WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Villa Bogor Indah H3/3, Pius Kilap Bawono
Case No. D2012-0505
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Villa Bogor Indah H3/3, Pius Kilap Bawono of Bogor utara, Jawa Barat, Indonesia.
2. The Disputed Domain Names and Registrar
The disputed domain names <harrypotterhogwartslego.com>, <herofactorylego.org>, <legomillenniumfalcon.com> and <legoqueenannesrevenge.org> (‘the Disputed Domain Names’)
are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2012. On March 14, 2012, the Center transmitted by email to eNom. a request for registrar verification in connection with the Disputed Domain Names. On March 14, 2012, 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 March 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2012. The due date for Response was extended to April 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2012.
The Center appointed Michael D. Cover as the sole panelist in this matter on April 24, 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
The Complainant is a limited company incorporated in Denmark. The Complainant is the owner of the LEGO trademark and other trademarks used in connection with the famous LEGO brands of construction toys and other products. The LEGO trademark is registered in Indonesia, where the Respondent is situated. The Complainant and its licensees, through their predecessors in business, commenced use of the LEGO trademark in the United States of America in 1953 and the annual revenue of the LEGO Group of Companies has grown to more than USD 2.8 billion. LEGO products are sold in more than 130 countries throughout the world. The Complainant is also the owner of a great number of domain names consisting of or containing the word ‘Lego’ as set out in Annex 8 to the Complaint. LEGO is rated as a ‘Superbrand‘ in a report set out in Annex 9 to the Complaint, which shows LEGO as number 8 of the most famous trademarks and brands in the world.
The Respondent has an address in Jawa Barat, Indonesia and the Complainant had sent a cease and desist letter to the Respondent before the commencement of these proceedings but this had not resulted in the resolution of the dispute.
5. Parties’ Contentions
The Complainant maintains that its LEGO trade mark not only has substantial inherent distinctiveness but also has acquired substantial reputation through use. It further submits that the LEGO trademark is a well-known trade mark in accordance with the provisions of Article 6bis of the Paris Convention. It submits that the dominant element of the Disputed Domain Names is the word LEGO and that, in addition to the trademark LEGO, the Disputed Domain Name <harrypotterhogwartslego.com> also contains the trademark HARRY POTTER, for which the Complainant and Warner Bros Consumer Products Inc. have a license agreement. The Complainant submits that the Disputed Domain Names are confusingly similar to the Complainant’s well-known trade mark LEGO. It further submits that the addition of the suffixes or prefixes in the Disputed Domain Names is not relevant. It also states that in Lego Juris A/S v. Nasirudin, EazySmart.com (<lego-harrypotterhogwartscastle.com>), WIPO Case No. D2011-0617, the panel found that the additional component of the domain name was found to enhance the confusing similarity, because of the business relationship between the respective owners of the trademarks LEGO and HARRY POTTER and that the same approach should be applied in relation to the Disputed Domain Name <harrypotterhogwartslego.com>.
In relation to the remaining Disputed Domain Names, the Complainant notes that it has specific product series named respectively Hero Factory, Queen Annes Revenge and Millenium Falcon and that such suffixes strengthen the impression that these Disputed Domain Names are associated with or belong to the Complainant. In summary on this aspect, the Complainant says that the Complainant is the owner of the well-known trademark LEGO and that the Disputed Domain Names are clearly confusingly similar to the Complainant’s trademark LEGO.
The Complainant states that it has not found any registered trademarks or trade names corresponding to the Disputed Domain Names nor anything that would suggest that the Respondent has been using LEGO in any other way which would give the Respondent any rights or legitimate interests in the Disputed Domain Names. The Complainant states that it has not granted any licence or authorization to the Respondent and it has never had a business relationship with the Respondent.
The Complainant submits that the Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services. The Disputed Domain Names resolve to sites where visitors are redirected to “www.amazon.com” and the Complainant submits that the activities of the Respondent do not constitute a bona fide offering as a reseller. The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the Dispute Domain Names.
With regard to the Disputed Domain Names being registered and used in bad faith, the Complainant submits that the Respondent is intentionally attempting to attract for commercial gain Internet users to the relevant websites by creating a likelihood of confusion with the Complainant’s trademark LEGO as to the source, sponsorship, affiliation or endorsement of the websites. The Complainant summarises that its LEGO trademark is famous worldwide and that it is highly unlikely that the Respondent was unaware of the rights that the Complainant had in the trademark when the Respondent registered the Disputed Domain Names. It points out that there is no connection between the Respondent and the Complainant and that, by using the Disputed Domain Names, the Respondent is not making a legitimate non-commercial use or fair use without intent for commercial gain but is misleadingly diverting consumers for the Respondent’s own commercial gain and submits that the Respondent should be considered to have registered and to be using the Disputed Domain Names in bad faith.
The Complainant requests that the Panel decide that the Disputed Domain Names be transferred to the Complainant.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant is required to demonstrate on the balance of probabilities that the Disputed Domain Names are identical or confusingly similar to its trademark LEGO, that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that the Disputed Domain Names have been registered and are being used in bad faith
A. Identical or Confusingly Similar
The Complainant has demonstrated that is the owner of the well-known trademark LEGO.
With regard to confusing similarity, the Panel accepts the submission of the Complainant that the trademark LEGO is the dominant element of the Disputed Domain Names <herofactorylego.org>, <legomilleniumfalcon.com> and <legoqueenannesrevenge.org>. Whilst the added matter in fact refers to series names of the Complainant, the added material could just as easily be descriptive or generic matter. It is well-established that the addition of generic or descriptive matter to a trademark does not typically mitigate the likelihood of confusion. With regard to the Disputed Domain Name <harrypotterhogwartslego.com>, the Panel refers to and adopts the reasoning of the panel in Lego Juris A/S v. Nasirudin, EazySmart.com (<lego-harrypotterhogwarts.com>), WIPO Case No. D2011-0617, where the Panel found that the disputed domain name in that case was confusingly similar to the LEGO trademark of the Complainant. The Panel in that case found that this only enhanced the likelihood of confusion, as the evidence was, as in this case, that there were links between the Complainant as one trademark owner and the owner of the trademark HARRY POTTER.
The Panel accepts Complainant’s contentions that the submissions of the Complainant that the Disputed Domain Names are confusingly similar with the well-known trademark LEGO in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel also accepts that Respondent has no rights or legitimate interests in the Disputed Domain Names. Such use as has taken place of the Disputed Domain Names has not been bona fide, as it relies on confusing links to another website without the Respondent being a genuine reseller, does not involve the Respondent being known by the Disputed Domain Names and cannot be said to be legitimate noncommercial or fair use of the Disputed Domain Names, without the intent for commercial gain to misleadingly divert consumers. The Respondent has not been licensed or authorized by the Complainant to use the Complainant’s well-known trademark LEGO.
The Panel finds the Respondent has no rights or legitimate interests in the Disputed Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains a non-exhaustive list of circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Sub-paragraph (iv) is applicable in relation to this Complaint, in that the Panel finds that the Respondent has been using the Disputed Domain Names to attract, for commercial gain, internet users to the Respondent’s website by creating a likelihood of confusion with Complainant’s well-known trademark LEGO by creating a likelihood of confusion. The Panel accepts that it would have been highly unlikely, as submitted by the Complainant, that the Respondent would have been unaware of that well-known trademark when the Respondent registered the Disputed Domain Names in late 2011, the well-known trade mark LEGO having been in use by that point for nearly 60 years.
The Panel accordingly finds that the Disputed Domain Names have been registered and are being used 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 Names <herofactorylego.org>, <legomilleniumfalcon.com>, <harrypotterhogwartslego.com> and <legoqueenannesrevenge.org> be transferred to the Complainant.
Michael D. Cover
Dated: May 8, 2012