the Panel notes that the applicable registration agreement for the Domain Name was not attached to the Complaint and Complainant included a section in the Complaint asserting that the language of the proceedings ought to be in English. By email to the Center dated March 18, 2015, the Registrar confirmed that the language of the registration agreement for the Domain Name is English. In addition, the website at the Domain Name appears to be entirely in English. Respondent did not raise any objection to the Complaint being filed in English. Thus, pursuant to paragraph 11(a) of the Rules, the language of this proceeding shall be English. 4. Factual Background
Complainant, LEGO Juris A/S is based in Billund, Denmark and is the owner of the famous LEGO brands of construction toys and other LEGO branded products.
Complainant is also the owner of numerous trademark registrations for the LEGO word mark and logotype (the "LEGO Mark") in Indonesia (Reg. No. IDM000208750 and IDM000297111) where Respondent appears to be located and in many other countries throughout the world (see Annex 6.1. to the Complaint).
Complainant is the owner of close to 4,300 domain names containing the term LEGO (see Annex 8 to the Complaint).
On January 18, 2015, Respondent, Badi Sakala, registered the Domain Name through the Registrar. 5. Parties' Contentions A. Complainant
Complainant initially asserts that the LEGO mark is among one of the best-known trademarks in the world, due in part to decades of extensive advertising. Supporting this assertion, Complainant points out that: (i) the LEGO mark won the category "Child Products - Toys and Education" in the list of the official top 500 Superbrands for 2015, as ranked by Superbrands UK; (ii) the Reputation Institute nominated the LEGO Group as number 9 on their list of "the World's Most Reputable Companies" for 2014; and (iii) TIME magazine recently proclaimed LEGO to be the "Most Influential Toy of All Time".
After discovering the Domain Name, Complainant tried to contact Respondent on January 16, 2015 through a cease and desist letter sent by email and advised Respondent that the unauthorized use of the LEGO mark within the Domain Name violated Complainant's rights in said trademark. Complainant asked Respondent to remove the misleading content and requested a voluntary transfer of the Domain Name and offered compensation for the expenses of registration and transfer fees. No response was received by Respondent. This UDRP proceeding eventually followed.
Addressing the first element of the Policy, Complainant asserts that the Domain Name is confusingly similar to Complainant's LEGO mark, which has been found to be famous in numerous previous UDRP decisions. Complainant further alleges that the use of the generic term "buy" with the LEGO mark in the Domain Name does not detract from the overall impression, and in fact, the term is contributing to an association to Complainant's LEGO brand products. Likewise, the generic Top-Level Domain ("gTLD") ".com" does nothing to distinguish the Domain Name from the LEGO mark. As a result, Complainant asserts that the Domain Name is confusingly similar to its registered, famous LEGO mark.
With respect to the second element of the Policy, Complainant asserts that it has not found that Respondent has any registered trademarks or trade names corresponding to the Domain Name. Neither has Complainant found anything that would suggest that Respondent has been using the Domain Name in any other way that would provide any legitimate rights. Complainant further claims that no license or authorization has been given by Complainant to Respondent to use the LEGO Mark.
Complainant asserts that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead, Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a website offering LEGO products.
Moreover, Complainant claims that Respondent appears to be the same registrant as, or is somehow related to, the respondent in LEGO Juris A/S v. I Made Irawan, - DRI-110993,WIPO Case No. D2014-1538. It is alleged that respondent in this case had registered the domain name, , that the website connected to the domain name in this proceeding is nearly identical to the one previously connected to , and that respondent is using the same email address as the one connected to said previous domain name. The panel in that case ordered a transfer of the domain name.
With respect to the third element of the Policy, Complainant claims that given the fame of the LEGO mark and the nature of the website connected to the Domain Name which displays Complainant's famous logo and LEGO products, it is clear that Respondent knew of Complainant's legal rights in the LEGO mark at the time of the registration of the Domain Name. Complainant further points out that Complainant's logo is prominently displayed on the website, contributing to creating a confusing similarity with Complainant. Consequently, Complainant concludes that Respondent is using the Domain Name to intentionally attempt to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with Complainant's LEGO mark as to the source, sponsorship, affiliation or endorsement of its website.
In light of the foregoing, Complainant contends that Respondent should be considered to have registered and to be using the Domain Name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with actual evidence demonstrating:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Ltd. v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(e) of the Rules ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel finds that Complainant owns trademark rights in the LEGO mark, which predate the registration of the Domain Name, including in Indonesia where Respondent claims to reside.
Complainant has established that LEGO valid and existing trademark rights in the LEGO mark. The mark has been in use for decades and is well-known. LEGO is widely registered on an international basis. LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715 ("The Panel finds, as numerous panels have found before, that the Complainant has established that LEGO is a well-known trademark and that the trademark is distinctive and famous.")
The Domain Name contains Complainant's well-known trademark LEGO in its entirety, as a dominant element. It is well-established that the addition of a descriptive or generic word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the mark is used, does not avoid confusing similarity. eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307. Although, Complainant's core business involves the manufacture and distribution of toy construction blocks, Complainant does operate a retail site, and its products are, of course, bought. Thus, the public is likely to believe that "www." is related to a website from which Complainant's LEGO brand products can be purchased. The Panel finds that the addition of the descriptive word "buy" does not serve to sufficiently distinguish or differentiate the Domain Name from Complainant's well-known LEGO mark.
Also, the addition of the (gTLD) ".com" to the Domain Name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD ".com" is without legal significance since use of a gTLD is technically required to operate the Domain Name and it does not serve to identify the source of the goods or services provided by the registrant of the Domain Name.
The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to the LEGO mark in which Complainant has valid trademark rights. B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. However, because the nature of the registrant's rights or interests, if any, in the Domain Name lies most directly within the registrant's own knowledge, the consensus view is that a complainant need only make a prima facie case on this element. See Education Testing Service v. TOEFL,WIPO Case No. D2000-0044; Grove Broadcasting Co. Ltd v. Telesystems Communications Limited,WIPO Case No. D2000-0703. The burden of production shifts then to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141 (discussing and citing the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1); see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252.
In this case Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interest in the Domain Name. In particular, Respondent does not have any registered trademarks or trade names corresponding to the Domain Name. Complainant has not provided Respondent a license or authorization to use the LEGO Mark. Neither has Complainant found anything that would suggest that Respondent has been using the Domain Name in any other way that would provide any legitimate rights.
However, under paragraph 4(c)(i) of the Policy, a panel may find that a respondent has a right or legitimate interest in a disputed domain name if the circumstances suggest that before any notice to it of the dispute, the respondent has used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. Although Respondent did not file a response, Complainant establishes that Respondent has been using the Domain Name in connection with a website that resells Complainant's LEGO brand products. If this use amounted to a bona fide offering of services pre-dating notice to Respondent of the dispute, then Complainant will fail under the second element of the Policy.
To address the issue of bona fide use, the Panel finds that the requirements set forth in Oki Data America, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 ("Oki Data") to be the appropriate analysis for this case. Oki Data instructs that to be considered bona fide use, the offering must meet several requirements, including the following:
- Respondent must actually be offering the goods or services at issue;
- Respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- Respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant's relationship with the trademark owner; i.e. it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent; and
- Respondent does not corner the market in all domain names or deprive the trademark owner of reflecting its own mark in a domain name.
In this case, there is no evidence that Respondent is offering products of other third-parties from the website located at the Domain Name. Likewise, there is no allegation that Respondent has cornered the mark on all LEGO-related domain names.
However, Respondent has not taken steps to prevent confusion by making clear in its use of the Domain Name that it is not the trademark owner. In fact, the Respondent has created a website that is likely to cause confusion. In particular, the website displayed at the Domain Name prominently displays a large version of the LEGO logo below the words "WELCOME LEGO STORE". There is no disclaimer on Respondent's website. In fact, other than the prominent use of the LEGO mark and the term "LEGO STORE", there is no indicator of source of Respondent's website on the home page. There is a reference to "CubeCart" but that is intended to delineate this company as the provider of ecommerce shopping cart functionality for Respondent's website.
As to the other webpages in Respondent's website, Complainant further points out that the "About Us" tab claims that "KRISFANTO SINGA are distributor or [sic] LEGO products" and that the website operator "takes pride in taking stance with the original slogan of the LEGO group". The Panel does not believe that these statements falsely suggest that Respondent is the trademark owner or that the website is an official site. However, this statement does not assist Respondent in accurately disclosing its relationship to Complainant, which in reality is that merely of an unrelated reseller of Complainant's products. See e.g., Swarovski Aktiengesellschaft v. Domains By Proxy, LLC, DomainsByP / Seek Knight,WIPO Case No. D2012-0177 (Finding no bona fide offering when webpages both featured prominently the trademark SWAROVSKI and included a large statement "Swarovski Authorised Partner" at the top of the page).
It bears mentioning, that the Panel believes that if Respondent had clearly disclosed its relationship with Complainant by indicating that it is was a reseller or that it was not sponsored or endorsed by the Complainant, a panel could have considered that Respondent was making a bona fide offering of goods. See LEGO Juris A/S v. I Made Irawan, - DRI-110993,WIPO Case No. D2014-1538. This was not accomplished by the current content on Respondent's website.
Accordingly, Complainant has made a prima facie showing of Respondent's lack of any right or legitimate interest and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent's default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under Paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Paragraph 4(b)(iv) of the Policy specifies that bad faith exists where Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107.
Complainant has used the LEGO mark for decades and has registered the mark in multiple jurisdictions including Indonesia, where Respondent resides. Prior UDRP decisions have held that the LEGO mark is well-known. See LEGO Juris A/S v. Reginald Hastings Jr.,WIPO Case No. D2009-0680 ("The LEGO mark is well-known worldwide"); LEGO Juris A/S v. M. Moench,WIPO Case No. DNL2009-0052 ("Complainant has established that the LEGO trademark has acquired a high reputation and should be considered as well-recognized and world famous"); LEGO Juris A/S v. Level 5 Corp.,WIPO Case No. D2008-1692 ("The Panel finds that the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive"); and LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715 ("The Complainant has asserted that LEGO is a famous trademark worldwide"). There is substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942 ("the Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements"), citing, Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. "null", aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435. Based on Complainant's submissions, which were not rebutted by Respondent, it is clear that Respondent knew of Complainant's famous LEGO mark at the time of registration of the Domain Name, and therefore Respondent registered the Domain name in bad faith.
Further, the Domain Name is currently being used to operate an online retail store offering LEGO brand products for sale. Complainant renders the same type of online retail store services. Without the authorization of Complainant, the LEGO mark and the words "WELCOME LEGO STORE" are prominently displayed on the website located at the Domain Name. By using these elements for directly competing services and to sell Complainant's products, Respondent is diverting for commercial gain Internet users to its website, and is doing so in a manner likely to cause consumers to believe that the Domain Name is somehow associated with, affiliated with, and/or endorsed by Complainant.
For this reason, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name 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 Domain Name be transferred to the Complainant.
John C McElwaine
Sole Panelist
Date: May 14, 2015
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