WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. PrivacyProtect.org / None, Johan Maulana
Case No. D2011-2265
1. The Parties
Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is PrivacyProtect.org of Queensland, Australia / None, Johan Maulana of Jakarta, Barat, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <legodiagonalley.net> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2011. On December 22, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2011, the Registrar 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 Complainant on January 6, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 12, 2012.
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 January 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2012. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on February 3, 2012.
The Center appointed Stefan Naumann as the sole panelist in this matter on February 8, 2012. 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
Complainant is the owner of numerous trademarks containing LEGO alone or in combination with other terms and/or devices that designate products and services in international classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42 amongst others, notably LEGO (European Community Trademark no. 000039800 filed on April 1, 1996, and registered on October 5, 1998). Complainant asserts that the LEGO marks are well-known and enjoy high inherent and acquired distinctiveness.
The disputed domain name <legodiagonalley.net> was registered on April 15, 2011.
5. Parties’ Contentions
The LEGO marks and brand are well-known world-wide.
Respondent has no relationship with Complainant and has no permission from Complainant to use any of Complainant’s trademarks.
The disputed domain name leads to a website with a pay-per-click system that links to a single website “www.amazon.com” where what appears to be authentic LEGO products are offered for sale.
Complainant asserts that Respondent’s registration and use of the disputed domain name violates Complainant’s rights in the registered LEGO trademarks. Complainant alleges that <legodiagonalley.net> is confusingly similar to and incorporates the LEGO trademarks, and that the only difference between Complainant’s trademarks and the disputed domain name is the addition of the term “diagonalley”. Complainant argues that (i) the addition of the term “diagonalley” reinforces the risk of confusion since Complainant makes and sells a product named “Diagon Alley”, (ii) the reputation of the LEGO marks is such that there exists a considerable risk that the public would either perceive the disputed domain name as a domain name owned by the Complainant or would believe that there exists a commercial relation between Complainant and Respondent, (iii) by using the LEGO marks as a dominant part of the disputed domain name, Respondent exploits the goodwill and the image of Complainant’s trademarks, which may result in dilution, and (iv) even without being aware of the content of the website, persons seeing the disputed domain name would be likely to believe that the disputed domain name is connected to Complainant (“initial interest confusion”).
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name incorporates in its entirety the LEGO trademarks, which are registered internationally and within the European Union. The Panel agrees that the addition of the term “diagonalley” to the term “Lego” reinforces the risk of confusion for consumers who may be aware of the fact that Complainant makes and sells toys that reproduce characters and elements of the “Harry Potter” series of novels and motion pictures. These elements include a place called “Diagon Alley”. The legal notice “Copyright © 2012 www.LegoDiagonAlley.net” that appears on the website at the disputed domain name further reinforces the impression that Respondent has rights in the LEGO trademarks and/or a relationship with Complainant.
The Panel is satisfied that the disputed domain name is confusingly similar to Complainant’s LEGO trademarks for the purposes of the Policy.
B. Rights or Legitimate Interests
One would expect a legitimate business to provide information that allows it to be contacted. Here, however, Respondent has hidden his identity by using a “WHOIS privacy [protection] service for domain name owners that do not wish to be contacted directly”. As the text on the print-outs of screenshots submitted by Complainant was not legible, the Panel has visited the website “www.legodiagonalley.net”. On the website, Respondent, who is identified as None, Johan Maulana in the present UDRP proceeding, presents himself on the “About” page as follows:
“My name is […] Miner, I am the owner of this website. This website is about Lego Harry Potter. Here you can find much information which related with [sic] Lego Harry Potter. Review, Video, Picture, best Price to Buy, Discount, all you can check here. FYI, I always give my cousin/niece Lego Harry Potter for christmas day or brithday [sic] party, and they always want a new one. Glad this Lego Harry Potter has comes with a new product called Diagon Alley, so I can have another gift for them. I also give my favorite link where to buy this Lego Harry Potter Diagon Alley, Lego Harry Potter Hogwarts Castle, Lego Harry Potter Hogwart’s Express, etc. I hope this website give [sic] you the information you need. ([…] Miner)”
Respondent’s text and Complainant’s evidence confirm that Respondent does not offer any products or services himself. Instead, Respondent uses the disputed domain name to generate pay-per-click revenue from a website that advertises only Complainant’s “Harry Potter” line of LEGO products, with links to a single source offering such products for sale. The Panel considers that Respondent is not a reseller or retailer since he does not sell any LEGO products. As noted in LEGO Juris A/S v. Suka LLC, WIPO Case No. D2011-1057 cited by Complainant, “no bona fide offering of goods and services can be found, when a site is using, without a license or authorization, a registered trademark as part of its name to indirectly solicit orders for products sold by others, even if the products finally sold are made by Complainant.” The Panel is further satisfied that the lengths to which Respondent has gone to hide his identity, as shown by the evidence provided by Complainant, are a further indication that Respondent does not have and knows that he does not have any rights or legitimate interests in the disputed domain name.
The Panel considers that in the present case Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name leads to a pay-per-click site that displays links to single website offering what appears to be authentic products for sale. In the Panel’s view, this and the fact that Respondent has no rights or legitimate interests in the disputed domain name and has carefully hidden his or her identity demonstrate Respondent’s bad faith registration and use for purposes of the Policy.
Taking into account the fact that Complainant’s claims and factual statements are well documented by the evidence on record, the Panel is able to conclude that Respondent has registered and uses the disputed domain name in bad faith.
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 <legodiagonalley.net> be transferred to Complainant.
Dated: February 22, 2012