WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. DomainsByProxy.com / Goodsteed Limited

Case No. D2010-0659

1. The Parties

The Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT Digital Brand Services, Sweden.

The Respondent is DomainsByProxy.com of the United States of America / Goodsteed Limited of Cyprus.

2. The Domain Name and Registrar

The disputed domain name <legostarwarsfigures.net> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2010. On April 27, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 28, 2010, 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 3, 2010 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 10, 2010. 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 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 1, 2010.

The Center appointed Cherise Valles as the sole panelist in this matter on June 11, 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.

Factual Background

The Complainant, based in Denmark, is the owner of the trademark LEGO and all other trademarks associated with the LEGO brand of construction toys and other LEGO branded products. The Complainant and its licensees commenced use of the LEGO mark in the United States in 1953. In 2008, the revenues for the LEGO Group were over USD1.8 billion. The trademark LEGO is well-known internationally. It is listed as number 8 out of the official top 500 Superbrands for 2009-2010. The Complainant is also the owner of more than 1000 domain names containing the term LEGO as listed in Annex 8. Since 1999, the LEGO Group has a licence agreement with Lucasfilm whereby Star Wars was the first licensed property to be produced by the LEGO Group. This license agreement has been extended to 2011.

The disputed domain name <legostarwarsfigures.net> is registered with GoDaddy.com. Goodsteed Limited is the registrant of the disputed domain name. The disputed domain name was registered on October 17, 2009.

5. Parties' Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Complaint filed on April 27, 2010, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The dominant part of the disputed domain name <legostarwarsfigures.net > comprises the word LEGO which is identical to the trademark LEGO that has been registered by the Complainant as a trademark and a domain name in many countries. As submitted in Annex 20, the Complainant is the registrant of more than a hundred domain names incorporating the term LEGO. The Complainant asserts that the disputed domain name also comprises the trademark STAR WARS. The Complainant asserts that the disputed domain name is “identical” and “confusingly similar” to the Complainant's trademark in the light of the fact that it incorporates its trademark in its entirety.

The Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant states that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has not obtained any information indicating that the Respondent has been using LEGO in a manner that would give it legitimate rights to the name. The Complainant has not authorised or licensed the Respondent to use the trademark LEGO.

The disputed domain name was registered and is being used in bad faith.

The Complainant asserts that the disputed domain name was registered in bad faith. At the time of its registration, that is, on October 17, 2009, the Respondent undoubtedly had knowledge of the Complainant's well-known trademark. The Complainant asserts that the disputed domain name is being used with the intention to attract Internet users to the Respondent's website for commercial gain, by creating a likelihood of confusion with its well-known mark. Bad faith may be found where the Respondent uses the legitimate trademark of the Complainant for nefarious purposes, namely to connect to a sponsored link selling LEGO products.

The Complainant asserts that the Respondent is, therefore, using the Complainant's mark in bad faith.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The Policy, the Rules and the Supplemental Rules provide specific remedies to trademark owners against registrants of domain names where the owner of the mark (the Complainant) establishes each of the following elements:

(a) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights;

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and,

(c) the disputed domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent, Goodsteed, having failed to respond in these proceedings, is in default and the Panel shall draw such appropriate inferences therefrom.

A. Identical or confusingly similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant's trademark.

The Complainant has submitted evidence demonstrating that it is the owner of the registered trademark LEGO. The Complainant has submitted evidence of its trademark registrations in Annex 6 of the Complaint. It has also submitted evidence in Annex 8 of the registrations of more than a 1000 domain names containing the term LEGO. The trademark LEGO is so pervasive around the world that most Internet users would associate the disputed domain name with the Complainant's trademark. The disputed domain name differs from the Complainant's trademark with the addition of the words “starwarsfigures”. Thus, the disputed domain name incorporates the Complainant's mark in its entirety. It has been held in many prior UDRP panel decisions that when a domain name incorporates a registered mark in its entirety, it is confusingly similar to that registered trademark. See, Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited, WIPO Case No. D2006-1131. The addition of the term “starwars” does not detract from the confusing similarity to the trademark LEGO. Indeed, the fact that LEGO has entered into a license agreement with Lucasfilm to produce STAR WARS related products supports the likely confusion. The addition of the term “figures” is not relevant and would not diminish the likelihood of confusion. In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, it was held that there is an established precedent that confusing similarity is generally acknowledged when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. Also, the disputed domain name contains <.net.> It is well-established that the difference in the top level of a domain name such as “.com”, “org”, or “biz” does not affect whether the disputed domain name is identical or confusingly similar. See, F. Hoffmann-LaRoche AG v. Digi Real Estate Foundation, WIPO Case No. D2005-1286.

In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered mark and that paragraph 4(a)(ii) of the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a prima facie case is established, then the burden shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate.

The Panel finds that the Respondent, at the time of registration of the disputed domain name, most likely knew or should have known of the existence of the Complainant's well-known LEGO trademark. In the light of the widespread knowledge of LEGO mark throughout the world, in the Panel's view it is not credible to assume that the Respondent was not aware of the Complainant's registered trademark. See, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021. The Complainant, who has registered the trademark LEGO, has not authorised, licensed, permitted or otherwise consented to the Respondent's use of the mark LEGO in the disputed domain name. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or bona fide or legitimate use of the domain name could be claimed by the Respondent.”

The Respondent has not attempted to make any bona fide or legitimate noncommercial or fair use of the disputed domain name. The evidence suggests that the Respondent, Goodsteed, registered, and is using the disputed domain name, only because it is similar to the Complainant's well-known mark, and for the purposes of attracting Internet users to its site for fraudulent purposes. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(ii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor, or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent's web site or location or of a product or service on its website or location.

LEGO is a fanciful term, and not a generic or descriptive one. As the panel held in Hoffmann-LaRoche Inc v. WhoisGuard, WIPO Case No. D2005-1288, “only someone with knowledge of the mark – considering the fact that it is an invented term – could have registered the disputed domain name”. The Panel finds that the Respondent in all probability had intended to use the Complainant's mark when registering the disputed domain name in order to direct traffic to a website for commercial gain. Thus, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website in order to create a likelihood of confusion with the Complainant's well-known trademark. In Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, the Respondent claimed that he had not received any money from the website. The panel stated that “these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain', but this gain does not need to be derived by the Respondent himself.”

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) 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 <legostarwarsfigures.net> be transferred to the Complainant.

Cherise M. Valles
Sole Panelist

Dated: June 25, 2010