WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Eclean, Herdi Kusuma
Case No. D2012-0945
Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Eclean, Herdi Kusuma of Jakarta, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <legoproperty.com> (the “Domain Name”) is registered with UK2 Group Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2012. On May 3, 2012, the Center transmitted by email a request for registrar verification in connection with the Domain Name. On May 4, 2012,UK2 Group Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 May 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 31, 2012.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 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 pursuant to paragraph 7.
4. Factual Background
Complainant LEGO Juris A/S, based in Denmark, is the owner of the well-known LEGO trademark and other trademarks used in connection with the LEGO brand of construction toys and other LEGO branded products.
Complainant and its licensees, through their predecessors, commenced use of the LEGO trademark in the United States of America in 1953 to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown remarkably. By way of example, the revenue for the LEGO group in 2009 was more than USD 2.8 billion.
Complainant has subsidiaries and branches around the world, and LEGO products are sold in more than 130 countries including in Indonesia, where Respondent is located.
Complainant is the owner of more than 2400 domain names containing the term “lego”.
The Domain Name was registered by Respondent on February 15, 2012.
5. Parties’ Contentions
Complainant states that 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. For instance, in a list of the official top 500 Super brands for 2009/10, provided by Super brands UK, LEGO appears as number 8 among the most famous trademarks and brands in the world. The LEGO group has expanded 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>.
Complainant explains that the mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered to be significant. According to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property, confirmed and extended by Articles 16.2 and 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the status of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the mark or a confusingly similar denomination in connection with any products or services, regardless of the list of the products and services for which the trademark is registered. Thus, the legal protection for the LEGO mark goes far beyond toys and goods similar to toys.
Complainant’s licensees are authorized to exploit Complainant’s intellectual property rights, including its trademark rights, in Indonesia and elsewhere. It is the strict policy of Complainant that all domain names containing the word “lego” must be owned by Complainant.
(i) Identical or confusingly similar to a trademark in which Complainant has rights: Complainant contends that the dominant part of the Domain Name <legoproperty.com> comprises the word “lego”, which is identical to the registered trademark LEGO, which has been registered by Complainant in many trademarks and domain names in numerous countries around the world. The Domain Name is confusingly similar to Complainant’s world famous trademark LEGO.
Complainant urges that the Domain Name is confusingly similar to Complainant’s world famous LEGO trademark. The addition of the term “property” is not relevant and will not have any impact on the overall impression of the dominant part of the Domain Name, “lego”, instantly recognizable as a world famous trademark. The addition of the top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine the confusing similarity between the LEGO trademark and the Domain Name.
Anyone who sees the Domain Name is bound to mistake it for a name related to Complainant. The likelihood of confusion includes an obvious association with the trademark of Complainant. With reference to the reputation of the trademark LEGO there is a considerable risk that the trade public will perceive Respondent’s Domain Name either as a domain name owned by Complainant or that there is some kind of commercial relation with Complainant. By using the trademark as a dominant part of the Domain Name, Respondent exploits the goodwill and the image of the LEGO trademark, which may result in dilution and other damage for Complainant’s trademark. Persons seeing the Domain Name at issue, even without being aware of the content, are likely to think that the Domain Name is in some way connected to Complainant, (“initial interest confusion”).
(ii) No rights or legitimate interests in respect of the Domain Name: Complainant states it has not found that Respondent has any registered trademarks or trade names corresponding to the Domain Name. Complainant has also not found anything that would suggest that Respondent has been using the term “lego” in any way that would give Respondent rights or legitimate interests in the Domain Name. Consequently, Respondent may not claim any rights established by common usage. It is also clear that no license or authorization of any kind has been given by Complainant to Respondent. Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant.
Respondent registered the Domain Name on February 15, 2012. LEGO is a famous trademark worldwide. Complainant contends that 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 highly unlikely that Respondent would not have known of Complainant’s legal rights in the mark LEGO at the time of the registration. It is rather obvious that the fame of the trademark that has motivated Respondent to register the Domain Name. This, among other facts, proves that Respondent’s interests cannot have been legitimate.
Complainant asserts that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead, Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a commercial website connected to a property consultant and marketing agency. By doing this, Respondent is using the LEGO trademark to mislead Internet users to a commercial web site and consequently, is tarnishing Complainant’s LEGO mark. No evidence has been found that Respondent uses the name as a company name or has any other legal right in the names “lego” or “lego property”. Further, there is no visible disclaimer that the website is not endorsed or sponsored by Complainant to explain the non-existing relationship with the trademark holder. Instead, there is a copyright text displayed at the bottom of the website; “Copyright @ 2012 -LEGO PROPERTY. All rights reserved.”, which could be read as Respondent has copyrights in the LEGO or LEGO PROPERTY mark. By not accurately disclosing the relationship with Complainant, Respondent fails to meet the requirements for making a bona fide offering of goods or services. The website also contains sponsored advertisements, which should be seen as sponsored links that most likely provide income to Respondent via a click though program.
Registered and used in bad faith: As noted above, Complainant states that the trademark LEGO has the status of a well-known mark with a substantial and widespread reputation throughout the world. The number of third party domain name registrations comprising the trade mark LEGO in combination with other words has skyrocketed the last years (as an indication, please see e.g. LEGO Juris A/S v. Domains By Proxy, LLC/ Quest Commerce Inc. Quest Commerce Inc, WIPO Case No. D2012-0048; LEGO Juris A/S v. David Hudson, WIPO Case No. D2012-0060; LEGO Juris A/S v. Execucorp Management One, Inc., WIPO Case No. D2012-0062; LEGO Juris A/S v. Sharon Carbral, WIPO Case No. D2011-1677; LEGO Juris A/S v. eres syafei, WIPO Case No. D2011-1589; LEGO Juris A/S v. David Bishop, WIPO Case No. D2011-1557; LEGO Juris A/S v. Naohiro Tabata, WIPO Case No. D2011-1555; LEGO Juris A/S v. Nguyen Tien Luc a.k.a. Tien Luc Nguyen, WIPO Case No. D2011-1550; LEGO Juris A/S v. Tang Qingming, WIPO Case No. D2011-1526; LEGO Juris A/S v. CV. Amanah, WIPO Case No. D2011-1464; LEGO Juris A/S v. Manami Inomata, WIPO Case No. D2011-1444; LEGO Juris A/S v. Ridvan kagan agca, WIPO Case No. D2011-1441; LEGO Juris A/S v. Nasirudin, EazySmart.com, WIPO Case No. D2011-0617; LEGO Juris A/S v. Owen Jones, WIPO Case No. D2011-0537; LEGO Juris A/S v. Xianbin Chen, WIPO Case No. D2011-0505; LEGO Juris A/S v. Bridge Port Enterprises Limited, WIPO Case No. D2011-0442; LEGO Juris A/S v. Probuilders, WIPO Case No. D2011-0226; LEGO Juris A/S v. Private Private, WIPO Case No. D2010-2191; LEGO Juris A/S v. AbdiPraja, WIPO Case No. D2010-2178; LEGO Juris A/S v. Communikas LLC, WIPO Case No. D2010-2115; LEGO Juris A/S v. Wyntergreen.ca, WIPO Case No. D2010-2101; LEGO Juris A/S v. lego building co, WIPO Case No. D2010-2047; LEGO Juris A/S v. Multi-Medija Studio, Informacijske Storitve Milan Malek S.P., WIPO Case No. D2010-2043; LEGO Juris A/S v. William Stehlin, WIPO Case No. D2010-2042; LEGO Juris A/S 诉 yanghuitong, WIPO Case No. D2010-2030; LEGO Juris A/S v. Maho Jakotyc, WIPO Case No. D2010-0835; LEGO Juris A/S v. Online Toy Superstore, WIPO Case No. D2010-0839; and LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840). The considerable value and goodwill of the mark LEGO is most likely a large contribution to this and also the key factor that influenced Respondent’s decision to register the Domain Name.
Complainant first tried to contact Respondent on March 8, 2012, through a cease and desist letter. In the letter Complainant advised Respondent that the unauthorized use of the LEGO trademark in the Domain Name violated Complainant’s rights. Complainant requested the immediate transfer of the Domain Name and offered compensation for the expenses of registration and renewal fees not exceeding out of pocket expenses. No reply was received so a reminder was sent on March 20, 2012. Complainant sent a final reminder on March 28, 2012. Since the efforts of trying to solve the matter amicably were unsuccessful, Complainant chose to file a complaint according to the UDRP process. It has been mentioned in earlier UDRP decisions that the failure of a respondent to respond to a cease and desist letter, or a similar attempt of contact, has been considered relevant in a finding of bad faith.
The Domain Name is currently connected to a website displaying links to other property websites. Consequently, Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website.
To summarize, LEGO is a famous trademark worldwide. It is highly unlikely that Respondent was unaware of the rights Complainant has in the trademark and the value of said trademark at the time of the registration. There is no connection between Respondent and Complainant. By using the Domain Name Respondent is not making a legitimate noncommercial or fair use but is misleadingly diverting consumers for its own commercial gain. Consequently, Respondent should be considered to have registered and to be using the Domain Name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These are that:
(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 to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the LEGO trademark, just as previous UDRP panels have found that Complainant has established rights in this mark and that it is distinctive and well-known. The fame of the trademark has been confirmed in numerous previous UDRP decisions: LEGO Juris A/S v. Rampe Purda, WIPO Case No. 2010-0840 (“LEGO is clearly a well-known mark”); LEGO Juris A/S v. Domain Administrator, WIPO Case No. 2010-1260 (“In the present case, the disputed domain names incorporate the Complainant’s well-known registered trademark LEGO”); and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680 (“LEGO is a mark enjoying high reputation as construction toys popular with children”). Moreover, the Panel finds that the Domain Name is confusingly similar to Complainant’s trademark, incorporating Complainant’s mark in its entirety while adding the descriptive word “property”.
Because the Domain Name is confusingly similar to the LEGO trademark of Complainant, the Panel considers that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Complainant has alleged that Respondent is not commonly known by the Domain Name, nor made legitimate noncommercial or fair use of it. The Panel observes that Respondent is not affiliated or related to Complainant in any way, nor from the available record is Respondent generally known by the Domain Name or authorized by Complainant to use Complainant’s trademarks. Moreover, the evidence shows that the Domain Name is linked to a website displaying links to other property websites. In this case this use of the Domain Name, which is confusingly similar to Complainant’s well-known mark, does not provide a legitimate interest in it under the Policy.
The Respondent has not made any effort in the proceedings to demonstrate rights or legitimate interests. In the absence of any plausible explanation, the addition of mark LEGO to the word “property” appears to play deliberately on the Complainant’s trademark.
For all these reasons, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Finally, the Panel finds that Complainant has established bad faith registration and use under paragraph 4(b)(iv) of the Policy, based on several factors:
- the incorporation of Complainant’s well-known LEGO trademark into the Domain Name without any plausible explanation for doing so, causing confusing similarity. In this regard, the Panel finds the analysis in The California Milk Processor Board v. Mattia Fraulini, WIPO Case No. D2011-1077 to be applicable in this case as well. There, the panel found that the respondent’s registration of the domain name <gotmilkband.com> using “the combination “got milk” appears as more likely than not to be related to the various commercials and other advertising used by Complainant in its activity over the years […]. On the balance, the Panel is inclined to accept that Respondent has chosen to register and use the Domain Name being aware of Complainant's brand and of its value, and in attempt to benefit from it”.
- the inherent likelihood that the Domain Name will draw Internet users to the linked website containing other commercial property websites based on confusing similarity; and
- the fact that the Domain Name appears to be in use to generate click-through revenue through the provision of third-party commercial links.
All of this is evidence of Respondent’s bad faith registration and use of the Domain Name under paragraph 4(a)(iii) of the Policy for which, due to the lack of any Response from Respondent, there is no attempt at any rebuttal.
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 <legoproperty.com> be transferred to Complainant.
Christopher S. Gibson
Dated: July 9, 2012