World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Djoko Sutijoko

Case No. D2011-1872

1. The Parties

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

The Respondent is Djoko Sutijoko of Bekasi Jawa Barat, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <lego-mindstorms-nxt.net> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2011. On October 31, 2011, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On October 31, 2011 eNom, 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 November 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2011.

The Center appointed Leon Trakman as the sole panelist in this matter on December 16, 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 LEGO Juris A/S, based in Denmark is the owner of the trademark LEGO and other trademarks used since 1953 in connection with the LEGO brand of construction toys and other LEGO products which are sold worldwide. The Complainant is also the owner of over 1,000 domain names containing the term LEGO. The LEGO trademark extends to computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains a website under the domain name <lego.com>.

According to the registrar’s, eNom, Inc., WhoIs database, the Respondent is Djoko Sutijoko located in Bekasi, Jawa Barat, Indonesia.

5. Parties’ Contentions

A. Complainant

The Complainant adduces evidence that the trademark LEGO is among the best-known trademarks in the world and that it has expanded its use of the LEGO trademark from toys to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.

The Complainant alleges that the LEGO mark is in possession of substantial inherent and acquired distinctiveness, as protected under Article 6bis of the Paris Convention for protection of Industrial Property (“PC”) which is confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”). The Complainant maintains that these statutes provide it, as owner of a protected trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the Complainant maintains that its protection of its brand extends beyond toys and goods similar to toys.

The Complainant alleges that the Respondent’s registration and use of the disputed domain name is contrary to the Policy. In particular, the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, contrary to the Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1); the Respondent has no rights or legitimate interests in respect of the disputed domain name, contrary to the Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2); and that the Respondent has registered and is using the disputed domain name bad faith contrary to the Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name, <lego-mindstorms-nxt.net>, is identical to two trademarks of the Complainant, LEGO and MINDSTORMS which the Complainant has registered as trademarks and domain names in a number of different countries including Indonesia. The fact that the disputed domain name combines two different marks of the Complainant accentuates rather than detracts from producing a confusingly similar result. Moreover, the addition of the letters “nxt” right after the trademark MINDSTORMS accentuates the impression that the disputed domain name is the “next” product in the line of production of the Complainant’s LEGO MINDSTORMS productions.

The addition of generic prefixes or suffixes in a disputed domain name does not detract from the fact that a name is otherwise confusingly similar to an established mark or marks, such as those of the Complainant. See e.g. Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488. Nor does the addition of the generic top-level domain “.net” detract from the conclusion that the disputed domain name is confusingly similar to the Complainant’s mark or marks. See e.g. Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118.

This confusion is further attenuated by the fact that the trademark LEGO is widely known globally; and has been the subject of a variety of domain name disputes LEGO Juris A/S v. Rampe Purda, 2010-0840; LEGO Juris A/S v. Reginald Hastings Jr; WIPO Case No. D2009-0680.

As a matter of fact, it is most likely, given the Complainant’s widely known trademarks, that Internet users generally will assume that the disputed domain name is commercially associated with the Complainant and its business. This is likely even if Internet users are unaware of the content, product or service which the disputed domain name purports to encompass. A disputed domain name that creates “initial interest confusion” with the Complainant’s marks ordinarily is sufficient to constitute confusion contrary to the Policy. See e.g. EGO Juris A/S v. AbdiPraja, WIPO Case No. D2010-2178.

Finally, it is difficult to conceive that the Respondent was unaware of the confusion likely created between its disputed domain name and the Complainant’s mark. That likelihood is reduced to virtually nil insofar as the Respondent’s domain name replicated two of the Complainant’s marks, LEGO and MINDSTORMS not one. The use of the phrase “nxt” further confirms that the Respondent’s domain name was intended to create the misleading impression that its products were “next” in the Complainant’s production line which was clearly not the case.

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence adduced that the Respondent has any registered trademarks or other legal rights or legitimate interests in the disputed domain name. The Complainant maintains that it has given no license or authorization of any other kind to the Respondent, to use the trademarks LEGO or MINDSTORMS. The Respondent is not an authorized dealer of the Complainant’s products and according to the Complainant has never had a business relationship with the Complainant. Nor is there a disclaimer on the Respondent’s website of any relationship with the Complainant. See e.g. Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.

Nor can the Respondent claim, in registering and using the disputed domain name, to have been unaware of the Complainant’s rights to and interests in the marks LEGO and MINDSTORM in light of the confusing similarity between its domain name and the Complainant’s widely known trademarks. See Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc, WIPO Case No. D2001-1314.

Accordingly, the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Respondent has registered and used the disputed domain name in bad faith, in connecting it to a web site displaying sponsored links. There is no evidence that the Respondent has used the disputed domain name as a company name, and its use to create confusion among Internet users in order to direct Internet traffic to a linked a website is itself more than sufficient evidence of bad faith use of that name. See e.g. Drexel University v. David Brouda, WIPO Case No. D2001-0067. Alternatively phrased, in not using the disputed domain name in connection with a bona fide offering of goods or services, the Respondent has evinced bad faith.

The Respondent’s bad faith is also determined by the effect its use of the disputed domain name is likely to have upon the Complainant. Insofar as the Respondent uses the disputed domain name to access a linked website, the Respondent is potentially exploiting the goodwill of the Complainant, tarnishing or otherwise undermining its reputation and commercial interests. See e.g. Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055.

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 disputed domain name <lego-mindstorms-nxt.net> be transferred to the Complainant.

Leon Trakman
Sole Panelist
Dated: December 30, 2011

 

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