WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Sabiq Saputra
Case No. D2012-1647
1. The Parties
Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Sabiq Saputra of Bantul, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <billigelego.com> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 16, 2012. On August 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 2012, the Registrar 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 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 August 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 11, 2012.
The Center appointed Lawrence K. Nodine, as the sole panelist in this matter on October 3, 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 the LEGO trademark for construction toys and other products, which are sold in over 130 countries. The trademark LEGO is among the best-known trademarks in the world. The fame of the trademark has been confirmed in numerous prior UDRP decisions, including LEGO Juris A/S v. Rampe Purda/Privacy - Protect.org, WIPO Case No. D2010-0840 (”LEGO is clearly a well-known mark.”) and LEGO Juris A/S v. Reginald Lastings Jr, WIPO Case No. D2009-0680 (”LEGO is a mark enjoying high reputation as construction toys popular with children.”) Complainant owns numerous trademark registrations for the LEGO mark worldwide, including Registration Number IDM000208750 in Indonesia, the apparent country in which Respondent resides. Complainant and its licensees, through their predecessors, first used the LEGO mark in the United States of America to identify its construction toys in 1953.
Respondent registered the disputed domain name on April 24, 2012.
5. Parties’ Contentions
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
The dominant part of the disputed domain name comprises the word “lego”, which is identical to Complainant’s registered trademark.
The disputed domain name is confusingly similar to Complainant’s well-known LEGO trademark. The addition of the Danish word “billige” which translated to “cheap” in English, is not relevant and will not have any impact on the overall impression of the dominant part of the domain name. The addition of the top-level domain (TLD) “.com” also fails to alter the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant in determining whether a confusing similarity exists between the LEGO trademark and the disputed domain name. Any Internet user who sees the disputed domain name will conclude that the disputed domain name is associated with Complainant because the use of the word “lego” creates an obvious association with Complainant.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name and has not been using the domain name in any way that would give him any legitimate rights in the name. Complainant has given no license or authorization to Respondent to use the LEGO trademark. Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant.
Respondent’s interest in registering the disputed domain name was not legitimate. Due to the fame of the LEGO trademark, Respondent cannot claim to have registered the disputed domain without being aware of the trademark.
As of August 16, 2012, the filing date of the Complaint, Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services. Instead Respondent has intentionally registered the disputed domain name based on the fame of Complainant’s trademark in order to generate traffic to an online shop, which provides for the sale of Complainant’s products through sponsored links to “www.amazon.com”. These sponsored links to “www.amazon.com” sell products of both Complainant and its competitors. The use of a disputed domain name to sponsor links is not a bona fide use. Though Respondent did not display the LEGO logo on his website, Internet users could still be confused by visiting the website.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
The trademark LEGO in respect of toys belonging to Complainant has a well-known and reputed status with a substantial and widespread reputation throughout the world.
Complainant first tried to contact Respondent on May 18, 2012 through a cease and desist letter requesting immediate transfer of the disputed domain name and offering compensation for the expenses of registration and renewal fees (not exceeding out of pocket expenses). Respondent replied by saying that he was just selling Lego products and asking what to do next. Complainant sent a detailed letter explaining how to transfer the disputed domain name. Respondent stated that he would not relinquish the disputed domain name without compensation, but he also stated he would terminate the site. After several reminders from Complainant, Respondent did not terminate the site.
Since the time of registration, the website at the disputed domain name has been used to host Amazon ads from which Respondent derives income when an Internet user clicks the link. Respondent has added the phrase “Copyright © 2011 Billige Lego,” creating the impression that the website is endorsed or created by Complainant. Consequently, Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website. Additionally, bad faith can exist regardless of whether Respondent is deriving revenue from disputed domain name.
It is highly unlikely that Respondent was not aware of the rights Complainant owns in the LEGO trademark and the value of said trademark, at the time he/she registered the disputed domain name, particularly since Respondent offers LEGO products.
Consequently, Respondent should be considered to have registered and been using the disputed domain name in bad faith.
Respondent did not respond to Complainant’s contentions. Because of Respondent’s default, the Panel may accept as true the factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”).
6. Discussion and Findings
A complainant must prove that: (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 in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. (Policy, paragraph 4(a).)
A. Identical or Confusingly Similar
Given Complainant’s long-standing registrations and extensive use of the LEGO trademark worldwide and particularly in Indonesia, where Respondent appears to reside, the Panel finds that Complainant has trademark rights in the LEGO mark.
The Panel also finds that the disputed domain name is nearly identical to or confusingly similar to Complainant’s LEGO mark. The disputed domain name incorporates Complainant’s entire trademark and differs from Complainant’s registered LEGO mark only by adding the non-distinctive wording “billige,” a Danish word that translates to “cheap” in English. It is well-established that the addition of generic or highly descriptive wording is “typically regarded as insufficient to prevent threshold Internet user confusion.” WIPO Overview of WIPO Panel Views on the Selected UDRP Questions, Second Edition, (“WIPO Overview, 2.0”) paragraph 1.2. Prior UDRP panels have also consistently found that the mere addition of non-distinctive wording to well-known marks in domain names does not adequately alter the impression of the domain name, and therefore will likely remain confusingly similar for purposes of the Policy.
The Panel finds the term “cheap” to be descriptive and non-distinctive, and thus, the term does not alter the overall impression of the disputed domain name. See Guccio Gucci S.p.A. v. Huangwensheng, Shirley, wangliang, xiaomeng xiexun, jiangxiuchun, WIPO Case No. D2012-0342 (“Thus, the Panel finds that the use of these words such as … ‘cheap’ … is not sufficient to negate the confusing similarity between the disputed domain names and the trademark”); F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0057 (“The Panel further finds that the Disputed Domain Name, which differs from the mark only by virtue of the inclusion of a hyphen and the prefix ‘cheap’, is confusingly similar to Complainant’s mark.”).
The Panel accepts that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights. Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
In order for Respondent to demonstrate rights or legitimate interests in the disputed domain name, it must show:
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name. Further, Complainant has never licensed or other otherwise permitted Respondent to use its LEGO trademark or to apply for any domain name incorporating the mark. In fact, there is no known relationship between Complainant and Respondent.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate non-commercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services.
A complainant has the burden to prove that a respondent lacks rights or legitimate interests in a disputed domain name. National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147. Because it is difficult to prove a negative assertion, UDRP panels have held that a complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See WIPO Overview 2.0, paragraph 2.1. The ultimate burden of proof, however, remains with complainant. Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141. The Panel finds that the above facts establish a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. Moreover, Respondent has not rebutted such a prima facie showing. Several recent UDRP decisions have held that a party does not qualify for the rights accorded a legitimate reseller if the party merely promotes a brand and then redirects re-directs Internet visitors to “www.amazon.com” for the potential completion of a sale. See LEGO Juris A/S v. Howtogetrealmoneyonline.com, WIPO Case No. D2012-0832. In this case, the promoting website is not in fact a reseller and the Panel finds the Policy factors favoring legitimate resellers do not apply. This is especially true here where Respondent has not attempted to comply with the minimum requirements for legitimate reseller rights by including a disclaimer.
The Panel accordingly finds for Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
Complainant’s allegation of bad faith is not contested. Also, it is highly unlikely under the circumstances that Respondent was unaware of Complainant’s trademark rights when Respondent registered the disputed domain name on April 24, 2012, when the LEGO mark has been continuously in use worldwide for more than 59 years prior thereto. Moreover, aside from the fact that Complainant owns a registration for the LEGO mark in Indonesia, where Respondent appears to reside, Respondent certainly was aware of Complainant’s trademark rights evidenced by the offering of LEGO products.
Under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Paragraph 4(b)(iv) of the Policy.
In the present case, it is alleged that Respondent is using the disputed domain name to generate traffic to an online shop with links to shopping sites for toys manufactured by competitors as well as LEGO products. Again, several recent UDRP decisions have held that it satisfies the bad faith requirement to show that Respondent is redirecting to affiliate sites such as “www.amazon.com” where competitive products are offered. LEGO Juris A/S v. Howtogetrealmoneyonline.com, supra; LEGO Juris A/S v. David Hudson, WIPO Case No. D2012-0060; LEGO Juris A/S v. DomainsByProxy.com / DBA David Inc, WIPO Case No. D2011-1288; Lego Juris A/S v. Adry Asry, WIPO Case No. D2011-1224; LEGO Juris A/S v. James Mills, WIPO Case No. D2011-1000; LEGO Juris A/S v. Paul Cotten, WIPO Case No. D2011-1050; Merck & Co., Inc., Schering Corporation v. Apiwat Ngunbunsri, WIPO Case No. D2011-0050; LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913; Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434. Indeed, another panel has already decided that <cheaplego.net> should be transferred for similar reasons. LEGO Juris A/S v. Goodsteed Limited, WIPO Case No. D2010-0797.
Accordingly, the Panel finds that the disputed domain name has been and is being used in bad faith. Therefore the Panel finds that Complainant has proven the third and final element of the Policy.
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, <billigelego.com> be transferred to Complainant.
Lawrence K. Nodine
Dated: October 21, 2012