WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. harri akbar
Case No. D2012-1325
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is harri akbar of Bekasi, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <legoduplox.info> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2012. On June 28, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On June 29, 2012, GoDaddy.com, LLC 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 July 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2012.
The Center appointed Simon Minahan as the sole panelist in this matter on August 1, 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 Panel finds the following matters as fact for the purpose of this decision:
The Complainant, as part of the LEGO Group of companies which manufacture and sell “LEGO” and “LEGO Duplo” plastic construction toys, is the owner of the LEGO and DUPLO trade marks which are both widely in use around the world and, in the case of LEGO, has been since 1954.
The LEGO and DUPLO trade marks are the subject of many trade mark registrations internationally, including in the United States of America and throughout Europe and, in particular, in Indonesia (the place of registration of the disputed domain name) and Germany (the language of the reported website associated with the disputed domain name). The Complainant also holds over 2,400 registered domain names containing “LEGO” and/or “Duplo” in them.
In connection with trade in connection with the LEGO and DUPLO trade marks the LEGO Group has, since 2009, enjoyed a trade in excess of USD 2.5 billion annually.
The LEGO trade mark is, and has previously been held to be, a famous or well-known trade mark (e.g., LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680).
The Respondent is not an authorised reseller of the Complainant’s LEGO or DUPLO branded products and has never been authorised to use the Complainant’s trade marks.
5. Parties’ Contentions
The Complainant, as owner of the LEGO trade mark, contends (among other things) that:
a) the LEGO trade mark is an internationally famous trade mark;
b) the Respondent has no licence or authority from the LEGO Group to apply or make any use of the LEGO or the DUPLO trade marks;
c) the Respondent is to be taken to have known of the LEGO trade mark or both the LEGO and the DUPLO trade marks when it registered the disputed domain name <legoduplox.info> and has taken the famous LEGO trade mark and the DUPLO mark in order to “sponge” off them;
d) the Respondent has no legitimate interests in the LEGO mark and can acquire none arising from use in association with the disputed domain name in the circumstances (citing Drexel University v. David Brouda, WIPO Case No. D2001-0067);
e) the disputed domain name <legoduplox.info> is confusingly similar to its LEGO trade mark, the “duplox” and the “.info” gTLD suffixes, being generic and properly regarded as non-distinguishing;
f) there is no evidence of the Respondent being associated with or making any historical use of any LEGO trade mark or any DUPLO trade mark prior to registering the disputed domain name and associating it with the said website;
g) the LEGO mark being famous, there is no legitimate commercial use the Respondent could make of it (see e.g.: Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314) h) the Respondent’s use of the disputed domain name in connection with a website promoting LEGO product re-sold by “amazon.de” was a bad faith commercial diversion of traffic and trade;
i) the commercial gain contemplated by paragraph 4(b)(iv) of the UDRP need not be gain to the Respondent to qualify as a bad faith use (citing Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912), any likely commission for advertising “click through” would suffice as commercial gain;
j) the failure of the Respondent to respond to the Complainant’s cease and desist letter – and this proceeding – is itself evidence of bad faith, e.g.: News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel WIPO Case No. D2000-1598.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel finds the Complaint to be properly constituted and further finds it has jurisdiction under the UDRP.
Notwithstanding that the Respondent has not replied to the claims of the Complainant, the Complainant nonetheless has the onus of making out the grounds for transfer or cancellation under the UDRP.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s LEGO trade mark for the following reasons:
The disputed domain name comprises the Complainant’s famous LEGO and DUPLO trade marks and the suffix “x” or, as the Complaint contends, the LEGO mark with the suffix “duplox”. Viewed either way, the combination is suggestive of a variant or associated offering of the Complainant. As such the addition of the “x” to the “LEGO” and “duplo” combination does nothing to distinguish the disputed domain name from its obvious association with the Complainant’s marks or rescue the disputed domain name from confusing similarity to the trade mark or marks.
The Panel notes and accepts the Complainant’s submission that it is a long-established precedent that confusing similarity is generally recognized when well-known trade marks are paired up with different kinds of generic prefixes and suffixes, e.g., Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh WIPO Case No. D2004-0488, and the many other cases supporting the proposition.
It also notes this reasoning was applied in LEGO Juris A/S v. Private, Registration/ Dohe Dot, WIPO Case No. D2009-0753 where one of the disputed domain names was <legoduplostore.info> and the panel found that this domain name was confusingly similar to the trade mark LEGO.
Further, the presence of the gTLD identifier “.info” is to be disregarded as neutral and does not operate to distinguish the disputed domain name or to diminish or reduce confusion around it. See e.g.: Telecom Personal v. NAMZERO.COM, WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271.
B. Rights or Legitimate Interests
The Panel notes the evidence of the Complainant that it knows of no history of use by the Respondent or legitimate interests or rights to use the LEGO or DUPLO trade marks in the Respondent. It further notes and accepts that under paragraph 4(a)(ii) of the Policy this set of circumstances shifts the burden to establish those rights to the Respondent (see e.g.: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Time Out Group Ltd. v. Marc Jacobson, WIPO Case No. D2001-0317).
The Respondent has not discharged this burden and so the Panel finds it has no rights or legitimate interests in the disputed domain name.
Further the Panel accepts the Complainant’s contention that the Respondent knew of the LEGO trade mark when it registered the disputed domain name and that the Respondent can acquire no legitimate interests arising from use of the disputed domain name in such circumstances (citing Drexel University v. David Brouda, supra).
The second element of the Policy is established.
C. Registered and Used in Bad Faith
The Panel, as noted above, finds the LEGO trade mark is internationally famous or well-known. It further considers that commercial use of a trade mark in a domain name would, unless some justification were established, affect the rights of the trade mark owner. See Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc, supra.
The Panel finds that the Respondent registered the disputed domain name knowing of the Complainant’s trade marks and seeking to leverage off it by using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website. The Respondent has sought to do this by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website. In this circumstance, where the Respondent is not an authorised reseller and the website connects to the on-line store associated with <amazon.de> – which does not otherwise seem to have any formal association or affiliation with the Respondent – the Panel does not consider that the Respondent is using the disputed domain name to make a bona fide commercial offering of LEGO or DUPLO goods in any event. See LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913.
It is sustained in this finding by the fact that on the webpage associated with the disputed domain, where the statement “Copyright © 2012 LEGO Duplo” appears and is, in fact, untrue since the Complainant is not an author nor has it authorised the webpage in question.
The third element of the Policy is established.
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 <legoduplox.info> be transferred to the Complainant.
Date: August 6, 2012