Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Lothar Evers of Köln, Germany.
The disputed domain name <starwarslego.info> is registered with Cronon AG.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2009. On December 15, 2009, the Center transmitted by email to Cronon AG a request for registrar verification in connection with the disputed domain name. On December 17, 2009, Cronon AG 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 December 22, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center also requested that Complainant justify submission of Complaint in English in light of the fact that the registration agreement between Respondent and the Registrar is in German. The Center invited Respondent to provide its views on the language issue. Complainant filed an amended Complaint on December 22, 2009, as well as a submission requesting and justifying that the proceedings be conducted in English. The Center verified that the amended 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 January 11, 2010. In the absence of communication from Respondent, the Center provided notice of the English-language Complaint to Respondent in both English and German. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 3, 2010.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 5, 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.
The Panel has examined the commercial Internet-website operated by Respondent at the address of the disputed domain name and finds that the content provided by Respondent is virtually exclusively in the English language. The Panel assumes that Respondent has facility with the English language, and in the absence of objection from Respondent will conduct these proceedings in English.
Complainant is owner of trademark and service mark registration for the term LEGO in the European Union (EU), and in countries around the world. Complainant owns the Community Trade Mark (CTM) registration for LEGO, number 000039800, dated May 10, 1998, in international classes (ICs) 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 & 42, covering under IC 28, “games and playthings ...”. Complainant has registered the term LEGO on the Principal Register of the United States Patent and Trademark Office (USPTO), number 1018875, dated August 26, 1975, in IC 28, covering “Toy building blocks and connecting links for the same, sold separately and as kits for construction of ... robots, doll figures and vehicular toys”. In addition to providing copies of trademark registrations for the EU and United States, Complainant has provided trademark registration data for the LEGO word mark for over 150 countries (including individual member states of the EU).
Complainant is licensee from Lucasfilm Ltd. of rights to use the latter's asserted trademark STAR WARS in connection with the development, manufacture and sale of LEGO Star Wars products.1 Complainant licensed rights to use Star Wars from Lucasfilm Ltd. in 1999, and sales of LEGO Star Wars products have exceeded USD 1 billion from that time.
Complainant is the registrant of over 700 domain names incorporating the term “lego”, including <lego.com>.
Complainant asserts continuous use of the LEGO mark since as early as 1953 in the United States and in Germany as early as 1959. Sales of the Lego Group exceeded usd 1.8 billion in 2008. LEGO products are sold in more than 130 countries, including Germany. Complainant heavily advertises and promotes products under the LEGO mark around the world, including in Germany.
Complainant has provided evidence that the LEGO mark is “well known” in the form of a SuperBrands Top 500 survey from 2009, showing LEGO as the best known toy brand in the world, and showing LEGO as number 8 in consumer recognition among all brands.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created on May 16, 2007.
The disputed domain name is used to direct Internet users to a website home page with a “starwarslego.info” banner that includes a representation of Darth Vader.2 The top line of the text is a red-font statement “... much you have to learn of the force ...” following this statement is text alongside a representation of Yoda. The text begins:3
“Hello and a very warm welcome to our LEGO Star Wars fan page. Here you will find a comprehensive overview about the history and actual trends in LEGO Star Wars. We will strive the actual LEGO Sets as the videogames following the LEGO Star Wars theme. Plus: we want to encourage you to add your own experience and wishes to this website.”
This is followed by a few paragraphs of additional text on the home page, with numerous links to lists of LEGO Star Wars-related products running along the right and left-hand columns of the page. These links appear predominantly to be provided by “Ads by Google”, which is identified at a number of points on the homepage. Advertisers and links on the webpage include Complainant (i.e., “www.lego.com”), <amazon.com> (with a full column of advertising links), and “www.ultrasabers.com”. While most of the advertising links appear connected to the offering and sale of LEGO Star Wars products, clearly some are not so linked. For example, “www.ultrasabers.com” takes the Internet user to a website offering for sale “custom light sabers” based on those used in the Star Wars films (and which are unrelated to LEGO products). In addition there are links on the home page to different product lines of other trademark owners, including links to an ad by Google webpage devoted to Super Nintendo games (which are not tied into Star Wars or LEGO). The website home page includes the following disclaimer in small print at the bottom:
“All text, images, or trademarks on this web site are the intellectual property of their respective owners. All content is provided as is, with no warranty stated or implied regarding the quality or accuracy of any content on or off this site. LEGO is a registered trademark of the Lego Company. Star Wars and the Star Wars logo are registered trademarks of Lucasfilm Entertainment Company Ltd. or Lucasfilm Ltd. Both companies do not sponsor, authorize, or endorse this site.”
Complainant transmitted a cease and desist and transfer demand to Respondent on October 28, 2009 by email, and subsequently by post. Respondent did not reply.
The Registration Agreement in effect between Respondent and Cronon AG subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
Complainant alleges that it is the owner of registrations for the trademark and service mark LEGO in numerous countries. It is the owner of a CTM registration that encompasses Germany, owner of several national registrations in Germany, and the owner of registrations in the United States and other countries.
Complainant alleges that it is licensee of the right to use the term Star Wars, claimed as a trademark by Lucasfilm Ltd., in connection with the LEGO Star Wars product line.
Complainant asserts that the dominant part of the disputed domain name is identical to its well-known registered LEGO mark, and that the disputed domain name as a whole is confusingly similar to its well-known registered LEGO mark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent has not registered trademarks or trade names corresponding to the disputed domain name, and has not been authorized by Complainant to use its mark. Complainant argues that Respondent must have known of its well-known mark when it registered the disputed domain name. Complainant states that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, because the website identified by the disputed domain name “mainly displays sponsored links”. Complainant argues that Respondent is misleading Internet users as to a connection between Complainant and its website, and is tarnishing the LEGO mark.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith. Complainant contends that Respondent must have known of its well-known trademark and service mark when it registered the disputed domain name, and that Respondent is using the disputed domain name for commercial gain to intentionally attract Internet users to its website by creating confusion as to whether Complainant is source, sponsor, affiliate or endorser of Respondent's website. Complainant argues that it is not relevant whether Respondent is receiving any money from the website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
The Respondent did not reply to the Complainant's contentions.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center transmitted notice of the Complaint and commencement of the proceeding to Respondent by e-mail and express courier, in English and German. Complainant had earlier attempted to communicate with Respondent by e-mail and postal mail. There is no indication in the record of this proceeding to suggest any technical difficulties in receipt by Respondent of communications from the Center. The Center has discharged its duties under the Policy and Rules with regard to notification, and the Panel concludes that Respondent was given an adequate opportunity to respond to the Complaint.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has provided evidence of registration of the LEGO trademark and service mark in the European Union and in Germany, as well as in the United States and other countries around the world (see Factual Background supra). Complainant has provided evidence of long use in commerce of the LEGO mark. The Panel determines that Complainant has rights in the LEGO trademark and service mark in the European Union (including specifically in Germany), and in the United States and other jurisdictions.
Complainant has provided evidence sufficient to establish that its LEGO trademark and service mark is well-known in the toy goods sector in the European Union, including Germany (which is where Respondent is located according to its record of registration for the disputed domain name).
The disputed domain name directly incorporates Complainant's well-known LEGO mark, and combines that mark with the term “Star Wars” to form <starwarslego.info>. Complainant began to advertise and sell a “Star Wars” line of LEGO toys more than five years prior to registration by Respondent of the disputed domain name. Complainant's mark was associated with “Star Wars” in the mind of Internet users well before Respondent registered the disputed domain name in 2007. In light of the well-known character of Complainant's mark, and its established association with Star Wars, it is likely that Internet users would be confused by the disputed domain name and associate it with Complainant and its Star Wars LEGO product line.4 Respondent anticipated this association and directs Internet users to a website that advertises Complainant's products (among others). The Panel finds that the disputed domain name is confusingly similar to Complainant's LEGO mark.5
The Panel finds that Complainant has rights in a trademark and service mark, and that the disputed domain name is confusingly similar to that trademark and service mark.
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“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 a 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.” (Policy, paragraph 4(c))
Complainant has stated a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has elected not to offer a justification for registration and use of the disputed domain name based on rights or legitimate interests.
This proceeding is representative of a line of cases under the Policy in which a respondent has registered and used a domain name incorporating the trademark of a third party for the purpose of directing Internet users to a website where goods and services of the trademark owner and third parties are advertised and/or offered for sale. The domain name registrants in these cases are presumed to earn revenues from click-throughs to advertisers listed on their websites. As a general rule, panels have found that such use does not constitute fair commercial use of a trademark in a domain name.6 In the present proceeding, the content of the commercial website operated by Respondent includes some general information concerning films associated with some of the advertising links on Respondent's website, including a link to Complainant's principal commercial toy information website. Respondent attempts to characterize its website as a “fan website” for Complainant's toy products. However, a legitimate fan website should not serve a predominantly commercial purpose, as does Respondent's website (compare 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001).7 Respondent is using Complainant's well-known mark to draw Internet users to a website that offers the goods and services of competing products, and Respondent is presumably earning revenues from that activity. Respondent is not entitled to disassociate itself from the commercial content on its website on grounds that the content is determined by a third-party service provider and/or its computer algorithm (see Bachoco, S.A. de C.V. v. Network and IT Management Ltd., WIPO Case No. D2009-1687). Respondent is not engaged in legitimate noncommercial or fair use of Complainant's mark in the disputed domain name. Complainant has succeeded in establishing that Respondent does not have rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include “by using the domain name, [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 [respondent's] website or location or of a product or service on your website or location” (Policy, paragraph 4(b)(iv)).
Respondent has registered and used Complainant's well-known LEGO mark in the disputed domain name intentionally for commercial gain to attract Internet users to Respondent's website by creating confusion as to Complainant acting as a source, sponsor, affiliate or endorser of Respondent's website. Respondent's actions are not justified by its inclusion of some paragraphs of content self-described as “fan” activity.
The Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning of the Policy.
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, <starwarslego.info> be transferred to Complainant.
Frederick M. Abbott
Dated: February 21, 2010
1 Complainant has provided a letter from its own corporate counsel that affirms the existence of a license agreement with Lucasfilm Ltd. (“To whom it may concern” letter from Complainant's corporate counsel, Mette Andersen dated 2009-10-5). In that letter “Star Wars” carries a TM notice (typically used in the United States to notice common law claims), and not a “®” notice that would typically accompany a registered mark. Respondent has not challenged Complainant's assertion of a license agreement with Lucasfilm Ltd., and the Panel accepts the fact of such license based on Complainant's self-assertion under the particular circumstances of this proceeding. The Panel need not and does not determine whether Lucasfilm's Ltd. has trademark rights in the term “Star Wars”.
2 The Panel assumes public familiarity with the characters portrayed in the Star Wars series of motion pictures.
3 Panel visit of February 20, 2010. The home page content of Respondent's website appeared consistent on the date of the Panel's visit with printouts in the case file from that homepage on earlier dates.
4 The Panel notes that Complainant typically refers to the products subject of this dispute as “LEGO Star Wars” toys, while the disputed domain name places “Star Wars” before LEGO. The Panel does not consider the order of the terms material in the present context.
5 Addition of the generic top-level domain (gTLD) “.info” is not relevant to the confusing similarity analysis in the circumstances of this proceeding.
6 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.3, noting that an element to establishing legitimate reseller rights includes “the use of the site to sell only the trademarked goods”. See also Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139, Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368; Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, WIPO Case No. D2007-1881, and; TechnoMarine and TechnoMarine SA v. Private, WIPO Case No. D2008-1186; Su Kutusu İçme Suyu Teknolojileri Pazarlama Sanayi ve Ticaret A.Ş. v. Nyunhwa Jung, WIPO Case No. D2009-0976; Magneti Marelli Powertrain U.S.A. LLC v. Top-End Performance, WIPO Case No. D2009-1272.
7 See WIPO Overview, id., at section 2.5.