WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Ibnu Tanjaya, PT Indoniaga Sejahtera

Case No. D2016-1931

1. The Parties

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

The Respondent is Ibnu Tanjaya, PT Indoniaga Sejahtera of Tangerang, Banten, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <legoreplika.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 22, 2016. On September 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the privacy shield in the Complaint and contact information in the Complaint. The Center sent an email communication to the Complainant on October 3, 2016 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 naming the Registrar disclosed registrant as the Respondent on October 3, 2016.

On October 3, 2016, the Center notified the Parties in both English and Indonesian that the language of the Registration Agreement for the disputed domain name was Indonesian. On the same day, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2016. In response to an email communication from the Respondent of October 27, 2016, the Complainant requested a suspension of the proceeding for 30 days in order to explore settlement. The proceeding was suspended on October 28, 2016. On November 23, 2016, the proceeding was reinstituted upon the Complainant’s request. The Center notified the parties about the commencement of panel appointment process on November 28, 2016.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on December 9, 2016. 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 in this proceeding, LEGO Juris A/S of Billund, Denmark, is the owner of the world-renowned LEGO trademark used in connection with the famous LEGO construction toys and other LEGO-branded products.

The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Indonesia.

The Complainant owns the LEGO mark, which enjoys thorough protection through many registrations thereof worldwide, Indonesia included.

The LEGO trademark is indisputably among the best-known trademarks in the world.

The Complainant is, inter alia, the owner of Indonesian trademark registration number IDM000208750 for the LEGO mark, granted on March 15, 2009, in class 28.

Moreover, the Complainant states that it is also the owner of thousands of domain name registrations corresponding to and/or containing the LEGO mark.

The disputed domain name <legoreplika.com> was registered on April 8, 2016. The corresponding website, “www.legoreplika.com”, contains a prominent header stating “Lego Replica” with the statement “Make Your World Possible” below it. The website also displays some of the Complainant’s products.

The Complainant’s trademark registrations predate the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the dominant part of disputed domain name comprises the term “lego”, which is identical to the registered trademark LEGO, and the generic term “replika”, which is presumably a misspelling of the term “replica” or means “replica” in Indonesian. The Complainant thus affirms that the disputed domain name is confusingly similar to the LEGO trademark. To this end, the Complainant quotes several UDRP decisions in which it was basically established that confusing similarity is generally recognized when well-known trademarks are paired with different kinds of generic prefixes and suffixes.

The Complainant further states that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name. In fact, the Complainant claims that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, and that it has not found anything else that would suggest that the Respondent has been using “lego” in any other way that would give it any legitimate rights in the name. No license, or authorization of any other kind, has been given by the Complainant to the Respondent to use the LEGO trademark.

Finally, the Complainant asserts that LEGO is a world-famous trademark, including in Indonesia where the Respondent resides. It is clear that the Respondent was aware of the rights the Complainant has in the trademark and of the value of said trademark, at the time of the registration. There is no connection between the Respondent and the Complainant. By using the disputed domain name to offer for sale, through an unauthorized website, LEGO products or possibly copies of the Complainants products, the Respondent is not engaging in legitimate noncommercial or fair use, but is misleadingly diverting consumers for his own commercial gain.

B. Respondent

The Respondent sent an email to the Center indicating that it has instructed its service provider to deactivate the disputed domain name and that it will not use the disputed domain name

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The 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.

6.1. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective cases.

The language of the Registration Agreement for the disputed domain name is Indonesian. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.

The Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Indonesian and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond formally to the issue of the language of the proceeding;

(d) the Respondent, in his communication to the Center’s notification of the Complaint and to the request concerning the language issue, replied in English and not in Indonesian. The Panel finds that this reply and its content constitute evidence that the Respondent has sufficient knowledge of English.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

The Panel has also taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Indonesian would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. Moreover, the proceeding would be unnecessarily delayed.

Having considered all the above matters, the Panel determines under paragraph 11(a) of the Rules that (i) it will accept the Complaint and all supporting materials as filed in English; and (ii) English will be the language of the proceeding and the decision will be rendered in English.

A. Identical or Confusingly Similar

The Complainant has established rights in the LEGO trademark.

The disputed domain name <legoreplika.com> consists of the LEGO mark, with the addition of the term “replika” (a presumable misspelling of the generic term “replica” meaning faithful copy) and the generic Top-Level Domain “.com”.

The addition in the disputed domain name of the term “replika” is not enough to avoid the confusing similarity with the renowned LEGO trademark.

This Panel agrees with the previous UDRP decisions, namely that confusing similarity is generally established when the domain name incorporates the complainant’s trademark in its entirety, and the addition of generic prefixes and suffixes does not avoid confusing similarity.

Therefore, the Panel finds the disputed domain name to be confusingly similar to the LEGO trademark in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below. In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name. Rather, the Respondent has indicated that it has requested deactivation of the disputed domain name to its provider and that it will not use the disputed domain name again.

Finally, this Panel agrees with the previous panel’s finding in Calvin Klein Trademark Trust and Calvin Klein Inc. v. Wang Yanchao, WIPO Case No. D2014-1413, that “the Complainant and its CALVIN KLEIN marks enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with men’s and women’s apparel, fragrances, accessories, and footwear products and is a registered trademark in many countries all over the world. Consequently, in the absence of contrary evidence from the Respondent, the CALVIN KLEIN marks [are] not one[s] that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant”.

The same concept applies to the present case: the LEGO mark is not one that traders could legitimately adopt for commercial use other than for the purpose of creating an impression of an association with the Complainant. This is especially true considering that the Respondent is using the domain name to offer LEGO products and/or copies of same.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the LEGO mark when it registered the disputed domain name.

In fact, the Complainant’s trademark is a fanciful name with no meaning. It has been registered and used for many decades and thus it long predates the disputed domain name’s registration. The Respondent’s knowledge of the LEGO mark is particularly obvious, given that the Respondent was offering for sale products bearing the LEGO mark at the disputed domain name. Therefore, the Panel finds that the Respondent knew of the Complainant’s marks and intentionally intended to create an association with the Complainant and its business at the time of registration of the disputed domain name.

Moreover the Panel notes the following:

The disputed domain name was registered through Domain Data Guard, a company offering a privacy registration service. As established in many previous decisions, the use of a privacy registration service is not per se an indication of bad faith. However, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. It is this Panel’s opinion that when it is combined with other elements such as the registration of a domain name corresponding to and/or containing a renowned third-party trademark, or not replying to a cease-and-desist letter, the use of a privacy shield is, on the balance of probability, to be considered an inference of bad faith registration and use of the disputed domain name.

In addition, an inference of bad faith registration and use of the disputed domain name is given by the fact that the Respondent has never replied to the Complainant’s cease-and-desist letter. Indeed, owing to the fact that the Respondent has not denied the assertions of bad faith made by the Complainant in the pre-action communications and in this proceeding, it is reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain names he would have responded to them.

As a matter of fact, the Respondent’s informal communication to the Center did not refute the Complainant’s claims, but on the contrary seemed to acknowledge them. In fact, the Respondent affirmed: that they have instructed the Registrar to deactivate (block) the disputed domain name; that the disputed domain name “is counter- productive” (in the sense that there is no buying or selling through the disputed domain name); and that he will not use the disputed domain name again.

Finally, the Panel finds the Respondent’s use of the disputed domain name to offer LEGO products and/or copies of same to be definitive evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.

Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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, <legoreplika.com>, be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: December 22, 2016