Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
Respondent is Yori Meirizan of Sleman, Kabupaten, Indonesia.
The disputed domain name <mindstormsnxt2lego.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Domain Name”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2010. On February 17, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Domain Name. On February 18, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 February 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 11, 2010.
The Center appointed Clive L. Elliott as the sole panelist in this matter on March 22, 2010. 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.
Complainant is a corporation based in Denmark. It is the owner of the trademarks LEGO and MINDSTORMS. It is also the owner of more than 1,000 domain names containing the term LEGO.
The Domain Name was first created (according to the WhoIs) on October 30, 2009 and updated on February 18, 2010.
Complainant asserts that it is the owner of the trademarks LEGO and MINDSTORMS and all other trademarks used in connection with the LEGO and MINDSTORMS brands of construction toys and other LEGO branded products. Complainant states that its licensees are authorized to exploit Complainant's intellectual property rights including its trademark rights, in Indonesia and elsewhere.
Complainant advises that it commenced use of the LEGO mark in the United States, through its predecessor, during 1953 to identify construction toys made and sold by it. Complainant contends that over the years the business of making and selling LEGO has grown substantially and states by way of example that in 2008 the revenue for the LEGO Group was more than USD 1.8 billion.
Complainant advises that it has subsidiaries and branches throughout the world and that LEGO products are sold in more than 130 countries. Complainant also advises that the LEGO MINDSTORMS is a line of programmable construction toys which was released in 1998, with a newer version released in August 2009 called the LEGO MINDSTORMS NXT 2.0.
Complainant contends that the trademark LEGO is well-known due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. It supports its contention that the trademark is recognized as being famous by annexing the Superbrands United Kingdom report of the official top 500 superbrands for 2009/2010 wherein LEGO is placed as number 8 of the most famous trademarks and brands in the world.
Complainant claims that the LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets and that it maintains an extensive web site under the domain name <lego.com>.
Complainant states that the dominant part of the Domain Name comprises the words “lego” and “mindstorms”, which are identical to its registered trademarks. Complainant also states that having a combination of the two trademarks is confusingly similar and contends that the addition of the word “nzt2” following the trademark MINDSTORM strengthens the impression that the Domain Name is associated with Complainant given that Complainant has a product line named LEGO MINDFSTORMS NXT 2.0.
Complainant submits that people are likely to mistake the Domain Name for a name related to Complainant and that the likelihood of confusion includes an obvious association with its trademarks. It further submits that persons seeing the Domain Name, even without being aware of the content, are likely to think that the Domain Name is in some way connected to Complainant. Complainant believes that there is a considerable risk that the trade and public will perceive the Domain Name either as a domain name owned by Complainant or that there is some kind of commercial relationship with Complainant. Complainant also asserts that there is a risk that its trademarks will be tarnished by being connected to the Domain Name and it asserts that Respondent is exploiting the goodwill and image of Complainant's trademarks.
Complainant claims that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services and believes that Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a web site with links to shopping sites.
Complainant asserts that it sent a cease and desist letter to Respondent on December 21, 2009 and when no response was received two further reminder letters were sent to Respondent on January 13, 2010 and January 20, 2010. Complainant also asserts that no reply has been received from Respondent.
Respondent did not reply to Complainant's contentions.
Complainant has clearly established that it is the owner of the trademarks LEGO and MINDSTORMS through registration and certainly in the case of LEGO extensive use. LEGO is one of the world's leading brands in relation to construction toys. Complainant has also extended the use of the trademarks to, inter alia, a line of programmable construction toys.
On this basis the Panel finds that Complainant clearly has trademark rights in the combination of LEGO and MINDSTORMS (referred to as the “Trademark”) through its extensive marketing and sales of construction toys and more particularly in relation to a line of programmable construction toys used in conjunction with its product line LEGO MINDSTORMS NXT 2.0.
The Domain Name is confusingly similar to the Trademark as it consists of the combined term “mindstorms” and “lego” in conjunction with the word “nxt2”. Complainant argues that the linking of the terms “mindstorms” and “lego” with “nxt2” would be recognizable and associated with Complainant. The Panel accepts this argument. The inclusion of the word “nxt2” does not defeat the identity or confusing similarity created by use of the Trademark in its entirety and the addition of the word “nxt2” to the Trademark fails to distinguish the Domain Name from the Trademark.
For these reasons it is found that the Domain Name is confusingly similar to the Trademark, that Complainant has rights in the Trademark and that the requirements of paragraph 4(a)(i) of the Policy are thus met.
In the absence of a Response it is difficult to see what rights or interests Respondent might assert in support of its registration and use of the Domain Name in this case.
Complainant asserts that Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a web site with links to shopping sites. In the absence of any explanation or denial from Respondent the Panel infers that this is primarily a pay-per-click scheme and that the primary purpose of the Domain Name is to generate pay-per-click revenue in accordance with this now well-established practice.
On this basis the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant thus succeeds in meeting the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires that Respondent has registered and has used the Domain Name in bad faith.
The Panel is obliged to look at the evidence and submissions before it. For the reasons set out above there is no basis to conclude that Respondent's conduct and motivations were proper. In the event the Panel concludes that the Domain Name was registered and is being used in bad faith. On this basis, Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <mindstormsnxt2lego.com> be transferred to Complainant.
Clive L. Elliott
Dated: April 8, 2010