WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Muhamad Riza Nadoa
Case No. D2011-1338
1. The Parties
Complainant is LEGO Juris A/S, Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Muhamad Riza Nadoa, Jawa Timur, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <legonxt20.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2011. On August 5, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On August 5, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on August 10, 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 Respondent of the Complaint, and the proceedings commenced on August 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 1, 2011.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on September 14, 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.
On September 6, 2011 an email reply to the notification of default was received by the Center from the Respondent stating the following: “Yes, i get your letter at my home...you have to know that the domain legonxt20.com will expired and i have no optimize that web.”
4. Factual Background
Complainant is the owner of the trademark LEGO, registered in numerous countries throughout the world including Indonesia where the Respondent resides. Complainant is also the owner of more than one thousand domain names corresponding to the term LEGO.
5. Parties’ Contentions
Complainant is the producer of the LEGO brand of construction toys and other branded products after commencing sales in (at least) the United States of America of LEGO construction toys in 1953, Complainant asserts that sales of LEGO toys have grown remarkably, to more than 2.8 billion dollars in 2009. Complainant and its subsidiaries sell their LEGO products in more than 130 countries throughout the world, including Indonesia where Respondent resides.
Complainant asserts that the LEGO trademark is among the best known trademarks in the world. Attached to the Complaint was a listing by Superbrands U.K. of the top 500 “superbrands” for the years 2009/10, showing LEGO as the most famous toy brand and the number 8 most famous brand of any kind in the world.
Complainant has expanded use of its LEGO trademark beyond construction toys to computer hardware and software, books, videos and computer controlled robotic construction sets. Among the latter is a construction set sold under the name LEGO NXT 2.0. With its Complaint, Complainant submitted an annex showing that Respondent’s domain name resolves to a page on the “www.amazon.com” website promoting the sale of various LEGO products, notably including the LEGO NXT 2.0 robotic construction set.
Complainant asserts that the disputed domain name is identical or confusingly similar to its famous LEGO trademark, registered in numerous countries worldwide and notably in Indonesia where Respondent resides. The addition of the term NXT to the disputed domain name refers to Complainant’s NXT product line and does not avoid a likelihood of confusion. Complainant asserts the domain name is confusingly similar to Complainant’s registered trademark, and the suffix of the domain name enhances the similarity because of its reference to Complainant’s NXT product line.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name because Respondent has no registered trademarks or trade names corresponding to the domain name, nor anything else suggesting that Respondent has been using LEGO in any other way that would give Respondent legitimate rights in the name. Complainant asserts that it has provided no license or authorization to Respondent to use the trademark LEGO, and that it is highly unlikely that Respondent would not have known of Complainant’s legal rights in the LEGO name at the time he registered the domain name. Complainant asserts that Respondent is not using the domain name in connection with a bona fide offering of goods or services, but rather has chosen the name based upon Complainant’s registered trademark in order to generate traffic to his website displaying links to “www.amazon.com” where Complainant’s products are offered, including a robotic construction set named LEGO NXT 2.0. Complainant asserts that Respondent cannot be considered a reseller of Complainant’s products because the website to which the domain name resolves is that of “www.amazon.com”, not that of Respondent. Furthermore, Complainant asserts that the Respondent’s website derives “click-through” income when Internet users who type in the domain name at issue click on the links and are redirected to “www.amazon.com”. Complainant asserts that use of the domain name to resolve to sponsored links is not a bona fide use of the domain name.
Complainant asserts that the disputed domain name was registered and is being used in bad faith because Respondent is using the domain name intentionally to attempt to attract, for commercial gain, Internet users to the attached website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship affiliation or endorsement of its website. The website to which the domain name resolves displays sponsored links from which, Complainant asserts, Respondent most likely derives “click-through” income; another factor indicating bad faith. Complainant asserts there is no doubt that Respondent was aware of Complainant’s famous trademark to confuse Internet users and obtain “click-through” revenue by purchasers seeking to purchase Complainant’s famous LEGO construction toys, and in particular the LEGO NXT 2.0 robotic construction set.
Complainant asserts that it tried to contact the Respondent before filing the Complaint by a cease and desist letter, in which Complainant requested a voluntary transfer of the domain name and offered compensation for the expenses of registration and transfer fees. Respondent advised that he would consent to a transfer, and Complainant reimbursed the Respondent for the registration costs up front. However, Respondent never unlocked the domain name for transfer to Complainant, and Complainant filed the present Complaint.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In order to prevail in a proceeding under the Policy, a complainant must typically prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
However, the Policy paragraph states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [the Respondent has] registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent has] 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 [the Respondent has] engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website 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 [its] website or location or of a product or service on [its] website or location.
Policy, paragraph 4(b). These circumstances are non-exclusive, and a panel may consider other circumstances as constituting registration and use of a domain name in bad faith.
Where, as here, Respondent is in default, the Panel may draw such inferences as it considers appropriate. Policy, paragraph 14(b).
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <legonxt20.com> is confusingly similar to Complainant’s registered and famous trademark LEGO, which the domain name contains in its entirety. The only distinctiveness the designation “nxt20” adds to the domain name serves to increase its likelihood of association with the Complainant’s mark, as “nxt” is the name of one of Complainant’s products lines and “LEGO NXT 2.0” is the full name of one of Complainant’s robotic construction toys, which is displayed on the website linked to Respondent’s domain name. The Panel finds that Complainant has provided sufficient evidence to establish element 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Complainant asserts, and Respondent has failed to rebut, that Complainant has not authorized, licensed or consented to Respondent’s registration and use of the disputed domain name, and that Respondent is not commonly known by the name LEGONXT20, nor is he a reseller of Complainant’s products, authorized or otherwise. Combined with the inferences this Panel may make as a result of Respondent’s default herein, this Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in respect of the disputed domain name, which showing Respondent has failed to rebut. See Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1 and cases cited therein. As a result, Complainant has established element 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Panel finds that Complainant has provided sufficient evidence to satisfy paragraph 4(b)(iv) of the Policy, namely that by using the disputed domain name, Respondent intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
In addition to the inferences to be drawn from Respondent’s default in this proceeding, and from Respondent’s failure to transfer the domain name after accepting payment from Complainant, the Panel draws an inference that Respondent was aware of Complainant’s famous trademark at the time he registered the disputed domain name from the fact that the website linked to the disputed domain name offers Complainant’s products for sale, the name of one such product corresponding exactly to the disputed domain name. From the fact that the connected website is that of a third party, the Panel draws the further inference that Respondent registered the disputed domain name to obtain “pay-per-click” revenue by misdirecting internet users seeking Complainant’s LEGO NXT 2.0 product to the third-party website. See mVisible Technologies, Inc., bitm v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; see also Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483. The Panel finds that Complainant has established element 4(a)(iii) of the Policy.
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 <legonxt20.com> be transferred to the Complainant.
Jordan S. Weinstein
Dated: September 27, 2011