WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. CV. Amanah

Case No. D2011-1464

1. The Parties

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

The Respondent is CV. Amanah, Arif Rahman of Palembang, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <legostarwarsimperialshuttle.com> (the “Disputed Domain Name”) is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2011. On August 30, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the Disputed Domain Name. On August 30, 2011, 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 September 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2011.

The Center appointed Neil J. Wilkof as the sole panelist in this matter on October 3, 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.

On October 7, 2011, the Panel issued Administrative Procedural Order No. 1 requesting the Complainant to either provide a copy of the license (redacted if necessary) granted by Lucasfilm Ltd. to the Complainant with respect to use of the mark STAR WARS in connection with LEGO STARWARS-branded products or other relevant information that can establish that such license has been granted. On October 12, 2011, the Complainant submitted a Response to said Administrative Procedural Order No.1 together with supporting materials.

4. Factual Background

The Disputed Domain Name registration at issue is <legostarwarsimperialshuttle.com>, registered on May 9, 2011. The Disputed Domain Name is registered in the name of CV. Amanah Arif Rahman.

The Complainant states in its Complaint that it is the owner of the mark LEGO (hereinafter: “the Mark”), including registration number 39800, which was registered in the Office for Harmonization in the Internal Market (Trademark and Designs) on October 5, 1998 in International Classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42 in the name of LEGO Juris A/S and which registration has been duly renewed, with a current date of expiry of April 1, 2016 (hereinafter: “the OHIM Registration”).

Annex 7 to the Complaint contains what is purported to be a full list of the registrations of the LEGO mark throughout the world, as of August 27, 2009, all of which predate the OHIM Registration. The earliest date for these registrations is the registration for the LEGO mark in Denmark on May 1, 1954; Annex 8 to the Complaint contains what is purported to be a list of over 1000 domain name registrations containing the term LEGO.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of the LEGO mark, which is used in connection with LEGO brand construction toys and other products. Since at least the 1950’s, the Complainant’s plastic construction toys under the LEGO brand and mark have been sold in various countries and the Complainant maintains subsidiaries and branches throughout the world. As well, the Complainant authorizes licensees to trade in LEGO-branded products. From the Complainant’s flagship product—plastic construction toys—it has expanded into various other product categories, including computer hardware and software, books, videos and computer-controlled robotic construction sets. The Complainant also maintains an extensive website—under the domain name <lego.com> to promote and sell its branded products. LEGO-branded products are now sold in more than 130 countries.

Since 1999, the LEGO Group has had a license agreement with LucasFilm Ltd regarding use of the trademark STAR WARS as incorporated in the Lego product line. In fact, STAR WARS was the first licensed-in property produced by the Lego Group. The current license is valid until 2011. This licensing arrangement has generated over USD 1 billion in retail sales around the world.

The success of the LEGO brand has made it one of the world’s best-known trademarks. According to the 2009/2010 ranking of the world’s top 500 Superbrands, the ranking agency, Superbrands UK, listed the LEGO mark as the eighth most famous trademark in the world (Annex 9 to the Complaint). The LEGO mark is supported by extensive and long-term advertising, which highlights the mark on all products, packaging, display, advertising and promotional materials. The success of the LEGO-brand products can be seen in the revenues for the LEGO Group in 2009, which exceeded USD 2.8 billion dollars.

The Complainant states that on June 8, 2011, it sent to the Respondent by email a cease and desist letter (Annex 12 to the Complaint). In the letter, “Complainant advised the Respondent that the unauthorized use of the LEGO mark within the [Disputed] Domain Name violated Complainant’s rights in [the LEGO] trademark.” The Complainant requested a voluntary transfer of the Disputed Domain Name and offered to compensate the Respondent for registration and transfer fees. No response was received from the Respondent. Accordingly, the Complainant sent two reminders to the Respondent, on June 20, 2011 and June 29, 2011, respectively. No response was received to either reminder. The Complainant accordingly proceeded to file the instant Complaint.

The Complainant alleges that the Respondent is “not using the [Disputed] Domain Name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to online shopping sites. The website displays links to Amazon.com, where the Complainant’s products are offered” (Annex 11 to the Complaint). “In so doing, the Respondent is misleading Internet users for its own commercial gain while tarnishing the LEGO mark.”

Based on the foregoing, the Complainant alleges the following:

1. The Disputed Domain Name is confusing similar to the Mark.

2. The Respondent has no rights or legitimate interests in the Disputed Domain Name.

3. The Disputed Domain Name was registered and has been used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.

6. Discussion and Findings

In view of the Respondent’s failure to submit a response, the Panel shall decide this proceeding on the basis of the Complainant’s undisputed and reasonable representations and it shall draw inferences there from that the Panel deems appropriate. 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 should be cancelled or transferred:

(i) The Disputed Domain Nameis 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;

(iii) The Disputed Domain Namehas been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.

In determining whether there is confusing similarity between a domain name and a mark with respect to paragraph 4(a)(i) of the Policy, special attention should be paid to the dominant part of the domain name. As stated by the panel in Dr. Ing. H.c.F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888, “a domain name that wholly incorporates a Complainant’s registered mark may be sufficient to establish confusingly similarity for purposes of the UDRP”.

However, in the instant case, the question is what is the mark (or marks) to be compared with the Disputed Domain Name—the LEGO mark only, or the LEGO mark in combination with the STAR WARS mark? The Panel is of the view that the proper comparison with the Disputed Domain Name is between the LEGO mark and the STAR WARS mark taken in combination. See Konica Corporation, Minolta Kabushiki Co., Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112. As the Complainant asserts in the Complaint, “[t]he [Disputed] Domain Name is confusingly similar to the Complainant’s world famous mark LEGO. In addition to the trademark LEGO, the [Disputed] Domain Name also comprises the trademark STAR WARS.” Accordingly, the Panel will take into account collectively the LEGO mark and the STAR WARS mark in determining whether there is confusion with the Disputed Domain Name.

The Complainant is the owner of numerous registrations for the LEGO mark in numerous jurisdictions. The registration date for each of the registrations of the Mark predates the registration date of the Disputed Domain Name, being May 9, 2011. Therefore, the Complainant has valid and enforceable rights in the LEGO mark.

The Complainant also may assert rights in the STAR WARS mark by virtue of its licensing relationship with Lucasfilm Ltd. With respect to ownership of the mark STAR WARS, the Panel has conducted a search on the on-line website of the Office for Harmonization in the Internal Market (Trademark and Designs Office). In doing so, the Panel is acting in accordance with accepted practice as described by the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition” (hereinafter: “the WIPO Overview 2.0”), paragraph 4.5, which provides in pertinent part as follows:

Question: “May a panel perform independent research when reaching the decision?

Consensus view: A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision.”

See, e.g., Descente, Ltd. and Arena Distribution, S.A. v. Portsnportals Enterprises Limited, WIPO Case No. D2008-1768.

The Panel takes notice of the fact that the mark is registered in the Office for Harmonization in the Internal Market (Trademark and Designs), registration no. 560029, in International Classes 3, 6, 20, 24 and 29 in the name of Lucasfilm, on August 2, 1999, and it is valid until June 11, 2017. On that basis, the Panel is of the view that Lucasfilm has ownership rights in the STAR WARS mark.

As noted above, the Complainant has alleged that a licensing relationship is in place between the Complainant and Lucasfilm. Moreover, previous panels have recognized the existence of this licensing relationship between the Complainant and Lucasfilm with respect to the “Star Wars” mark. See, e.g., LEGO Juris A/S v. DomainsByProxy/DBA David Inc., WIPO Case No. D2011-1288 and LEGO Juris A/S v. Lego Star Wars Minifigs, WIPO Case No. D2011-1231.

The Complainant has also provided certain evidence in support of existence of this license agreement. Exhibit 13 is a brief letter, dated May 5, 2009 from the Complainant stating that: “This is to confirm that the LEGO Group has a license agreement with Lucasfilm Ltd. regarding the development, manufacturing and sale of LEGO® “Star Wars”™ products.” The Complainant, in response to Administrative Procedural Order No. 1, submitted two documents, each signed by Lucasfilm. The first document, addressed “To Whom It May Concern”, states that: “This is to confirm that LEGO Group is allowed to register the domain name Legostarwarsimperialshuttle.com”. The second document states that: “This is to confirm that Lucasfilm Ltd. agrees to the transfer of the following domain name to the LEGO Group as part of the above-referenced proceedings.”

The Panel would have preferred submission by the Complainant of the licensing agreement, redacted as appropriate. Nevertheless when one takes into account all of the foregoing, it can be reasonably concluded that there exists a licensing relationship between the Complainant and Lucasfilm with respect to the STAR WARS mark. On the basis of this licensing relationship, the Panel is of the view that the Complainant may assert rights in the STAR WARS mark for the purpose of determining whether there is a confusing similarity with the Disputed Domain Name. In light of the foregoing, and based on the test for confusing similarity as described in the Dr. Ing. H.c.F. Porsche AG v. Vasiliy Terkin, supra, the Panel finds that the combination of the LEGO mark and the STAR WARS mark is identical to the dominant portion of the Disputed Domain Name. As such, the Complainant has met the standard for establishing confusing similarity in accordance with paragraph 4(a)(i) of the Policy.

Nevertheless, for the sake of completeness, the Panel considers the addition of the term “imperialshuttle” in the Disputed Domain Name. The Complainant states that “there is a toy called ‘Imperial Shuttle’ used in e.g., the Star Wars Episodes.” This assertion is uncontroverted. As such, the term is perceived as being connected with the STAR WARS mark and further reinforces the finding that a confusing similarity exists.

For all of the foregoing reasons, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s Mark.

B. Rights or Legitimate Interests

Here, as well, the Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate. The Panel finds that the Complainant has carried its burden of proof on this element, and has demonstrated a prima facie case that the Respondent has no rights or legitimate interests.

There is no evidence that the Respondent has registered any mark that consists of, or contains, either the LEGO mark or the “Star Wars” mark, or any material portion thereof, or that the Respondent has any right in either of these marks on an unregistered basis. There is no evidence that the Complainant has entered into any agreement, authorization or license with the Respondent with respect to the use of either of these marks. Moreover, the name of the Respondent bears no resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by either of the marks. The only “use” by the Respondent of these marks is in connection with its registration of the Disputed Domain Name.

Nor does the Respondent have rights or legitimate interests in the Disputed Domain Name by virtue of making a bona fide offering of goods. The WIPO Overview 2.0, which is to be found on the Center’s website, contains the following question and answer at paragraph 2.3—

Question: “Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?”

Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder (emphasis added).

The Respondent is not a bona fide reseller because the products bearing the LEGO mark and the STAR WARS mark are not sold directly on the Respondent’s site but on third party sites to which the Internet user is directed “www.amazon.com”. As stated in, LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913, “the Respondent […] could at best be described as an intermediary or middle man, profiting from the unauthorized use of the Complainant’s trademark in a domain name to re-direct Internet user[s] to a location at which LEGO products may [be] purchased from a third party.” Second, the site under the Disputed Domain Name is used to sell a variety of goods other than those carrying the LEGO mark or STAR WARS mark. Third, the site nowhere discloses that there exists any relationship between the Complainant and Lucasfilm that would point to a right or legitimate interest in the LEGO mark or the STAR WARS mark.

Based on the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Here, as well, the Respondent has failed to respond to the Complainant. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of the Complainant, as follows:

(i) Circumstances indicate that the Respondent has registered the Disputed Domain Name primarily to sell or otherwise transfer it to the Complainant who is the owner of the trademark or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name.

(ii) The Disputed Domain Name has been registered to prevent the Complainant from reflecting its Marks in a corresponding domain name.

(iii) The Disputed Domain Name has been registered primarily for the purpose of disrupting the business of a competitor.

(iv) The use of the Disputed Domain Name indicates an intention to attract Internet users to the Respondent’s website, for commercial gain, by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Respondent has selected the Disputed Domain Name to exploit the reputation and goodwill of the LEGO and STAR WARS marks in order to generate traffic to on-line shopping sites. In so doing, the Respondent has registered and used the Disputed Domain Name in bad faith within the meaning of subparagraph 4(b)(iv) of the Policy.

First, the website displays links to products not connected to the Complainant (or to Lucasfilm, the licensor of the STAR WARS mark) for the Respondent’s unauthorized commercial gain. Second, as described above with respect to Section B above, the Respondent is not making a bona fide offering of goods under the LEGO mark and/or the STAR WARS mark. Third, it is highly unlikely that the Respondent would come up independently with the LEGO mark or the STAR WARS mark as a material part of the Disputed Domain Name. In such circumstances, selection of the Disputed Domain Name by the Respondent is an indicium of bad faith. This has been explicitly noted with respect to the “LEGO” mark in LEGO Juris A/S v. Online Toy Superstore,WIPO Case No. D2010-0839.

Based on the foregoing, the Panel is of the view that the Respondent has registered and used the Disputed Domain Name in bad faith.

7. Decision

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, <legostarwarsimperialshuttle.com>, be transferred to the Complainant.

Neil J. Wilkof
Sole Panelist
Dated: October 25, 2011