WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Sundari Pratama / Whoisguard Protected / Whoisguard, Inc.
Case No. D2015-0939
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Sundari Pratama of Tangerang, Banten, Indonesia / Whoisguard Protected / Whoisguard, Inc. of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <legoku.com> (the "Domain Name") is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 2, 2015. On June 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 4, 2015, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 8, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 9, 2015.
The Center verified that the Complaint, together with the amended 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 June 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 1, 2015.
The Center appointed Rodrigo Velasco Santelices, as the sole panelist in this matter on July 14, 2015. 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. The Panel finds that it was properly constituted.
4. Factual Background
The Complaint is based on the famous trademark LEGO which is registered in the European Union, the United States as well as in Indonesia. In support of the Complaint, the Complainant relied on a list of LEGO registered trademarks, including trademark records for the mark LEGO in the United States and Indonesia; as well as a copy of the trademark certificate for the mark LEGO in the European Union.
A search result from the WhoIs database shows that the Domain Name <legoku.com> was registered on December 29, 2014, to the Respondent, and that there exists a corresponding web site used to sell goods identified under trademark LEGO.
5. Parties' Contentions
The Complainant asserts to be the owner of LEGO and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products, which 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 asserts that the dominant part of the Domain Name comprises the term "lego", identical to the registered trademark LEGO, registered by the Complainant as trademark and domain names in numerous countries all over the world, in addition to the Indonesian generic term "ku", which means "my" in English, which does not detract in any way from the overall impression of confusing similarity.
The Complainant asserts that anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark LEGO of the Complainant. With reference to the reputation of the trademark LEGO, there is a considerable risk that the trade public will perceive the Domain Name either as a domain name owned by the Complainant, or that there is some kind of commercial relation with the Complainant. By using the well known trademark LEGO as a dominant part of the Domain Name, the Respondent exploits the goodwill and the image of the Complainant's trademark, which may result in dilution and/or other damage for the famous trademark.
The Complainant asserts that Respondent does not have registered trademarks or trade names corresponding to the Domain Name, or anything that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in such name. Consequently, the Respondent may not claim any rights established by common usage.
Further, the Respondent's failure to accurately disclose the relationship between the Respondent and the Complainant prevents the Respondent from establishing any rights or legitimate interests in the Domain Name pursuant to Oki Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001-0903.
The Complainant asserts that considering that LEGO is a world famous trademark and that the website connected to the 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 Domain Name registration. Thereby, it is obvious that what has motivated the Respondent to register the Domain Name is the fame of the LEGO trademark. Be that as it may, the Respondent cannot claim to have been using the trademark LEGO, without being aware of the Complainant's rights to it. The Respondent's use of the Complainant's trademarks to intentionally attract Internet users to the Respondent' website for commercial gain by creating a likelihood of confusion is in violation of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to Paragraph 4(a) of the Policy, it is necessary to examine three elements in order to assess the feasibility of the Complaint:
(i) The domain name holder's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The domain name holder has no rights or legitimate interests in respect of the domain name;
(iii) The domain name of the domain name holder has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The information provided by the Complainant, clearly demonstrates that the Domain Name <legoku.com> owned by the Respondent can be considered substantially identical or confusingly similar to the registered trademark LEGO.
In this regard, it is important to consider that the addition of the term "ku" does not diminish the degree of confusing similarity with the trademark owned by the Complainant, considering its meaning in Indonesian, which coincides with the domicile of the Respondent. As stated before, "ku" is the Indonesian word equivalent to "my" in English.
Accordingly, this Panel agrees with the claim made by the Complainant, in the sense that the mere addition of a generic term to a registered trademark is not enough for the Domain Name to be deemed different from the Complainant's trademark, or diminishes the chances of confusion arising from the similarity existing with the Domain Name.
Accordingly, this Panel finds that the Domain Name <legoku.com> is confusingly similar to the registered mark LEGO; therefore this requisite has been satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint, thus, it is not possible to know their version of the possible existence of rights or legitimate interests in the Domain Name; neither has it refuted the allegations made by the Complainant. Therefore, having been duly notified of the Complaint, the Panel interpreted the silence of the Respondent as a tacit acceptance of the claims made by the Complainant.
Moreover, the Panel has not found the concurrence of any of the circumstances mentioned by paragraph (c) of Article 4 of the Policy. Quite on the contrary, the Complainant has effectively demonstrated the following: to be the holder of a registered trademark and domain names, which are prior and substantially identical to the Domain Name, and that it has not licensed its use or exploitation of the Respondent.
Additionally, the Panel is satisfied that the Respondent cannot establish any rights or legitimate interests in the Domain Name by virtue of the previously mentioned Oki Data test for authorized or unauthorized resellers, given that the Respondent has failed to adequately disclose its relationship with the Complainant on its website.
Therefore, the Panel considers that the Complainant has also fulfilled the second condition required by the Policy, being unable to find the existence of any rights or legitimate interests in favor of the Respondent in connection with the Domain Name.
C. Registered and Used in Bad Faith
This third element requires the Complainant to prove that (1) the Domain Name was registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith.
The Domain Name incorporates the trademark LEGO.
This Panel finds that the Respondent had actual knowledge of the Complainant's mark LEGO and its rights therein at the time the Respondent registered the Domain Name and that the Respondent registered the Domain Name in bad faith. This finding is based on: (i) the Complainant's mark having a strong reputation and being widely known; (ii) the domain name comprising the Complainant's mark and the word "ku" which is generic in the language commonly used in the country in which the Respondent is addressed; (iii) the Respondent having a web site that used the Logo and trademark owned by the Complainant; and (iv) the above finding of the Respondent having no rights or legitimate interests in the Domain Name.
The Panel additionally finds that the Respondent is using the Domain Name in bad faith as it has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark.
Consequently, for all these reasons, the Panel finds that the Complainant has met the requirement of Paragraph 4(a)(iii) 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 disputed domain name <legoku.com> be transferred to the Complainant.
Rodrigo Velasco Santelices
Date: July 28, 2015