WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. personal, Zainal Fanani
Case No. D2011-0474
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB of Stockholm, Sweden.
The Respondent is personal, Zainal Fanani of Sidoarjo, East Java, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <lego-8547.net> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2011. On March 15, 2011, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On March 15, 2011, eNom, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 16, 2011 providing the registrant and contact information disclosed by eNom, Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 17, 2011.
The Center verified that the Complaint together with the amendment to 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 March 18, 2011. The proceedings were suspended on March 29, 2011 and reinstituted on July 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2011.
The Center appointed Olga Zalomiy as the sole panelist in this matter on July 26, 2011. 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 a Danish company that makes and sells construction toys, computer hardware and software, books, videos and other products that are branded under the mark LEGO. The Complainant has provided evidence of ownership of several trademark registrations for LEGO, including European Community Trademark No. 000039800 for LEGO registered on October 5, 1998.
The Complainant is also the registered owner of over 1000 domain names which incorporate the LEGO mark, including: <lego.com>, which directs to the Complainant’s official website.
The disputed domain name <lego-8547.net> was registered on November 3, 2010. The disputed domain name consists of: 1) the word “lego”, 2) a hyphen, 3) a suffix “8547” and 4) a gTLD suffix “.net” The disputed domain name directs to a website offering LEGO 8547 product, the LEGO Mindstorm NXT 2.0. Robot, for sale. The Respondent’s website includes pictures of the original LEGO 8547 product.
Following the Respondent’s willingness to transfer the disputed domain name to the Complainant, the Complainant requested suspension of this proceeding on March 29, 2011. Then, on May 2, 2011 and on May 31, 2011, the Complainant requested to extend the suspension deadline. Following the Respondent’s failure to transfer the disputed domain name to the Complainant, the proceeding was resumed on July 8, 2011.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the disputed domain name is identical and confusingly similar to its LEGO trademark. In the Complainant’s view, the addition of a hyphen and a suffix “8547,” does not mitigate the confusion. Instead, the Complainant claims, the suffix will contribute to the confusion by suggesting a reference to the Complainant’s LEGO Mindstorms Nxt product named “LEGO 8547.” The Complainant claims that LEGO 8547 is a well-known product, because a Google search for LEGO 8547 returns 175,000 results. Further, the Complainant alleges that the addition of the top-level domain “.net” has no impact and is irrelevant for the purpose of determining confusing similarity.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that it has not found that the Respondent has registered any trademarks or trade names corresponding to the disputed domain name. The Complainant alleges that it has given no license or authorization of any kind to the Respondent to use the trademarks. Further, the Complainant alleges that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, because its website, which offers the Complainant’s LEGO 8547 product for sale, lacks an accurate description of the Respondent’s relationship with the Complainant. The Respondent’s website also contains sponsored links to “www.amazon.com”.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant claims that its LEGO trademark has status as a well-known mark. In the Complainant’s view, the increasing number of infringing domain name registrations indicates that the LEGO trademark has widespread reputation throughout the Community1 and around the world. Further, the Complainant states that the Respondent’s failure to respond to the Complainant’s December 12, 2010 cease and desist letter and its February 14, 2011 reminder to respond, is relevant in a finding of bad faith.
The Complainant alleges that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark, as to the source, sponsorship or affiliation. In the Complainant’s view, the fact that the disputed domain name resolves to the website containing links to “www.amazon.com”, supports its allegation.
The Complainant requests that the disputed domain name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In case of a respondent’s default, “the respondent’s default does not automatically result in a decision in favor of the complainant.”2 The complainant must establish “each of the three elements required by paragraph 4(a) of the UDRP.”3 Thus, to succeed on its claim, the Complainant must prove that: 1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) the Respondent has no “rights or legitimate interests in respect of the [disputed] domain name”; and 3) the disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(a) of the UDRP.
“Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”4
A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. Under paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. Here, the Complainant has provided evidence of ownership of multiple trademark registrations for LEGO, including European Community Trademark No. 000039800 for LEGO, filed on April 1, 1996, and registered on October 5, 1998, in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, and 42. Therefore, the Panel finds that the Complainant established its rights in the LEGO mark.
The test for confusing similarity should be a comparison between the mark and the disputed domain name.5 Application of the confusing similarity test under the UDRP […] involve[s] a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”6 A comparison of the LEGO trademark and the disputed domain name shows that they are confusingly similar. First, the disputed domain name incorporates the Complainant’s trademark in its entirety.7 Second, the Complainant explains that the significance of the “8547” digits in the disputed domain name refers to its popular LEGO 8547 product. The Complainant finds this argument plausible, because a copy of the Respondent’s website submitted by the Complainant shows that the only product offered for sale on the Respondent’s website is the Complainant’s LEGO 8547. Therefore, the addition of a hyphen and the four-digit suffix “8547” to the Complainant’s trademark LEGO in the disputed domain name does not dissipate, but adds to the confusion between the LEGO mark and the disputed domain name. Finally, it is well established that the addition of the top-level domain suffix “.net” or equivalent may be disregarded under the confusing similarity test, as it is a technical requirement of registration.8
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark LEGO in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in the disputed domain name.9 “Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.”10 Therefore, to satisfy this requirement, the Complainant may make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.11 If such prima facie case is not rebutted by the Respondent, then the Complainant will be deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the UDRP provides an open list of circumstances which demonstrates rights or legitimate interests of a respondent in a domain name. The Complainant alleges that none of such circumstances exist here. The Panel finds that the Complainant presented a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name for three reasons. First, the Respondent did not use the disputed domain name in connection with a bona fide offering of goods. Second, the Respondent uses the disputed domain name for commercial gain and to misleadingly divert consumers to its website. Third, the Respondent has not been commonly known by the disputed domain name.
The Complainant alleges, and the Respondent does not rebut, that there is no relation between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
There is no indication before the Panel that the Respondent is commonly known by the disputed domain name or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name. The Respondent’s initial willingness to transfer the disputed domain name to the Complainant upon commencement of this proceeding suggests that the Respondent has no rights in the disputed domain name. Furthermore, the Respondent uses the disputed domain name for commercial gain, because the Respondent’s website offers the Complainant’s LEGO 8547 product for sale and displays a link to a website of a commercial vendor, “www.amazon.com”.
The Panel, therefore, finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the UDRP requires “a positive finding that both the registration and use were in bad faith.”12 Paragraph 4(b) of the UDRP provides an open list of the circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” The Panel finds that circumstances present in this case correspond to those described in paragraph 4(b)(iv) of the UDRP. In particular, the Panel finds that “by using the domain name, you [a respondent] intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”13
(i). Registration in bad faith
The Panel finds it is likely that the Respondent knew about the Complainant’s widely-known LEGO mark and registered the <lego-8547.net> domain name in bad faith.
The LEGO mark has been found to be a widely-known mark on numerous occasions.14 In the Panel’s view, the existence of multiple attempts by third parties to trade on the Complainant’s goodwill is an indication of its fame.15 Several UDRP Panels have found the LEGO mark to be well-known.16 Furthermore, the Complainant presented a copy of the 2009/10 Official TOP 500 Superbrands rating provided by the Center for Brand Analysis, showing that LEGO was rated No. 8 among the top 500 brands in the world. Since the disputed domain name incorporating a well-known mark is registered by someone with no legitimate connection to the product, it is likely that the Respondent registered the disputed domain name in bad faith.
The Panel shares the view that “opportunistic bad faith” is shown when a domain name incorporating a well-known mark is registered “by someone with no connection with the product.”17 Because, the Respondent registered the disputed domain name, which incorporated the Complainant’s famous mark, and the Respondent has no connection with the LEGO 8547 product, the Panel finds that the disputed domain name was registered in bad faith.
Finally, the Complainant’s trademark was registered long before the Respondent registered the disputed domain name. The Complainant provided a copy of printout from a search of the WhoIs database of the Registrar and an extract from the Community Trademark database. The evidence shows that the Complainant registered its LEGO mark on May 10, 1998, twelve years prior to registration of the disputed domain name. Therefore, the Panel finds that this indicates that the Respondent must have known about the existence of the Complainant’s marks prior to registration of the disputed domain name.
Therefore, the Panel finds that the Respondent registered the disputed domain name in bad faith.
(ii). Use in bad faith
The Panel finds 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 mark as to the source, sponsorship, affiliation, or endorsement of the LEGO 8547 product for the reasons described below.
The Complainant claims that the disputed domain name is likely to confuse potential consumers into believing that the Respondent is affiliated with, or endorsed by, the Complainant. The Panel find this contention reasonable because the LEGO mark is incorporated in the disputed domain name in its entirety, and the only product that the Respondent’s website offers for sale (without authorization) is the Complainant’s LEGO 8547 product. In addition, the fact the Respondent failed to respond to the Complainant’s cease and desist letters, then indicated willingness to transfer the disputed domain name to the Complainant and finally failed to do so, supports finding of the use in bad faith.
Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith. As a result, the Panel finds that the Complainant established the third element of paragraph 4(a) of the UDRP.
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-8547.net> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Dated: July 28, 2011
1 In the Panel’s view, the word “Community” refers to the European Community.
2 See, paragraph 4.6. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”).
3 Id.
4 Paragraph 4.6. of the WIPO Overview, 2.0.
5 Paragraph 1.2. of the WIPO Overview, 2.0.
6 Paragraph 1.2 of the WIPO Overview, 2.0.
7 See, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.
8 See, paragraph 1.2 of the WIPO Overview, 2.0.
9 Paragraph 4(a)(ii) of the UDRP.
10 Paragraph 2.1 of the WIPO Overview, 2.0.
11 See, paragraph 2.1 of the WIPO Overview, 2.0.
12 Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
13 Paragraph 4(b)(iv) of the UDRP.
14 . LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260; LEGO Juris A/S v. Reginald Hastings Jr., WIPO Case No. D2009-0680.
15 See, e.g., LEGO Juris A/S v. An Bui, WIPO Case No. D2010-1169; LEGO Juris A/S v. XMGlobal Inc, WIPO Case No. D2010-1168; LEGO Juris A/S v. J.h.Ryu, WIPO Case No. D2010-1156; LEGO Juris A/S v. Satisfaction Ink, WIPO Case No. D2010-1016; LEGO Juris A/S v. Chris Parent, WIPO Case No. D2010-1015; LEGO Juris A/S v. Phoenix Productions, WIPO Case No. D2010-0798; LEGO Juris A/S v. Granite Real Estate/Domains by Proxy, Inc., WIPO Case No. D2010-0819; LEGO Juris A/S v. Heihachi.net, Heihachi Ltd WHOIS-PROTECTION, WIPO Case No. D2010-0821; LEGO Juris A/S v. Maho Jakotyc, WIPO Case No. D2010-0835; LEGO Juris A/S v. Online Toy Superstore, WIPO Case No. D2010-0839; LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840; LEGO Juris A/S v. Dealwave, WIPO Case No. D2010-0881; LEGO Juris A/S v. Isidore Ventures, LLC / WhoisGuard Protected, WIPO Case No. D2010-0660.
16 Id.
17 Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. See also, General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568.