WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Telkom, Tjahjo Adiprabowo
Case No. D2012-0228
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Telkom, Tjahjo Adiprabowo of Bandung, West Java, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <legopyramid.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2012. On February 8, 2012, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On February 8, 2012, eNom, Inc. 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 February 14, 2012. On February 22, 2012, the Center received an email communication from the Respondent. The Complainant filed a request for suspension of the proceedings on February 23, 2012. On February 24, 2012, the Center confirmed that the proceedings would be suspended until March 23, 2012. Upon requests of the Complainant of March 20, April 24, and May 3, 2012, the proceedings were suspended further until May 10, 2012. Upon request of the Complainant of May 10, 2012, the proceedings were subsequently reinstituted on May 10, 2012. The due date for Response was thereafter extended to May 20, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on May 21, 2012.
The Center appointed Hariram Jayaram as the sole panelist in this matter on May 25, 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 Complainant, LEGO Juris A/S, is the owner of the LEGO trade mark and all other trade marks used in connection with the LEGO brand of construction toys and other LEGO branded products.
The disputed domain name was registered on February 4, 2011.
5. Parties’ Contentions
A. The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has right
The Complainant, based in Denmark is the owner of the LEGO trade mark and all other trade marks 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 trade mark rights, in the United States of America and elsewhere. The Complainant and its licensees (collectively “the LEGO Group of Companies” or “the LEGO Group”), through their predecessors, commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown remarkably. The revenue for the LEGO Group in 2009, was more than USD 2,8 billion. Its global market share rose from 4.8% at the close of 2009 to approximately 5.9% at end 2010. The Complainant has subsidiaries and branches throughout the world, and the LEGO products are sold in more than 130 countries, including in the United States. The Complainant is also the owner of more than 2,400 domain names containing the term “lego”. It is the strict policy of the Complainant that all domain names containing the word “lego” should be owned by the Complainant. The trade mark LEGO is among the best-known trade marks in the world, as a result of decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. The LEGO trade mark and brand have been recognized as being famous. The LEGO Group has expanded its use of the LEGO trade mark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive website with the domain name <lego.com>. The mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trade mark LEGO is considered in the whole community to be significant. Thus, the protection for LEGO mark goes far beyond toys and goods similar to toys. The dominant part of the disputed domain name <legopyramid.com> comprises the word “lego”, which is identical to the registered trade mark LEGO, registered by the Complainant as trade marks and domain names in numerous countries. The disputed domain name is confusingly similar to the Complainant’s world famous trade mark LEGO. The addition of the suffix “pyramid” is not relevant and will not have any impact on the overall impression of the dominant part of the disputed domain name, “lego”, which is instantly recognizable as a world famous trade mark. As the Complainant has a specific product named “LEGO Scorpion Pyramid”, the said suffix is rather fitted to strengthen the impression that the disputed domain name belongs to, or is affiliated with the Complainant. The addition of the generic top-level domain (gTLD) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the trade mark and the disputed domain name. Anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trade mark of the Complainant. With reference to the reputation of the trade mark LEGO, there is a considerable risk that the trade and public will perceive the disputed 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 trade mark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the trade mark, which may result in dilution and other damage for the Complainant’s trade mark. Persons seeing the disputed domain name, even without being aware of the content, are likely to think that the disputed domain name is in some way connected to the Complainant.
B. The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant has not found that the Respondent has any registered trade marks or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using “lego” in any other way that would give it any legitimate rights in the name. Consequently the Respondent may not claim any rights established by common usage. 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 trade mark LEGO. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. The Respondent registered the disputed domain name on February 4, 2011. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name “lego” at the time of the registration. It is rather obvious that it is the fame of the trade mark that has motivated the Respondent to register the disputed domain name. That is, the Respondent cannot claim to have been using LEGO without being aware of the Complainant’s rights to it. This, among other facts, proves that the Respondent’s interests cannot have been legitimate. 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 trade mark in order to generate traffic to a website with sponsored links. By doing this, the Respondent is misleading Internet users to a commercial website and consequently, the Respondent is tarnishing the trade mark LEGO. The Respondent is trying to sponge off the Complainant’s world famous trade mark. The website has displayed sponsored links for over 12 months and the website content has remained status quo. Referring to the above mentioned the Respondent has no rights or legitimate interest in respect of the disputed domain name.
C. The Domain Name was registered and is being used in bad faith
The trade mark LEGO in respect of toys belonging to the Complainant has the status of a well-known and reputed trade mark with a substantial and widespread reputation throughout the whole community and throughout the world. The awareness of the trade mark LEGO is considered, in the whole community in general, to be significant and substantial. The number of third party domain name registrations comprising the trade mark LEGO in combination with other words has skyrocketed in the last few years. The considerable value and goodwill of the mark LEGO is most likely a large contributor to this and also what made the Respondent register the disputed domain name.
The Complainant first tried to contact the Respondent on December 12, 2011 through a cease and desist letter. In the letter the Complainant advised the Respondent that the unauthorized use of the LEGO trade mark in the disputed domain name violated the rights in the trade mark LEGO, owned by the Complainant. The Complainant requested the immediate transfer of the disputed domain name and offered compensation for the expenses of registration and renewal fees (not exceeding out of pocket expenses). On December 19, 2011 a reminder was sent and on January 18, 2012, a final reminder was sent to the Registrant. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint under the UDRP.
As stated earlier the Respondent has chosen the disputed domain name based on a registered trade mark in order to generate traffic to a website with sponsored links. The website has not changed in nature before or after notice of the cease and desist letter. In this case the Respondent is using the Complainant’s trade mark to attract visitors to its website. The 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 the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following elements to obtain an order for the disputed domain name to be transferred to it:
- The disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
As the Respondent did not submit any formal Response and absent any exceptional circumstances, the Panel will, in accordance with paragraph 5(e) of the Rules, decide this dispute based on the Complaint.
A. Identical or Confusingly Similar
The Complainant is the registered owner of the LEGO trade mark. It has been used in a number of countries for a variety of goods and services by the Complainant. It manufactures and sells especially LEGO branded construction toys. Apart from the “.com” gTLD, the disputed domain name incorporates the Complainant’s LEGO trade mark in its entirety, followed by the suffix “pyramid” which relates to the Complainant’s product named “LEGO Scorpion Pyramid”.
Several UDRP decisions have confirmed that the addition of suffixes used to describe products or product lines sold by the complainant increases the likelihood of association between the domain name and the said trade mark. One of these cases is as follows:
In eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307, the panel observed that:
“It is a well-established principle that descriptive or generic additions to a trademark, and particularly those that designate the goods or services with which the mark is used, do not avoid confusing similarity of domain names and trademarks […]”
There have also been several cases involving domain names similar to the one at issue, including the case below:
In LEGO Juris A/S v. David Hudson, WIPO Case No. D2012-0060, the domain names <lego-robotics.net>, <lego-table.net>, and <legovideos.org> were found to be confusingly similar to the LEGO trade mark. In this case, the panel found that the use of generic words as suffixes in the domain names “are not sufficient to avoid confusing similarity.”
The Panel finds that the disputed domain name in this case is very similar to the domain names disputed in LEGO Juris A/S v. David Hudson. The LEGO mark is clearly identifiable in the disputed domain name and the use in the disputed domain name of a generic word used to identify one of the Complainant’s products serves to increase, rather than diminish, the likelihood of confusion between the disputed domain name and the Complainant’s LEGO trade mark.
The Panel agrees with the findings in the above decisions and concludes that the disputed domain name is confusingly similar to the Complainant’s LEGO trade mark.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent has no registered trade marks or trade names corresponding to the disputed domain name; the Respondent has not been using the word “lego” in any other way that would give the Respondent rights or legitimate interests to the name; the Respondent has not been given any license or authorization by the Complainant to use the LEGO trade mark; the Respondent is not an authorized dealer of the Complainant’s products; the Respondent has never had a business relationship with the Complainant; the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services; and the Respondent is using the LEGO trade mark to mislead Internet users to commercial websites. The Respondent, who did not file a formal Response, neither disputed these contentions nor provided information as to the Respondent’s rights or legitimate interests in the disputed domain name.
On the basis of the Complainant’s submissions and evidence at hand, the choice of words in the disputed domain name, and the apparent purposeful use of the disputed domain name to generate traffic to a website containing sponsored links, the Panel finds that the Respondent is not making use of the disputed domain name for a bona fide offering of goods and services, is not commonly known by the disputed domain name, and is not making a legitimate noncommercial or fair use of the disputed domain name.
In LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564, the panel found that:
“[…] the Respondent is not known by the Domain Name and, given the website to which the Domain Name resolves (being a website containing sponsored links), it cannot be said that there is legitimate noncommercial or fair use.”
The Panel agrees with the above decision and finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name resolves to a website which features sponsored advertisements and unauthorized links to websites selling the Complainant’s products. Such use of the disputed domain name and the registration of the disputed domain name show that the Respondent is well aware of the business of the Complainant and that the disputed domain name has been created with the intention to reap commercial benefit generated through confusion and customer diversion. Given the reputation of the Complainant’s mark, as well as the presence of sponsored links to websites selling goods using the LEGO mark and other children’s brands, it is implausible in this Panel’s view that the Respondent independently registered and used the disputed domain name without knowledge of the Complainant’s trade mark.
This is an obvious attempt to capitalize on the Complainant’s trade mark and, as alleged by the Complainant, to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
In LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Stop2Shop, G V, WIPO Case No. D2009-0784, the panel found:
“The fact that the disputed domain name resolves to a parking page confirms Respondent’s bad faith because it links to a website selling Complainant’s products but also competing ones. It is now well-established that the use of a parking page in this manner is strong evidence of bad faith.”
In the case at hand, the parking page featuring sponsored links at the disputed domain name directs users to sales websites displaying LEGO products as well as products from other children’s brands. The use of the LEGO mark in the disputed domain name appears calculated to divert users to the website based on the goodwill associated with the LEGO mark, while also threatening to divert toy sales away from the Complainant.
In the absence of any explanation or rebuttal by the Respondent, it is apparent from the Complainant’s submissions that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel finds that the Complainant has satisfied the requirements 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 <legopyramid.com> be transferred to the Complainant.
Dated: June 8, 2012