WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Nasirudin, EazySmart.com
Case No. D2011-0617
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Nasirudin, EazySmart.com of Jawa Barat, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <lego-harrypotterhogwartscastle.com> is registered with UK2 Group Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2011. On April 7, 2011, the Center transmitted by email to UK2 Group Ltd a request for registrar verification in connection with the disputed domain name. On April 8, 2011, UK2 Group Ltd. transmitted by email to the Center its verification response 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 the Complainant on April 11, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 11, 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 April 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2011.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 9, 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, based in Denmark, is the owner of the trademark LEGO. The name LEGO is widely associated with a certain type of construction toy based on coloured plastic bricks and components that click together, and other things. According to the Complainant, the revenue for the LEGO Group in 2009 was more than $2.8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. The LEGO trademark has been in use since 1953.
The Complainant is the owner of numerous Community, United States Patent and Trademark Office (USPTO), and foreign national trademarks. The list of world trademarks appended to the Complaint runs to 36 pages. Specimen trademarks registered to the Complainant are:
LEGO (word), Community trademark, No. 000039800, registered October 5, 1998, classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, 42;
LEGO (word), USPTO trademark, No. 1018875, registered August 26,1975, class 28;
LEGO (word), Indonesian trademark, No. 430.237, renewed March 15, 2009, class 28.
The Complainant also owns more than 1000 domain names containing the term LEGO.
Nothing is known about the Respondent except for the information filed with the registration of the disputed domain name, which was apparently registered on November 30, 2010.
5. Parties’ Contentions
The Complainant has documented extensive lists of the trademarks that it owns. It contends that the dominant part “lego” of the disputed domain name makes it confusingly similar to the Complainant’s trademarks for the word LEGO.
The Complainant has produced a Licence Agreement it signed with Warner Bros. Consumer Products Inc., (Warner), dated March 18, 2010, authorising the Complainant to use Warner’s trademark HARRY POTTER, which also forms part of the disputed domain name.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. According to enquiries, the Respondent does not have a corresponding trademark or trade name and has no other legitimate interest in LEGO. The Complainant has not licensed the Respondent to use its trademark in any way.
The Complainant says that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but to generate click-through traffic directed to Amazon.com, where the Complainant’s and competitors’ products are for sale. The Respondent is not commonly known by the disputed domain name and is not using it in a noncommercial or fair manner.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The fame of the Complainant’s trademark is such that it is highly unlikely the Respondent would not have been aware of it. The disputed domain name is used for a website that offers visitors sponsored links to other websites in order to generate pay-per-click advertising revenues for the benefit of the Respondent. Thus the Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website.
The Complainant says that it first tried to contact the Respondent on January 23, 2011 through a cease and desist letter sent by e-mail, requesting voluntary transfer of the disputed domain name in return for the expenses of registration and transfer fees. Reminders were sent on February 3, 2011 and February 14, 2011. There was no reply.
The Complainant has advanced a number of previous decisions under the Policy that it wishes the Panel to consider as precedent.
The Complainant requests the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Panel notes that prior to the filing of this dispute, the disputed domain name was registered in the name of PrivacyProtect.org, of Munsbach, Luxembourg. This is a service that enables registrants to avoid the public disclosure of their true contact details, which may be utilised for legitimate reasons. It may also be used in an attempt to avoid the service on a Respondent of a proceeding under the UDRP. A notice accompanying the contact details of PrivacyProtect.org states: “Note - All Postal Mails Rejected”.
Paragraph 1 of the Rules states: “Respondent means the holder of a domain-name registration against which a complaint is initiated”. The registrar disclosed the registered contact details of the Respondent to the Center, and the Complainant in an Amendment to Complaint changed the name of the Respondent accordingly to Nasirudin, of EazySmart.com, with a physical address in Indonesia. A package sent to that address by courier on April 12, 2011 was tracked as having been received and signed for on April 19, 2011. The Panel is satisfied that this proceeding was properly initiated against the registrant of record and that the Center has fulfilled its obligations to attempt to notify the Respondent of the Complaint.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant is the owner of numerous registered trademarks for the word LEGO and that for the purposes of paragraph 4(a)(i) of the Policy the disputed domain name <lego-harrypotterhogwartscastle.com> is confusingly similar to the trademark LEGO. The additional component “harrypotterhogwartscastle”, easily read as “Harry Potter Hogwarts Castle”, is found not to detract from confusing similarity but to enhance it, since according to the evidence there is a business relationship between the respective owners of the trademarks LEGO and HARRY POTTER. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted prima facie that the Respondent does not have and cannot have any rights or legitimate interests in the disputed domain name. The Respondent has not sought to refute the Complainant’s prima facie case in the terms of paragraph 4(c) of the Policy or otherwise. Nothing in the evidence leads the Panel to consider it likely that the Respondent may have made a bona fide use of the disputed domain name for an offering of goods or services, or had any reason to have been known by the disputed domain name, or had used it for a noncommercial or fair purpose. The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, of which the most applicable to the present case is:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location.”
The Complainant has produced screenshots of the website to which the disputed domain name resolved on April 5, 2011. An attractive banner proclaims: “Save Money On LEGO Harry Potter Hogwarts Castle” and the body of the page features related images including a direction to a purported review of the product. Another page of the website similarly features Lotso Huggin Bear products in a similar style, being the products of a competitor of the Complainant.
It may reasonably be concluded that the Respondent’s use of the disputed domain name is for the operation of a website that generates revenue by referring Internet visitors onwards to external websites that pay a commission for the referrals. This style of business is known variously as click-through or pay-per-click and may be a legitimate means of subsidising an information or public service website or as a business in itself. The business depends, however, on the attraction of visitors, often through the entry of key terms such as trademarks into a search engine. The business is not legitimate if a famous trademark is used without the authority of the trademark owner as the means of attracting visitors.
The Panel finds that the Respondent has used the disputed domain name intentionally to attract Internet visitors to the corresponding website for commercial gain by relying upon confusion with the Complainant’s trademark LEGO, constituting use in bad faith, and that the disputed domain name was registered in bad faith for that purpose.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith registration or use may be found otherwise. The Complainant attempted to engage with the Respondent on January 23, 2011, February 3, 2011 and February 14, 2011 through cease and desist letters, requesting also voluntary transfer of the disputed domain name to the Complainant. The Respondent’s failure to reply is found to be a factor compounding bad faith (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
In ordering a transfer to the Complainant, the Panel is mindful that the disputed domain name substantially embodies the trademark HARRY POTTER that is owned by Warner and not by the Complainant. Having regard to all the circumstances including the stature of the two companies and the business relationship between them evidenced by the Licence Agreement, the Panel considers that a transfer would nevertheless be more appropriate than cancellation.
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 <lego-harrypotterhogwartscastle.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: May 23, 2011