The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is WhoisGuard of Los Angeles, California, United States of America (“US”) / yusup 19831, kpp of Pekan, Riau, Indonesia.
The disputed domain name <legomegastore.com> is registered with eNom (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2013. On May 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2013, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 27, 2013, communication] 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 amendment to the Complaint on May 27, 2013.
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 May 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2013.
The Center appointed Keita Sato as the sole panelist in this matter on June 21, 2013. 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, LEGO Juris A/S, is a limited company incorporated in Billund, Denmark. The Complainant has registered trademarks in many countries, such as the LEGO word mark registered for class 28 in Denmark on May 1, 1954 (registration number 604-1954), in Indonesia on April 24, 1979 (registration number IDM000208750), in Malaysia on May 25, 1964 (registration number M41 891), in Singapore on May 23, 1964 (registration number T6435007D), and so on.
The disputed domain name was registered on February 28, 2013.
The Complainant states that it has registered the LEGO trademark in many countries and over 1,000 domain names containing the term “LEGO”. It follows the strict policy that all domain names containing the word “LEGO” should be owned by the Complainant. Also it alleged that LEGO is among the best-known trademarks in the world, since it sells products in more than 130 countries and the LEGO brand is ranked as number 31 by Superbrands’ official top 500 Superbrands for 2012. The Complainant states that the disputed domain name is confusingly similar to the Complainant’s world-famous trademark LEGO, since the addition of “mega” and “store” as suffixes to the dominant part LEGO will not have any impact on the overall impression.
The Complainant also states that no license or authorization to use the trademark LEGO has been given to the Respondent. Therefore, the Complainant insists that the Respondent has no rights and no legitimate interests in the disputed domain name.
Further, the Complainant states that the Respondent has registered and is using the disputed domain name in bad faith, since it is highly unlikely that the Respondent was not aware of the rights the Complainant has in the LEGO trademark and the value of said trademark, at the point of the registration, and by using the disputed domain name the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain.
For these reasons, the Complainant requests transfer of the disputed domain name to the Complainant as a remedy.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name be cancelled or transferred:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant has registered trademarks for LEGO, as explained in Section 4 above. Although the second-level portion of the disputed domain name “legomegastore” and the trademark LEGO registered by the Complainant are not identical, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. The reason is:
As prior UDRP panels have found “there are several UDRP decisions stating that confusing similarity, for the purpose of the Policy, is established when a domain name wholly incorporates a complainant’s mark and only adds a generic word along with” (F. Hoffman-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0694). The word “store” is an ordinary descriptive word, and the word “mega” is generally used to describe the greatness of the word that is prepended (the UDRP panel in Stanworth Development Limited v. Dana Paulson, WIPO Case No. D2009-0259 found that the domain names <bigjackpotcity.com> and <megajackpotcity.com> are confusingly similar to complainant’s trademark JACKPOT CITY, since “[t]he mere addition of descriptive terms such as “big” or “mega” to the JACKPOT CITY mark does not distinguish the Disputed Domain Names”. The Panel finds that addition of the descriptive terms “mega” and “store” to the Complainant’s trademark does not mitigate the confusing similarity between the disputed domain name and the Complainant’s trademark.
The Panel thus finds that the first requisite element of the Policy is made out.
As the Complainant argues, the Complainant has never given the Respondent permission or authorization to use trademark LEGO, since the Complainant follows a strict policy that all domain names relating to LEGO be registered only by the Complainant. The Complainant furthermore contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, and that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has therefore made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Prior UDRP panels have recognized that the respondent may have, for the purpose of paragraph 4(a)(ii) of the Policy, a legitimate interest in the domain name even if the respondent has not been authorized to use the trademark in the domain name (see, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). However, the Respondent did not argue on this point, since the Respondent failed to submit a Response. The Panel could also not find any indication that the Respondent’s use would fall within the Oki Data principles, or would otherwise give rise to rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the second element of the Policy is made out.
First, the Panel finds that the Respondent registered the disputed domain name in bad faith. As the Complainant stated, the LEGO mark has been registered by the Complainant long before the date of the registration of the disputed domain name. The trademark registrations cover many countries, including Indonesia which is the location of the Respondent. Also, the Respondent’s website might have a connection with Malaysia or Singapore, where the official language is Bahasa Melayu (Malay language), since the description “toko baju online” is found in the last line of the Respondent’s website (“toko baju” means “clothing store” in English). And the hyper-linked website1 with a description “toko baju” has a description “Ayo Belanja!” in Bahasa Melayu at the top right corner, which means “Come, spend!” in English. As explained above, the Complainant registered the LEGO trademark in Malaysia and Singapore. Under these circumstances, the Respondent knew or should have known about the existence of the LEGO trademark at the time of the registration of the disputed domain name. The Panel thus concludes the Respondent has registered the disputed domain name in bad faith.
Secondly, the Panel also finds that the Respondent uses the disputed domain name in bad faith. The Respondent operate its website, which has a title (top area of the website) as “LEGO STORE, LEGO STORE, REVIEW LEGO, BUY LEGO, LEGO TOYS” “powered by amazon.com”. However, actually, it has links to toy products not only by the Complainant but also by other competing companies such as Megablocks, Revell, Imagebloks and so on. A prior UDRP panel stated: “the use of the disputed domain name in connection with a website providing information on [the Complainant’s] products and linking to third party websites where consumers can purchase [the Complainant’s] products clearly indicates that the Respondent’s intents to redirect Internet users to his website and thus tries to capitalize on the goodwill of the Complainant’s trademark. This qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondent’s use of the domain name attempts to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website” in P&G Prestige Products, Inc. v. Ryogo Sugai, WIPO Case No. D2009-1098 (<annasuibeauty.com>, emphasis added). The Panel agrees with that decision and finds the same reasoning applicable in the present case. The Panel thus concludes the Respondent also uses the disputed domain name in bad faith.
Accordingly, the Panel finds the third element of the Policy is also made out.
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 <legomegastore.com> be transferred to the Complainant.
Keita Sato
Sole Panelist
Date: July 6, 2013
1 http://mondaydressing.com/ which was independently accessed by the Panel on July 6, 2013.