Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Sahala Pardomuan of Pekanbaru, Indonesia.
The disputed domain name <legoeisenbahn.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2012. On October 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 22, 2012.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on December 7, 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.
Complainant is a Danish company, owner of LEGO and all other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products. Complainant initiated the use of the LEGO trademark in 1953 and is currently a leading company specialized in constructions toys for children.
Complainant's licensees are authorized to exploit Complainant's intellectual property rights, including its trademark rights, in Indonesia (where Respondent resides) and elsewhere. Complainant holds an Indonesian trademark registration - IDM000208750 - and several other trademark registrations throughout the world.
Complainant is also owner of over 2,400 domain names incorporating the term LEGO (Annex 8 of the Complaint).
The present dispute concerns the domain name <legoeisenbahn.com>, registered by Respondent on December 14, 2011.
Complainant is the owner of numerous trademark registrations throughout the world, and over 2,400 domain names containing the word LEGO, highly distinctive and famous in its market segment. It states that LEGO is undoubtedly a well-known trademark, being one of the best-known trademarks in the world, due in part to decades of extensive advertising.
Complainant proves the status of its well known trademark with a official list of top 500 Superbrands for 2009/2010, provided by Superbrands UK (Annex 9 of the Complaint), which shows LEGO as number 8 of the most famous trademarks in the world.
In support of this argument, Complainant refers to a number of decisions made by previous UDRP panels in cases involving the LEGO trademark, where LEGO was acknowledged as being a well known trademark.
Complainant contends that the disputed domain name is confusingly similar to its trademark, since it contains the word LEGO and Respondent has no license or authorization to use this term. It also explains that the LEGO Group has expanded the use of the trademark to, inter alia, computer hardware and software, books, videos and computer-controlled robotic construction sets.
Complainant alleges it tried to contact Respondent through a cease and desist letter on June 7, 2012 (Annex 12), requesting the immediate transfer of the disputed domain name. After a few reminders, Respondent replied via email stating it was willing to transfer the disputed domain name, but never followed through.
Complainant argues that Respondent has no rights or legitimate interests with regard to the disputed domain name, since it could not find any trademarks registered by Respondent corresponding to the disputed domain name.
The disputed domain name currently displays sponsored links to Amazon.com online sales of toys. According to Complainant, Respondent has intentionally chosen a domain name based on a famous registered trademark in order to generate traffic to a commercial site where LEGO products are sold from direct competitors (Annex 11 of the Complaint).
Complainant claims Respondent is using the disputed domain name to intentionally attempt to attract Internet users to the website, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website. Therefore, Complainant concludes the domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
In order to succeed in a UDRP proceeding, Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in respect of which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
These three elements are considered hereinafter.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
Complainant has duly proved the first element under paragraph 4(a) of the Policy by attesting that it is the owner of several trademark registrations for LEGO worldwide and that such trademark is incorporated in the disputed domain name <legoeisenbahn.com>.
The Panel acknowledges the fame of the trademark LEGO and that it is a well known trademark. This fact has been confirmed in previous UDRP decisions: LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260 (“In the present case, the disputed domain names incorporate Complainant’s well-known registered trademark LEGO”); LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840 (“LEGO is clearly a well-known mark”), and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680 (“LEGO is a mark enjoying high reputation as construction toys popular with children”).
The Panel acknowledges that the addition of the word “eisenbahn” (German for “railway”) into the disputed domain name may increase chances of confusion with Complainant’s trademark and products, since it is a word highly identifiable with children’s toys - Complainant’s main activity. In this sense, please see the previous UDRP decision Dr. Ing. H.c F. Porsche AG v. Rojeen Rayaneh WIPO Case No. D2004-0488 “it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes”.
Moreover, the fact that the website in question resolved to sales of Complainant’s products also generated a strong possibility of confusion, leading consumers to believe they were in fact dealing with Complainant’s LEGO group.
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s trademark LEGO.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows: “[A] complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If Respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If Respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on Complainant.”
In this case Complainant has provided sufficient prima facie proof that Respondent has “no rights or legitimate interests”, so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <legoeisenbahn.com>.
The Panel recognizes that Complainant has never authorized Respondent to incorporate its trademark LEGO into the disputed domain name, and since Respondent has not chosen to present any argument in this matter or attempted to prove any right, it is apparent that its only intention when registering the disputed domain name was to attract for commercial gain Internet users to its website by creating a false association with Complainant’s mark.
In view of the above, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the disputed domain name, Respondent having intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.”
The Panel finds it is highly unlikely that Respondent was not aware of Complainant’s legal rights in the trademark LEGO at the time of registration of the disputed domain name, considering Complainant’s fame and well known status. The fact that the disputed domain name resorted to a webpage where an online sale of toys was made, and as the LEGO trademark also identifies toys, is further evidence that Respondent was acting in a way as to make an undue profit from the use of a domain name confusingly similar to Complainant’s trademark.
Thereby, based on paragraph 4 (b) (iv) of the Policy, the Panel holds that Respondent is using the disputed domain name to intentionally attempt to attract Internet users to the website, by creating a likelihood of confusion with Complainant’s trademark, which leads to the finding of the bad faith of Respondent when registering and using the disputed domain name.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <legoeisenbahn.com> be transferred to Complainant.
Gabriel F. Leonardos
Sole Panelist
Date: December 21, 2012