WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. I Made Irawan, - DRI-110993

Case No. D2014-1538

1. The Parties

The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is I Made Irawan, - DRI-110993 of Jakarta, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <lego-shopping.com> is registered with CV. Rumahweb Indonesia (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2014. On September 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On September 16, 2014, the Center transmitted an email to the Parties in both the Bahasa Indonesian and English languages regarding the language of the proceedings. On September 18, 2014, the Complainant submitted its request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings.

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 September 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2014.

The Center appointed Andrea Dawson as the sole panelist in this matter on October 27, 2014. 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, LEGO Juris A/S, is the owner of trademark LEGO and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products.

The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in Indonesia and elsewhere.

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.

The Complainant is also the owner of more than 2,400 domain names containing the term “lego” (Annex 8).

The disputed domain name <lego-shopping.com> was registered on May 20, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant states that the dominant part of the disputed domain name comprises the term “lego”, identical to the registered trademark LEGO, registered by the Complainant as trademarks and domain names in numerous countries all over the world. In addition to the trademark LEGO, the disputed domain name also comprises the suffix “-shopping”. The Complainant further adds that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes.

The Complainant claims that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Neither has the Complainant found anything that would suggest that the Respondent has been using the disputed domain name in any other way that would give them any legitimate rights. Consequently, the Respondent may not claim any rights established by common usage.

The Complainant further states that, it is also clear, that no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO.

The Complainant claims that the Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a website offering LEGO products.

The Complainant also claims that the Respondent is using the disputed domain name in order to mislead Internet users to its commercial website and consequently, the Respondent is tarnishing the trademark LEGO.

The Complainant finally states that considering that LEGO is a world famous trademark and that the website connected to the disputed domain name displays the Complainant’s famous logo and LEGO products, it is clear that the Respondent knew of the Complainant’s legal rights in the name LEGO at the time of the registration.

The Complainant tried to contact the Respondent on June 16, 2014, through a cease and desist letter sent by email and advised the Respondent that the unauthorized use of the LEGO trademark within the disputed domain name violated the Complainant’s rights in said trademark. The Complainant kindly asked the Respondent to remove the misleading content and requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees, but no response was received by Complainant to date.

The Complainant finally considers that the disputed domain name is currently connected to an unauthorized website offering LEGO products, thereby, it is clearly stating a commercial purpose. The Complainant’s logo is prominently displayed on the website, contributing to create a confusing similarity with the Complainant.

The Complainant finally indicates that LEGO is a famous trademark worldwide, including in Indonesia where the Respondent resides. The Complainant contends that the Respondent was aware of the rights the Complainant has in the LEGO trademark and the value of said trademark at the point of the registration and that there is no connection between the Respondent and the Complainant. The Complainant further alleges that by using the disputed domain name the Respondent is not making a legitimate noncommercial or fair use, but is misleadingly diverting consumers for its own commercial gain, tarnishing the Complainant’s trademark in the process.

Consequently, by referring to the above-mentioned, the Complainant contends that the Respondent should be considered to have registered andto be using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceedings

Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement, unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise. The Complainant has requested that English be the language of the proceeding. The Respondent has not commented regarding the language of the proceeding. The website at the disputed domain name is entirely in English, which shows that the Respondent is able to or has the means to understand English. The Respondent did not raise any objection to the Complaint being filed in English.

Taking the foregoing into account, the Panel concludes that it is fair that English is the language of the proceedings.

6.2. Discussion and Findings

In order to succeed in its claim, a complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The Complainant has been able to demonstrate that it has rights to the trademark LEGO.

The disputed domain name consists of the term “lego”, with the addition of the generic term “shopping”. As indicated by the Complainant, previous UDRP panels have found that the mere addition of a generic term to a trademark is not sufficient to eliminate the confusing similarity with the mentioned trademark.

Furthermore, the term “shopping” in this particular case can be viewed as a simple indicator of the service offered by the Respondent; this is the sale of LEGO products through the disputed domain name. Consequently, the addition of such term instead of providing certain distinctiveness creates a further confusion with the Complaint’s trademark.

For the above-cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

This case raises the question of whether a reseller/distributor of trademarked goods can use the trademark at issue in its domain name, or whether it has rights or legitimate interests in a domain name that contains such trademark under the Policy.

The majority of panelist is of the opinion that a reseller or distributor can be making a bona fide offering of goods and services and thus has a legitimate interest in the domain name if its use meets certain requirements. These requirements have been expressed very clearly in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 <okidataparts.com>.

These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The Panel also finds it important to point out that this Panel subscribes to the view that not only authorized but also unauthorized resellers may fall within such Oki Data principles.

The Complainant has stated that the Respondent is not an authorized reseller or distributor of the Complainant’s LEGO products, and that the Complainant has not authorized the Respondent to use its trademarks. So it is clear that we are in the presence of an unauthorized reseller of products. However as mentioned above, the Panel is of the opinion that this is not sufficient evidence on its own to claim that the Respondent does not have a legitimate interest in the disputed domain name.

There is no dispute concerning the Respondent’s status, an unauthorized LEGO reseller, and that the Respondent has been offering LEGO products since prior to the commencement of this case. The only issue for the Panel now is whether the Respondent’s offerings may be characterized as bona fide.

In this case, the Respondent is offering LEGO products for sale, and is using the website at the disputed domain name to promote only LEGO products. However, the Respondent does not adequately disclose the relationship with the Complainant, and does therefore convey the false impression that the Respondent is may be an authorized reseller of the Complainant’s products. Furthermore, there is no visible disclaimer stating that the website is not endorsed or sponsored by the Complainant to explain the non-existing relationship with the Complainant; instead, a statement is displayed under the “About Us” tab stating the following:

“RENO was established in the year 2008 to serve the needs of LEGO enthusiasts around the globe. Today, RENO supplies individuals, businesses, and schools with sets, minifigures, instructions, and everything else LEGO branded.

RENO are distibutor or LEGO products. We professionally supply millions of LEGO® parts, sets, instructions, minifigures and anything else LEGO® related to kids, kids at heart, corporations, resellers, collectors and schools. We take pride in taking stance with the original slogan at The LEGO Group, “Only the best is good enough”.

There’s no project too small or too large for RENO. Whether you need fast and responsive sourcing support to complete convention event displays or require large volume supply to realize the production of custom sets, we are there for you! If you are looking for any kind of Lego products is an excellent place to begin your search.”

Had the Respondent clearly disclosed its relationship with the Complainant by indicating that it is an unauthorized reseller or that it is not sponsored or endorsed by the Complainant, one could have considered that the Respondent was making a bona fide offering of goods. However this is not the case, but quite the contrary, the Respondent is declaring in its “about us” information that it is a distributor of LEGO products and that it takes pride in the LEGO slogan leading users to believe that it is part of the LEGO group as mentioned in such declaration.

The above does not constitute a bona fide offering of goods; one cannot consider the Respondent to be in good faith, it is clearly deceiving the users by creating the impression that it is part of the LEGO group when it is not.

Finally, having been given the opportunity to demonstrate that the Respondent is effectively a reseller of the Complainant’s products or to explain the reason behind its “about us” declaration, it did not make use of such opportunity. The Panel considers that the Complainant made an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and therefore has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.

One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

In this particular, the Panel notes that the Respondent resells LEGO products at the website to which the disputed domain name resolves. One might conclude that there is no bad faith in such offering in principle, however when doing so the Respondent has intentionally created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site by stating in the “about us” tab that it is a distributor of LEGO products implying that it forms part of the LEGO group when the Complainant has confirmed that this is not the case.

Had the Respondent clearly disclosed its relationship with the Complainant, indicating that it is not an authorized reseller or that it is not sponsored or endorsed by the Complainant, Internet users would be aware and mindful that the Respondent was not related to the Complainant and had full knowledge of the risk they were taking when doing business with the Respondent.

Consequently, one cannot consider that the Respondent has proceeded in good faith, but on the contrary, the Respondent registered and used the disputed domain name in bad faith by deceiving its customers into believing that it is sponsored by the Complainant and it forms part of the LEGO group.

In addition to the above, the Complainant sent a cease and desist letter to the Respondent, indicating that it is the owner of the LEGO trademark and requesting to cease in the use of the disputed domain name. The Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees; however the Complainant received no response to date.

It is important to clarify that the Panel considers that there is nothing per se illegal in the offering of legitimate third-party products or services. Such offering of goods or services must always be done in an honest and bona fide manner, and not by deceiving customers into believing that one is sponsored or endorsed by the legitimate trademark owner of such goods or services, especially since Internet users conduct such transactions via technological means in which they are generally likely to trust that the offer of such goods or services is legitimate.

In view of the above, it is clear to the Panel that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website.

For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith; therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled.

7. Decision

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 <lego-shopping.com> be transferred to the Complainant.

Andrea Dawson
Sole Panelist
Date: November 12, 2014