World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Razuwanda Darman, SMK Beluran

Case No. D2011-0503

1. The Parties

The Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT Digital Brand Services, Sweden.

The Respondent is Razuwanda Darman, SMK Beluran of Malaysia, represented by Ryan Wong.

2. The Domain Names and Registrar

The disputed domain names <legocityairport3182.net> and <lego-harry-potter-hogwarts-castle.net> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2011. On March 17, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On March 17, 2011 GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on March 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2011.

On April 9, 2011 the Respondent indicated that it has purchased both domain names by mistake in October 2010, but it has not used them or obtained any economical benefits. The Respondent agreed to cancel or transfer them to the legal rightful owner. On April 11, 2011 the Complainant asked for a suspension of the proceeding until May 11, 2011. The suspension was confirmed by the Center on the same date. On May 11, 2011, the Complainant requested the Center an extension of the suspension of the proceeding until June 11, 2011.

On June 14, 2011, the Complainant requested the Center to reinstitute the proceeding, as the Respondent had not taken any active actions in order to have the domain names transferred. On June 15, 2011, the Center reinstituted the proceeding.

The Center appointed Martin Michaus Romero as the sole panelist in this matter on June 29, 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.

4. Factual Background

The Complainant is the owner of the LEGO trademark, and as it demonstrated with Annexes No. 6 and 7 of the Complaint, the LEGO trademarks are used in connection with construction toys and other LEGO branded products. The LEGO trademarks have been used by the Complainant in the United States of America. Since 1953.

Likewise, the Complainant is also the owner of more than 1,000 domain names containing the term “lego”. The Complainant through its business activities worldwide has expanded the use of the LEGO trademark to computer hardware, software, books, video and computer controlled robotic constructions sets, and maintains an extensive website under the domain name <lego.com>, as it is supported by evidence identified in Annex 10 of the Complaint.

The Complainant states that since March 2010, the Complainant and Warner Bros. Consumer Products Inc. have a license agreement concerning the use of the trademark HARRY POTTER incorporated in the LEGO product line.

Considering that the mark LEGO is in possession of substantial inherent and acquired distinctiveness as well as it is widely recognized worldwide, it is believed that the LEGO trademark can be considered a well-known trademark

5. Parties’ Contentions

A. Complainant

The Complainant stated in its Complaint:

(i) That its LEGO trademark is reproduced as the dominant part of the domain names <legocityairport3182.net> and <lego-harry-potter-hogwarts-castle.net>.

(ii) The addition of the suffixes “citiairport3182” and “harry-potter-hogwarts-castle” do not have any impact on the overall impression of the dominant part of the names. Therefore, the Complainant as the owner of the well-known trademark LEGO stated that the disputed domain names are clearly confusingly similar to the Complainant’s registered trademarks LEGO and the suffixes do not affect the overall impression and in its opinion the two domain names should be considered to be confusingly similar with the Complainant’s trademark.

(iii) The Respondent does not have registered trademarks or trade names corresponding to the domain names. The Complainant has not found anything that would suggest that the Respondent has been using LEGO in any other way that would give the Respondent any legitimate rights in the name.

(iv) That it has not granted any license or authorization to the Respondent to use the trademark LEGO.

(v) It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name at the time of registering the domain names.

(vi) The disputed domain names are not used in connection with a bona fide offering of goods or services. One of them (<lego-harry-potter-hogwarts-castle.net>) is connected to a web site displaying links to the shopping site Amazon.com and the other (<legocitiairport3182.net>) displays the same design as <lego-harry-potter-hogwarts-castle.net> with information and a picture of a LEGO City Airport product together with a link “Best Online Prices”, however this link is inactive.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules states that: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Considering that the Complainant and Respondent are domiciled in different jurisdictions, the Panel in order to determine whether the Complainant has met its burden as stated in paragraph 4(a) of the Policy, will essentially base its decision on the basis of the statements and documents submitted in accordance with the Policy and the Rules.

Paragraph 4(a) of the Policy directs that the Complaint must prove each of the following: (i) that the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and, (iii) that the domain names have been registered and used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names are confusingly similar to the trademarks indicated in Annex 6 of the Complaint in which the Complainant has prior rights. The disputed domain names <legocityairport3182.net> and <lego-harry-potter-hogwarts-castle.net> are confusingly similar to the LEGO trademark, which is reproduced in them. The first element of the Policy has been established.

B. Rights or Legitimate Interests

The Respondent has not received permission nor authorization to use the LEGO trademark. During the suspension of this proceeding the Respondent agreed to transfer the domain names to the Complainant, but it did not take any active action to do so.

The Respondent did not provide any evidence or arguments to prove anything to the contrary or anything to show rights or legitimate interests in the domain names. In addition, the Complainant’s use of the trademark LEGO precedes the registration of the domain names. It should also be pointed out that the Respondent is not as individual, business or corporation known by the disputed domain names. The second element of the Policy has been established.

C. Registered and Used in Bad Faith

Based on the statements and documents submitted, the Panel considers that the Respondent registered and used the disputed domain names in bad faith, as it intended to trade on the goodwill of the Complainant’s mark by trying to direct Internet users, possibly for commercial gain, to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites. The third element of the Policy has been established.

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 names <legocityairport3182.net> and <lego-harry-potter-hogwarts-castle.net> be transferred to the Complainant.

Martin Michaus Romero
Sole Panelist
Dated: July 13, 2011

 

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