WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. AbdiPraja
Case No. D2010-2178
1. The Parties
The Complainant is LEGO Juris A/S, of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is AbdiPraja, of Jabar, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <legomindstormsnxt2toy.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2010. On December 15, 2010, the Center transmitted by email to GoDaddy.com Inc., a request for registrar verification in connection with the disputed domain name. On December 15, 2011and on December 17, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response indicating the registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Complainant filed an amendment to the Complaint on January 7, 2011.
The Center verified that the Complaint together with the amendment to 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 January 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2011. Further to an informal email from Respondent wishing to transfer the domain name on January 15, 2011, on January 24, 2011, the Complainant filed a request to terminate the proceedings. On January 31, 2011, the Complainant clarified that it had intended to request suspension of the proceedings. On February 2, 2011, the Center issued a notification of suspension of the proceeding until February 28, 2011. On March 2, 2011, the Center issued a notification of recommencement of the proceeding. The Center recalculated the time periods based on the reinstitution date and advised the Respondent that the new due date for the Response was March 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2011.
The Center appointed Adam Taylor as the sole panelist in this matter on March 17, 2011. 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.
The Complainant requested a further suspension of the proceeding on March 29, 2011 to enable implementation of a settlement. On March 30, 2011 the Panel issued Procedural Order No. 1 suspending the proceeding until April 6, 2011. On April 7, 2011, the Complainant requested a further extension. On April 7, 2011 the Panel issued Procedural Order No. 2 suspending the proceeding until April 12, 2011 and stating that in the absence of a request for dismissal of the proceeding being notified by the Complainant to the Center by that date, the proceeding would resume and the Panel would proceed to render its decision. No request was dismissal was notified by the Complainant to the Center by April 12, 2011 and so the Panel has proceeded to issue this decision.
4. Factual Background
The Complainant’s predecessors commenced use of the LEGO mark in 1953 in the United States of America in connection with the manufacture and sale of construction toys. The business has grown substantially such that the revenue of the Complainant’s group exceeded USD 2.8 billion in 2009. The Complainant’s products are sold in more than 130 countries.
The Complainant’s product range includes programmable construction toys known as “Lego Mindstorms”, first distributed in 1998. In August 2009, the Complainant released a newer version called “Lego Mindstorms NXT 2.0”.
The Complainant owns many registered trade marks for the term LEGO including United States Trade Mark No. 1018875 filed September 17, 1974, in international class 28.
The Complainant also owns Community Trade Mark No. 000558338 for MINDSTORMS filed June 18, 1997, in classes 9, 16, 28 and 41.
The disputed domain name was registered on October 8, 2010.
The Respondent used the disputed domain name for a website which was headed “Lego Mindstorms Nxt 2.0” and which was devoted to promotion of the Complainant’s Lego Mindstorms NXT 2.0 product. The website included images of this product as well as links to websites which offered it for sale.
5. Parties’ Contentions
Identical or Confusingly Similar
The trade mark LEGO is amongst the best-known trade marks in the world, due in part to decades of extensive advertising, which prominently depicts the mark on all products, packaging, displays, advertising, and promotional materials. The LEGO trade mark has been recognized as being famous.
The Complainant’s group has expanded its use of the LEGO trade mark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.
The dominant part of the disputed domain name comprises the words “Lego” and “Mindstorms”, which are identical to registered trade marks of the Complainant.
A combination of two trade marks can be regarded as confusingly similar. The addition of the word “nxt2toy” strengthens the impression that the disputed domain name is associated with the Complainant as the Complainant has a product line called “Lego Mindstorms NXT 2.0”.
The dominant part of the disputed domain name comprises the word “lego”.
The disputed domain name is confusingly similar to the Complainant’s trade marks LEGO and MINDSTORMS.
The fame of the LEGO trade mark has been confirmed in numerous previous UDRP decisions.
Anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trade marks of the Complainant.
Rights or Legitimate Interests
The Complainant has not found that the Respondent owns any registered trade marks or trade names corresponding to the disputed domain name. Nor has the Complainant discovered anything that would suggest that the Respondent has been using the names “lego” or “mindstorms” in any other way that would give it any legitimate interests or rights in the names. Consequently, the Respondent is not entitled to claim any rights established by common usage.
The Complainant has not authorized the Respondent to use its trade marks LEGO or MINDSTORMS.
It is highly unlikely that the Respondent was unaware of the Complainant’s trade marks at the time of the registration. Rather, it is obvious that it is the fame of the trade mark that has motivated the Respondent to register the disputed domain name. This is further supported by the fact that the Respondent has chosen to combine two of the Complainant’s trade marks in the disputed domain name.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent is using the Complainant’s trade mark to mislead Internet users and attract them to its commercial website.
Registered and Used in Bad Faith
The Complainant first tried to contact the Respondent on November 3, 2010, by means of a cease and desist letter and thereafter by subsequent reminders but there has been no response to these letters. It has been mentioned in previous UDRP cases that the failure of a respondent to respond to a cease and desist letter is relevant to bad faith.
The disputed domain name is connected to a website displaying information about the Complainant’s “Lego Mindstorms NXT 2.0” and it also links to “www.amazon.com”. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
The Respondent did not reply to the Complainant’s contentions. However, on January 15, 2011 the Center received an informal email in which the Respondent stated that he was “willing to give [his] domain [to the Complainant] with the condition that [he] get back the costs to purchase the domain”.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark LEGO arising from its registered trade marks as well as common law rights derived from its extensive reputation in the name.
The first part of the disputed domain name consists of the Complainant’s trade mark LEGO combined with the term “mindstormsnxt2”. This is virtually the same (and explicable only) as the name of the Complainant’s product: “Lego Mindstorms NXT 2.0” and indeed the Complainant also owns a trade mark for MINDSTORMS. The disputed domain name also includes the generic word “toy”, which is obviously apt to describe the nature of the Complainant’s product.
The Panel has no hesitation in concluding that the disputed domain name is confusingly similar to the Complainant’s trade marks.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) explains the consensus view as to where the burden of proof lies in respect of the second element of paragraph 4(a) of the Policy:
“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 a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence 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 […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Respondent has used the disputed domain name for a website which promotes the sale of the Complainant’s own products via third party websites. The Respondent’s site is branded with the name of the Complainant’s product and it features prominent images of those products.
Paragraph 2.3 of WIPO Overview 2.0 expresses the consensus view that to establish a bona fide offering of goods and services, a reseller of trade marked goods must comply with certain requirements, including accurate disclosure of its relationship with the trade mark owner. In the Panel’s view, there is no such accurate disclosure in this case as the Respondent’s website is clearly designed to imply a connection between the Respondent and the Complainant. Accordingly, such use of the disputed domain name could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In this Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s distinctive and well-known trade mark in mind.
As mentioned above, the Respondent has used a domain name consisting principally of the name of the Complainant’s product for a website which deliberately sought to imply a connection with the Complainant and which linked to third party sites offering that product for sale.
The Respondent has not come forward to deny the Complainant’s assertions of bad faith.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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, <legomindstormsnxt2toy.com>, be transferred to the Complainant.
Dated: April 14, 2011