The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Anton -, of Jalan Kancil Medan, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <legomindstorms.org> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2010. On February 17, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 18, 2010, eNom 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 February 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 18, 2010.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on April 6, 2010. 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 LEGO Juris A/S is a company based in Denmark and owns several registrations for trademarks LEGO and MINDSTORMS worldwide. These marks are used in connection with the famous LEGO and MINDSTORMS brands of construction toys and other LEGO products.
The Complainant and its licensees (collectively “the LEGO Group of Companies or the LEGO Group”), through their predecessors, commenced use of the LEGO mark 1934, to identify construction toys made and sold by them. LEGO trademark was formed by the first syllables from the danish phrase “Leg Godt”, which means “play well”. Coincidentally LEGO also means “put together” in latin. In 1942 the Complainant started commercializing the plastic bricks that are known famous until today.
Today the Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries. The LEGO MINDSTORMS trademark identifies a line of programmable construction toys, which can be seen at “www.mindstorms.lego.com”, one of the Complainant's several domain names composed by both marks.
The evidence presented shows that LEGO trademark is original and disctinctive. Besides, it has gathered awareness throughout the world and can be considered a well-known trademark.
The Complainant has obtained trademark registrations for its marks, LEGO and MINDSTORMS, worldwide. The LEGO mark has been in use worldwide since the fifties, while the products marked MINDSTORMS were first lauched in 1998. The Complainant attached a list of all existing registrations for this mark throughout the world, as well as of all domain name registrations owned.
5. Parties' Contentions
A. Complainant
Before starting this Panel, the Complainant contacted the Respondent through a cease and desist letter, in an attempt to obtain the voluntary transfer of the domain to its name.
The Respondent did not answer to this first contact, so the Complainant addressed two reminders of this letter, but still no response was received.
The absence of any possible amicable settlement led to the filing of this UDRP.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name <legomindstorms.org> is, indeed confusingly similar to the lego trademark, as well as to the Complainant's other registered mark, MINDSTORMS, as they are incorporated within. This disputed domain name maybe likely confused as part of a “family of websites” created by the Complainant under the LEGO mark umbrella, such as “www.lego-believe.com”; “www.lego-games.com”; “www.lego-shop.de” and even “www.lego-mindstorms.com”, among several others.
The Complainant, on its turn, has presented consistent evidence of use and ownership of the mark LEGO in an extensive list of countries throughout the world, including more than 130 countries. further evidence of the fame the LEGO mark was presented.
Given the above, the Panel concludes that the disputed domain name is confusingly similar with the registered marks of the Complainant.
B. Rights or Legitimate Interests
Given the clear evidence that the LEGO trademark is widely known, the fact that the goods are sold under this mark in more than 130 countries as well as the undeniable link between that mark and the Complainant, the Panel finds that the Complainant has established prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
In addition to the above is the fact that the Respondent has combined two of the Complainant's trademarks in the disputed domain name. This leads to the conclusion that he was indeed aware of the trademarks and aware of their renown and value.
Hence, the Respondent cannot claim to have been using the trademarks not knowing the Complainant's rights to them. In addition, a visit to the website at the disputed domain name “www.legomindstorms.org” leads to a web page showing the Complainant's product named LEGO MINDSTORMS and bears links to other web pages that apparently sell those goods. This, among other facts, proves that the Respondent's interests cannot have been legitimate.
The Panel, thus, finds for the Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
The facts outlined in items A and B above can also be used to evidence the Respondent's bad faith in obtaining the disputed domain name.
As mentioned, the Panel finds the fame of the LEGO trademark is undeniable; it cannot be conceived that the Respondent does not know of its existence
In addition, the Respondent did not respond to the attempt of the Complainant to settle the matter amicably, nor has responded to this Complaint. This behavior has been considered as a clear evidence of bad faith in registering and using a domain name in several previous disputes insertion, in fact, supports a finding that the disputed domain name was registered in bad faith.
Lastly, the Respondent's website shows extensive comments on the Complainant's goods marked LEGO MINDSTORMS and even bears the famous LEGO logo. This can bee seen as clear evidence that the Respondent wishes to give an overall impression that the disputed domain leads to an official website, which is not true. This apparent attempt to mislead consumers is also evidence of bad faith from the Respondent.
All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant and that the Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that the Complainant has also proved the third element of the Policy
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <legomindstorms.org> be transferred to the Complainant.
Alvaro Loureiro Oliveira Sole Panelist
Dated: April 28, 2010
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