WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Bolo, Bolodewo Center
Case No. D2016-2174
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Bolo, Bolodewo Center of Lampung, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <lego.host> is registered with Dotserve Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 26, 2016. On October 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2016, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 29, 2016.
The Center appointed William Lobelson as the sole panelist in this matter on December 14, 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 is LEGO Juris A/S, toy manufacturer and owner of the wordlwide known brand LEGO.
It has become aware of the registration (on May 29, 2016) and use of the domain name <lego.host>, which is routed to a sponsored links page, all related to its own industry, such as "Lego toys, Lego store, Educational toys", etc.
A cease and desist letter was served to the Respondent on June 29, 2016, and reminded on July 6 and July 15, 2016, claiming trademark infringement and requiring the Respondent to refrain from using the domain name, and transferring the same to the Complainant.
In the absence of response from the Respondent, the Complainant filed the present UDRP Complaint on October 26, 2016.
5. Parties' Contentions
The Complainant relies upon its trademark rights vested in the name LEGO and upon the notoriousness of the same, justified by opinion polls, international rankings and earlier UDRP decisions.
It contends that the disputed domain name is identical to, and confusingly similar with its trademark.
That the Respondent has no legitimate interest in the domain name, and that it has registered and uses the same in bad faith as it was necessarily aware of the Complainant's rights in the brand LEGO when it registered the disputed domain name <lego.host>; As it did not respond to the cease and desist letter that was served prior to filing the present Complaint; And as it uses the domain name to attract consumers to a pay-per-click page of sponsored links related to the very activity of the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has brought conclusive evidence that it owns trademark rights in the name LEGO on a worldwide scale, including in Indonesia where the Respondent has elected domicile.
The disputed domain name, <lego.host>, which entirely contains the Complainant's trademark, is identical to the Complainant's trademark.
The addition of the Top-Level Domain ("Tld") ".host" is irrelevant, as it results from a technical constraint, and in any event does not neither conceal the reproduction of the trademark LEGO nor mitigate the risk of confusion and association between the Complainant's trademark and the disputed domain name in the public's mind.
The Panel concludes that the disputed domain name is identical to the Complainant's mark and finds that the requirements of paragraph 4(a)(i) of the Policy are satisfied.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the following circumstances can demonstrate that the Respondent has rights to or legitimate interests in the disputed domain name:
(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has not acquired any trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant states that it is not related in any manner to the Respondent; That it has not authorized the latter to use or imitate its trademark; That the Respondent has not been known and has not run any bona fide business under the name LEGO, and that the Respondent does not own any trademark or trade name corresponding to the disputed domain name.
The Complainant further contends that the Respondent is making a non legitimate commercial use of the disputed domain name, but misdirects traffic to sponsored links for financial gain.
It is a consensus view of WIPO UDRP panelists (see, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") – and cases cited therein) that the overall burden of proof under paragraph 4(c) of the Policy rests with the Complainant, which is required to establish that the respondent prima facie lacks any rights to, or legitimate interests in, the disputed domain name, and that if the respondent fails to answer such case, the complainant is deemed to have satisfied its burden of production (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Respondent has not denied any of the Complainant's assertions and has not brought any element showing that it has a right or legitimate interest in the disputed domain name.
The Panel observes that the disputed domain name resolves to a webpage which does not seem to indicate that the Respondent would have any kind of trademark or trade name rights in the name LEGO and which does not contain any apparent reference to bona fide commercial use of aforesaid name in the course of trade, nor indicate that the Respondent has been commonly known by the disputed domain name.
The Panel considers that there is no element in the present case record which would justify a finding that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel is therefore satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, in accordance with the provisions of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the domain name has been used and registered in bad faith if:
(i) circumstances indicating that the Respondent has registered and has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent's website or location or of a product or service on its website or location.
The Complainant contends and justifies that its trademark LEGO benefits from a worldwide and longstanding notoriousness. The reputation and high awareness of the trademark LEGO have been confirmed by opinion polls, international rankings and by a large number of earlier UDRP decisions, cited and provided by the Complainant.
It makes little doubt in the Panel's mind that the Respondent necessary had in mind the Complainant's trademark when it sought to register the disputed domain name.
This is even more likely as the domain name is directed to a parking page of sponsored links which relate to the Complainant and its business, such as "Lego Harry Potter, Lego Store, Lego Toys, Educational Toys", etc.
The Respondent, which could not be unaware of the Complainant's rights in the trademark LEGO, registered the disputed domain name with a view to diverting to his own profit the notoriousness of the said trademark, and unduly taking a financial gain from a pay-per-click page of sponsored links.
The Panel is of the opinion therefore that the Respondent registered the domain name in bad faith.
Even though the Complainant put on notice the Respondent of its trademark rights and required that the domain name is granted back, the Respondent has pursued the use of the same.
This already is a first hint of use in bad faith.
Besides, as stated above, the Respondent uses the domain name for commercial gain. It routes the domain name, which is identical to the Complainant's trademark, to a sponsored links page related to the Complainant itself and its industry.
By so doing, the Respondent divert to his profit the notoriousness of the Complainant's trademark, and attracts Internet users to a pay-per-click page, thus making a financial gain as described under paragraph 4(b)(iv) of the Policy.
Consequently, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are satisfied.
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.host> be transferred to the Complainant.
Date: December 26, 2016