The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is eres syafei of jawa barat, Indonesia.
The disputed domain name <lego-harrypotter-hogwarts-castle.com> (“Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2011. On September 20, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On September 20, 2011, GoDaddy.com, 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 September 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2011.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on November 4, 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.
The Complainant is the registered owner of the following trademarks, between many others and in many other countries through out the world, which are used for the purpose of conducting its business:
|
Country |
Trademark |
Class |
Registry number |
|
USA |
LEGO |
28 |
1018875 |
|
LEGO |
28 |
2245652 | |
|
Indonesia |
LEGO |
28 |
430237 |
|
Denmark |
LEGO |
28 |
6041954 |
|
LEGO |
14, 16, 20, 24, 25, 28, 3, 38, 41, 42, 9 |
CTM 39800 |
The Complainant has demonstrated that the term “LEGO” is a well-known trademark all over the world.
The Domain Name was registered on November 9, 2010.
The Complainant claims that it is the owner of the well-known trademark LEGO which is confusingly similar to the disputed Domain Name. In support of such claim, the Complainant reproduces a worldwide list of its extensive trademarks. The addition component “harry-potter-hogwarts-castle” does no detract from confusingly similarity but to enhance it, since there is a business relationship between the respective owners of the trademarks LEGO and HARRY POTTER. For such allegation, the Complainant reproduces a License Agreement with Warner Bros. Consumer Products Inc. dated March 18, 2010, authorizing the Complainant to use Warner´s trademark HARRY POTTER.
In respect to the Complainant´s contentions that the Respondent’s lack of rights or legitimate interests in the disputed Domain Name, the Complainant declares that the Respondent is not the owner of any trademark corresponding to the Domain Name. Furthermore, the Complainant has not licensed or otherwise authorized the Respondent the use of its trademarks as a Domain Name and deny any relationship between the Complainant and the Respondent.
Finally, the Complainant contends that LEGO is a famous trademark worldwide then the Respondent had to be aware of the rights the Complainant has in the trademark and the value of such trademark at the moment of the registration. Additionally, the Complainant also asserts that the mere registration of a Domain Name does not give the owner a right or a legitimate interest in respect of the Domain Name. The Respondent is using the Domain Name to divert consumers for his own commercial gain insofar the Domain Name is used for a website to offer visitors sponsored links to other websites in order to generate pay-per-click advertising revenues for the benefit of the Respondent. Consequently, the Respondent is using the Domain Name to intentionally attempt to attract, for consumer gain, Internet users to a website, by creating a likelihood of confusion with the Complainant´s mark as to the source, sponsorship, affiliation or endorsement of its website.
The Respondent did not reply to the Complainant’s contentions.
In order for the Panel to decide to grant the remedy of transfer of a Domain Name to the Complainant under the Policy it is necessary that the Complainant must prove, as required by paragraph 4(a) of the Policy, that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a response, Paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under Paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under Paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the Respondent, i.e. the Domain Name registrant, as a condition of registration. Therefore, the Respondent should not gain any evidentiary benefit from its failure to participate.
Thus where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. (MaryLynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; State of Wisconsin v. ProLife Domain, Inc., WIPO Case No. D2003-0432; La Caixa D’Estalvis I Pensions de Barcelona v. José Antonio Bernal WIPO Case No. D2006-1637). Here, the Respondent has defaulted, and it is appropriate in the present case for the Panel to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent.
The Complainant has made continuous use of its registered and incontestable trademark LEGO in most jurisdictions all around the world thus, has spent much time, money and effort promoting the trademark in these countries and has established significant goodwill.
The Domain Name incorporates Complainant’s entire trademark LEGO so the Domain Name is confusingly similar to the Complainant’s registered and incontestable trademark. The addition of another trademark HARRY POTTER to the Domain Name does not in this case preclude a finding of confusing similarity. Further, in the present case, there is evidence enough of the business relation between the respective owners of such trademarks. Consequently, the Complainant is to be considered as legitimately acting on behalf of Warner Bross on the role of licensee in respect the Domain Name. And this should be taken into account in respect the remedies required in case the Complainant succeeds in this case.
The Panel therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Panel finds that the Complainant has made a prima facie showing that Respondent does not have rights or legitimate interests in the Domain Name within the meaning of Paragraph 4(a) of the Policy.
Indeed, the Respondent has filed no response to the Complaint, and thus has made no assertion of rights or legitimate interests in the Domain Name as provided for in paragraph 4(c) of the Policy. As stated by previous and numerous UDRP decisions of the burden of production shifts where the Complainant presents a prima facie showing, as has occurred in the instant case.
No evidence that is before this Panel suggests that the Respondent has any rights or legitimate interests in the Domain Name: The Respondent is not known by the Domain Name, nor the Complainant has granted any license or authority to use the Complainant´s trademark, neither the Respondent has made a legitimate noncommercial or fair use of the Domain Name as it appears to the Panel that the Respondent profits from click-through revenues generated from its website´s offering of advertising and hyperlinks which are generated through an advertising aggregation service.
The Panel thus finds that the Respondent does not have any rights or legitimate interests in the Domain Name in question.
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent´s registration and use of the Domain Names in bad faith. By not submitting a response, the Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the Domain Name in bad faith.
Moreover, and in respect of the bad faith at the moment of the registration, the Complainant has established that its LEGO trademark has been used extensively throughout the world and that the Complainant's trademark is famous and valuable. Accordingly, it is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark LEGO or that the Domain Name might be of some type of economic advantage.
In respect the use of the Domain Name the Respondent is deriving a financial benefit from web traffic diverted through the Domain Name to linked website. The Complainant has brought evidence to the case that the Respondent uses the Domain Name to link to Amazon or to display information about the Lego Harry Potter Hogwarts Castles. Furthermore, this Panel has checked the current use of the Domain Name. Accordingly, it resolves to a landing page showing numerous links to websites offering toys and products in competition with the Complainant. The Respondent is not in the business of offering such products, but receives fees when such links are clicked. This is a violation of paragraph 4(b)(iv) of the Policy and constitutes bad faith registration and use. ACCOR v. Steve Terry/North West Enterprise, Inc., WIPO Case No. D2006-0649.
On the other hand, the Complainant attempted to solve the incident though a cease and desist letter on November 25, 2010. The Respondent initially answered requesting for some reimbursement. Nevertheless, after that e-mail the Respondent did not reply, so two others reminders requesting for settlement were sent on June 14 and August 24, 2.011. Notwithstanding, the Respondent did not answer or transfer the Domain Name. Therefore, to this Panel the Respondent’s failure to reply is found to be a factor compounding bad faith.
The Panel therefore also accepts that the Respondent has intentionally attracted Internet users to its websites or other on-line locations for commercial gain through confusion with the Complainant’s trademark as to the source, affiliation or endorsement of the website or location.
Thus, the Panel finds for the Complainant on this third element of the test under 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 Domain Name, <lego-harrypotter-hogwarts-castle.com> be transferred to the Complainant.
Manuel Moreno-Torres
Sole Panelist
Dated: November 11, 2011