Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Whoisprotection.cc, Malaysia / Robi Yadi, Robby Obett, Indonesia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2020. On March 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17 and 30, 2020, the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 30, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on April 3, 2020. On March 30, 2020, the Center transmitted an email in English and Indonesian to the Parties regarding the language of the proceeding. Complainant requested that English be the language of the proceeding on April 3, 2020. Respondent did not comment on the language of the proceeding. The Center verified that the Complaint, together with the amended 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 and 4, the Center formally notified Respondent in English and Indonesian of the Complaint, and the proceedings commenced on April 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2020. Respondent sent two email communications in Indonesian to the Center on April 23, 2020. In the first email, Respondent acknowledged receipt of the Complaint and noted that the Domain Name was accidentally created without knowledge that it belonged to another company and that Respondent would cease using the Domain Name. In the second email on the same day, Respondent indicated that use of the Domain Name had ceased. The Center sent an email communication regarding possible settlement to the Parties on April 23, 2020. Per Complainant’s suspension request of April 27, 2020, the proceeding was suspended on the same day. Complainant noted that Complainant’s attempts to reach Respondent did not result in any response from Respondent. Therefore, the proceeding was reinstituted on May 25, 2020 according to Complainant’s request. The new Response due date was June 2, 2020. The Center notified the Parties of Commencement of Panel Appointment Process on June 3, 2020. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on June 15, 2020. 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, a company incorporated and based in Denmark, is a global toy manufacturing company and the owner of the trademark LEGO and all other trademarks used in connection with the well-known Lego brand of construction toys and other Lego branded products. Complainant’s licensees are authorized to use Complainant’s intellectual property rights, including its trademark rights, in Indonesia and elsewhere. Complainant has subsidiaries and branches throughout the world, and Lego products are sold in over 130 countries, including Indonesia. Complainant has, in the Complaint, put forward a large number of national and international registrations in various classes that consist of the trademark LEGO, including trademarks in Indonesia and Malaysia, which were registered as early as 1991. An example of such a mark in Indonesia is registration number IDM000208750, registered on June 26, 2009. Complainant operates its main website at “www.lego.com”. Complainant is also the registrant of about 5,000 domain names containing the term “lego”. Complainant first attempted to contact Respondent on November 14, 2019, through a cease and desist letter sent by email. Complainant advised Respondent that the unauthorized use of the LEGO trademark within the Domain Name and requested a voluntary transfer of the same, offering compensation for the expenses of registration and transfer fees. Two other follow-up letters were sent. No response was received. Complainant then filed the current Complaint. Respondent registered the Domain Name on October 26, 2019. At the timing of filing of the Complaint, the Domain Name directed Internet users to a commercial website offering clothes for men and women. At the time of the decision, the Domain Name is inactive. 5. Parties’ Contentions A. Complainant Complainant contends that (i) the Domain Name is confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that it has trademark registrations for the LEGO marks and have rights in numerous domain names incorporating “lego”. Complainant contends that Respondent registered and used the Domain Name, which incorporates Complainant’s well-known LEGO mark, to divert Internet users to another website offering clothing. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name incorporating Complainant’s LEGO mark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in setting up the Domain Name and website, when Respondent clearly knew of Complainants’ rights. B. Respondent Except for the two email communications of April 23, 2020, as mentioned in the section 3 above, Respondent did not formally reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Procedural Issue – Language of the Proceeding The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement is Indonesian. Complainant submits that the language of the proceeding should be English. Complainant mainly contends that the Domain Name is formed using the term “lego”, which does not carry specific meaning in the Indonesian language; that the additional term “shop” in the Domain Name is an English word; that the Domain Name resolves to a website that features words and phrases in English; if the documents have to be submitted in Indonesian, Complainant would have to incur substantial delay and disadvantage due to the requirement for translation. In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs. The Panel accepts Complainant’s submissions regarding the language of the proceeding. Complainant may be unduly disadvantaged by having to conduct the proceeding in Indonesian. The Panel notes that in any case, the language of the proceeding and notification of the Complaint communications from the Center to the Parties were transmitted in both Indonesian and English. While Respondent had indicated by email that Respondent would and had ceased using the Domain Name and the Domain Name was accidentally created without knowledge that it belonged to another company, Respondent chose not to formally respond to the Complaint and comment on the language of the proceeding. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (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 was registered and is being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true. […] Panels have typically treated a respondent’s submission of a so-called “informal response” (merely making unsupported conclusory statements and/or failing to specifically address the case merits as they relate to the three UDRP elements, e.g., simply asserting that the case “has no merit” and demanding that it be dismissed) in a similar manner as a respondent default.” Thus, although in this case Respondent has failed to formally respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the LEGO marks, which have been used well before Respondent registered the Domain Name on October 26, 2019. With Complainant’s rights in the LEGO trademarks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the generic Top-Level Domain in which it is registered (in this case, “.online”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. Here, the Domain Name is confusingly similar to Complainant’s LEGO trademark. This mark, which is fanciful and inherently distinctive and has no other generic or dictionary meaning, is fully incorporated in the Domain Name. The voluntary addition of the letter “o” and the addition of the word “shop” in relation to the LEGO mark in the Domain Name, Thus, Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the LEGO marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the LEGO trademarks or to seek registration of any domain name incorporating the trademarks. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent used the Domain Name to direct Internet users to a commercial website offering clothing for men and women. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The Panel finds that Complainant provided ample evidence to show that registration and use of the LEGO marks long predate the registration of the Domain Name by Respondent – by decades. Complainant is also well established and known worldwide, including Indonesia, where Respondent operates. Therefore, Respondent was likely aware of the LEGO marks when it registered the Domain Name, or knew or should have known that the Domain Name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Under the circumstances, Respondent’s registration of the Domain Name incorporating Complainant’s well-known LEGO trademark, the additional letter “o” and the word “shop”, suggest that Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the LEGO mark, in an effort to opportunistically capitalize on the registration and use of the Domain Name. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks. Moreover, Respondent used the Domain Name to direct Internet users to a website displaying links related to online shopping. Respondent’s use and association of the Domain Name with a clothing site could result in causing confusion with Complainant’s business and activities. The Panel finds that by using the Domain Name incorporating Complainant’s trademark in its entirety in connection with a website to offer products or services unrelated to those offered by Complainant, Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s trademark, and to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein. Moreover, such use of the Domain Name disrupted Complainant’s business activities. While Respondent had sent two emails to the Center indicating that Respondent would and had ceased use of the Domain Name, Respondent did not respond to Complainant’s attempts to discuss resolution and settlement regarding the Domain Name. Accordingly, the Panel finds that Respondent has registered and used the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 Domain Name Kimberley Chen Nobles
Sole Panelist
Date: June 29, 2020
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