World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Pius Kilap Bawono

Case No. D2011-2188

1. The Parties

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

The Respondent is Pius Kilap Bawono of Bogor Utara, Jawa Barat, Indonesia.

2. The Domain Names and Registrar

The disputed domain names <herofactorylego.info>, <legocityset.info>, and <legoqueenannesrevenge.info> (the “Domain Names”) are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2011. On December 13, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Names. On December 13, 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.

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 December 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2012.

The Center appointed Thomas M. Legler as the sole panelist in this matter on January 20, 2012. The Panel finds that it was properly constituted. The Panelist 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 (hereinafter referred to as the “Complainant”) is based in Denmark.

The Complainant is the owner of LEGO, and all trademarks used in connection with the LEGO brands of construction toys and all other LEGO branded products. The Complainant is also the owner of more than 1,000 domain names containing the term “lego”.

The Complainant and its licensees (collectively the “LEGO Group of Companies” or the “LEGO Group”), through their predecessors, commenced use of the LEGO mark in the United States of America in 1953, to identify construction toys made and sold by them.

The Complainant also has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Indonesia where the Respondent is located. Among others, the Complainant holds a trademark registration in Indonesia for the mark LEGO, with registration number 430.237.

The Domain Names have been registered by the Respondent on September 2 and 7, 2011.

5. Parties’ Contentions

A. Complainant

Pursuant to the Complainant, the trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials.

The LEGO trademark and brand have been recognized as being famous. In that context, enclosed as Annex 9, is a list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world.

The business of making and selling LEGO branded toys has grown remarkably over the years. By way of example, the revenue for the LEGO Group in 2009, was more than USD 2,8 billion. 2010 was another good year for the LEGO Group. Its global market share rose from 4.8 % at the close of 2009 to approx. 5.9 % at end-2010.

The Complainant indicates that the LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive website under the domain name <lego.com>.

The Complainant indicates that the mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered in the whole community to be significant. According to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), 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 statute of a well-known trademark provides the owner of such a 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).

Accordingly, the Complainant states that the protection for LEGO goes far beyond toys and goods similar to toys.

In the case at hand, the Complainant has provided evidence of ownership of several trademark registrations constituted by LEGO alone or together with other letters and/or words or figurative elements.

The dominant part of the Domain Names <legocityset.info>, <legoqueenannesrevenge.info> and <herofactorylego.info> comprises the word “lego”, which is identical to the registered trademark LEGO.

The Domain Names are confusingly similar to the Complainant’s world famous trademark LEGO. The addition of the suffixes and prefix “cityset”, “queenannesrevenge” and “herofactory” are not relevant and will not have any impact on the overall impression of the dominant part of the names, “lego”, instantly recognizable as a world famous trademark. As the Complainant has specific products named, LEGO City, LEGO Queen Anne’s Revenge and LEGO Hero Factory, the suffixes and the prefix are rather fitted to strengthen the impression that the Domain Names belong to, or are affiliated with the Complainant.

Therefore, by using the trademark as a dominant part of the Domain Names, the Respondent exploits the goodwill and the image of the trademark. Indeed, persons seeing the Domain Names, even without being aware of the content, are likely to think that the Domain Names are somehow connected to the Complainant.

In view of the above, the Complainant concludes that the Domain Names in question are clearly confusingly similar its registered trademark LEGO.

As to the second element of the Policy, the Complainant indicates that the Respondent has not any registered trademarks or trade names corresponding to the Domain Names. No license or authorization of any kind has been given by the Complainant to the Respondent to use the trademark LEGO. Moreover, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.

The Respondent registered the Domain Names on September 2 and September 7, 2011. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.

It is therefore clear for the Complainant that the Respondent has no rights or legitimate interests in respect of the Domain Names.

With regard to the third element of the Policy, the Complainant’s standpoint is as follows:

The trademark LEGO in respect of toys belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world.

The Complainant first tried to solve the matter amicably by sending a cease-and-desist letter (Annex 12) to the Respondent on October 6, 2011. The Complainant requested the immediate transfer of the Domain Names and offered compensation for the expenses of registration and renewal fees. No reply was received from the Respondent. The Complainant sent a final reminder on November 15, 2011.

There are sponsored links displayed on the websites connected to the Domain Names from which the Respondent most likely derives income once a visitor clicks on the links and is redirected to “www.amazon.com”. The use of sponsored links is a factor indicating bad faith as the Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.

Furthermore, there is no disclaimer on the website explaining the non-existing relationship between the parties. Instead, a copyright text is displayed which rather confuses the visitor into believing that the Respondent has rights in the Domain Names.

The Complainant therefore requests that the Domain Names be transferred to the Complainant.

B. Respondent

The Respondent did not file any Response.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove that:

(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) The Domain Names have been registered in bad faith and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has provided sufficient evidence of ownership of several trademark registrations constituted by LEGO alone or together with other letters and/or words or figurative elements. The dominant part of the Domain Names <legocityset.info>, <legoqueenannesrevenge.info> and <herofactorylego.info> is the word “lego”, which is identical to the registered trademark LEGO. As to the other parts of the Domain Names, i.e., the suffixes “cityset”, “queenannesrevenge” and the prefix “herofactory”, the Panel notes that they are not fantasy names but names of the Complainant’s specific products sold under the LEGO trademark.

There is therefore no doubt for the Panel that by adding the name “lego” to the above mentioned product names, the Domain Names are confusingly similar to the Complainant’s trademark LEGO.

B. Rights or Legitimate Interests

The Respondent seems to run a list of sponsored links under the Domain Names. This is in itself not forbidden and may in principle constitute a bona fide offering of goods or services in the sense of paragraph 4(c)(i) of the Policy. However, in the present case, the Respondent uses the clearly well-known trademark LEGO as recognizable part of its Domain Names for its website. The Panel has no doubt that the Respondent was aware or should have been aware of the well-known character of the trademark at stake, all the more that the Complainant has, among many others, also a trademark registration in Indonesia, at the Respondent’s domicile (registration number 430.237).

The (ab)use of a well-known trademark usually triggering Internet traffic to the respective website cannot be considered as bona fide.

Moreover, due to its default in the present procedure, the Respondent failed to inform the Panel of its actual intentions when choosing and registering the Domain Names pointing to its list of sponsored links.

Regarding paragraph 4(c)(ii) of the Policy, the Panel notes that the Respondent named “Pius Kilap Bawono” is not “commonly known by the Domain Names” and did not submit any evidence that it is the owner of a company having the Domain Names as its corporate name and that it is commonly known by such name.

Finally, the Complainant indicates – and the Respondent does not object in the absence of a Response – that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO.

Consequently, the Panel is of the opinion that the Respondent has no rights or legitimate interests in respect of the Domain Names in the sense of paragraph 4(c)of the Policy.

C. Registered and Used in Bad Faith

There is no doubt for the Panel (and many other panels have stated so as well) that the trademark LEGO is a well-known and reputed trademark throughout the world.

The fact that the trademark LEGO is well-known and that the Respondent was or should have been aware of this (see B.) constitutes an element indicating bad faith registration. In addition, the present case is an obvious bad faith use as the Domain Names not only contain the famous LEGO trademark but also include terms which directly relate to certain products offered under the LEGO trademark.

The Panel has therefore the impression that the Respondent tries to profit from the well-known character of the Complainant’s trademark and products to attract, for commercial gain, Internet users to its website (National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118; Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079; Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102, and many others).

In addition, the Panel points out that the fact that the Respondent did not file a Response comforts the Panel, under the given circumstances, in its finding of bad faith.

7. Decision

For the foregoing reasons the Panel orders that the Domain Names <herofactorylego.info>, <legocityset.info>, and <legoqueenannesrevenge.info> be transferred to the Complainant.

Thomas Legler
Sole Panelist
Dated: February 13, 2012

 

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