World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Shu Lin/Transure Enterprise Ltd/

Above.com Domain Privacy

Case No. D2010-1648

1. The Parties

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

Respondents are Shu Lin of Dalian, the People’s Republic of China; Transure Enterprise Ltd of Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland; Above.com Domain Privacy of Beaumaris, Australia (hereinafter “the Respondents”).

2. The Domain Names and Registrar

The disputed domain names <lego-billiger.com>, <legodigitaldesign.com>, <lego-discount.com>, <legoherofactory.com>, <legoindinajones.com>, <legoindyanajones.com>, <legoracinggames.com>,

<lego-star-wars-store.com> are registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2010. On September 30, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain names. On October 4, 2010, the Complainant requested to add another domain name into the proceedings and related request for registrar verification was sent to Above.com, Inc. by mail on October 5, 2010. On October 5, 2010 and October 8, 2010, Above.com, Inc. transmitted by emails respectively to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to Complainant on October 8, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 12, 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 Respondents of the Complaint, and the proceedings commenced on October 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2010. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on November 3, 2010.

The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on November 9, 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 following undisputed facts are summarized from the Complaint.

Complainant commenced use of the LEGO trademark (the “Mark”) in the United States of America (“U.S.”) in 1953, and Lego’s presence in Australia was established as early as 1962. Complainant uses the Mark to identify the construction toys it makes and sells. The Complainant has subsidiaries and branches worldwide, including Australia, and its products are sold in more than 130 countries. Complainant is the owner of more than 1,000 domain names containing the word “lego” (Annex 8 to the Complaint). Moreover, Complainant’s Mark is known worldwide and was recognized as number 8 in the top 500 “superbrands” as ranked by Superbrands UK in 2009-10. (Annex 9 to the Complaint).

Complainant entered into a license agreement with Lucasfilm Ltd in 1999 concerning the use of the trademark STAR WARS which was incorporated into the LEGO product line. The agreement expires in 2011 (having already been extended once). In addition, Complainant and Lucasfilm Ltd have a similar license agreement for the use of the trademark INDIANA JONES in Complainant’s LEGO product line.

This matter concerns the registration and use of several domain names that according to the Complaint incorporate Complainant’s Mark which are confusingly similar to Complainant’s Mark, in which Respondents have no rights or legitimate interests and which were registered and are being used in bad faith. The domain names <legoindyanajones.com> and <legoindinajones.com> were registered by Respondent Shu Lin with Above.com, Inc on June 8, 2010. The domain names <lego-billiger.com>, <lego-discount.com>, <legoracinggames.com>, <legoherofactory.com> and <lego-star-wars-store.com> were registered by Respondent Shu Lin with Above.com, Inc on July 1, 2010. The domain name <legodigitaldesign.com> was registered by Respondent Transure Ltd. with Above.com, Inc on February 19, 2010. (collectively, the “Disputed Domain Names”).

5. Parties’ Contentions

A. Complainant

Complainant argues that Respondents’ use of its LEGO Mark in these Disputed Domain Names is confusingly similar to the Mark in which Complainant has rights. Furthermore, Complainant asserts that Respondents’ use of various suffixes appended to its Mark do not detract from the fact that use of the Mark in the Disputed Domain Names still renders them confusingly similar.

Complainant states that Respondents have no rights or legitimate interests in the Disputed Domain Names. Complainant has not licensed or authorized Respondents to use its Mark and it is alleged that the Respondents likely knew that Complainant had a legal interest in its well-known, worldwide Mark. Since the Disputed Domain Names are being used to generate traffic to web sites that contain sponsored links, Complainant argues that this is not a bona fide offering of goods and services.

Finally, the Disputed Domain Names were registered and are being used in bad faith. The Complainant emailed the address listed on the WhoIs web site a cease and desist letter on April 8, 2010 regarding the domain name <legodigitaldesign.com>, but this message went unanswered. Complainant then sent a message to the registrar, Above.com, Inc, on April 13, 2010 who replied that they would forward the information to Respondents. No reply from Respondents was received and on April 26, 2010 Complainant emailed the Registrar to confirm that the registrant of the domain name was “David Smith/hosmaster@transureent.com”. Complainant had prior experience with “David Smith” from other domain name disputes. No reply was received, so Complainant again emailed Above.com, Inc, on April 29, 2010 asking for a reply within 48 hours. Complainant received a reply from David Smith asking for USD 250 for the domain name. The registrant of the disputed domain name <legodigitaldesign.com> is Respondent Transure Enterprise Ltd.

On July 6, 2010, Complainant sent a notification of violation of trademark rights to the registrant of the domain name <legoindinajones.com>, through the privacy protected domain name displayed on the Above.com, Inc WhoIs web site. The registrant replied, in a fashion similar to that used in the <legodigitaldesign.com> email and in other domain name disputes concerning David Smith and Transure Ltd., requesting USD 220 for the domain name. Complainant notified the Respondent that they did not buy domain names from third parties and requested information regarding the registration cost. Respondent replied stating that he owned the following Disputed Domain Names: <legoindinajones.com>, <legoindyanajones.com>, <lego-billiger.com>, <lego-discount.com>, <legoracinggames.com> and <lego-star-wars-store.com>. The registrant signed off on one of his emails as “David”. Complainant believes that this “David” is the same “David Smith” related to Transure Enterprises Ltd. and that this individual owns all of the Disputed Domain Names. According to the information provided by Above.com, Inc, the registrant for the Disputed Domain Names, apart from <legodigitaldesign.com>, is Respondent Shu Lin.

Complainant noted the connection between Respondents Transure Enterprise Ltd. and Shu Lin in Telefonaktiebolaget L M Ericsson v. Above.com Domain Privacy / Transure Enterprise Ltd. / Shu Lin, Shu Lin Enterprises Limited, WIPO Case No. D2010-0566. On October 4, 2010, Complainant added the domain name <legoherofactory.com> to this dispute, also registered by Respondent Shu Lin, as it had erroneously omitted it at the outset. Complainant amended its original Complaint on October 12, 2010 alleging that the seemingly distinct Respondents Transure Enterprises Ltd. and Shu Lin were, in fact, the same entity. Based on the facts of this case the Panel accepts this contention.

The Disputed Domain Names were likely registered to piggyback on the value and goodwill Complainant has sought to establish with its Mark. The Mark is being employed in the Disputed Domain Names to create a likelihood of confusion, and the web sites themselves are being used to display sponsored links in an attempt to attract consumers for Respondents’ financial gain.

B. Respondents

Respondents did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to section 4(a) of the UDRP, Complainant must prove each of the following in order to succeed in its claim:

(i) that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) that the Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

In this instance, the Disputed Domain Names registered by Respondents all contain Complainant’s Mark in conjunction with either another licensed Mark (such as Lucasfilm Ltd’s STAR WARS) or an additional term (“discount,” “racing games,” etc.). It has been established that the mere addition of an additional term to a registered mark is insufficient to distinguish a domain name from a distinctive mark, such as LEGO. This was noted in PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.SI.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696, concerning the use of said soft drink manufacturer’s registered mark in several domains names. The panel in PepsiCo held:

“All of the contested domain names fully incorporate the trademark "PEPSI," which is a distinctive mark. The mere addition of common terms such as "sports,", "basketball,", "soccer,", "volleyball", "rugby" and the like to the "PEPSI" mark, does not change the overall impression of the designations as being a domain names connected to the Complainant.”

A similar situation occurred in Dr. Ing. H.c.F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, where Respondent registered the domain name <porsche-me.com>. The panel held that “Long-established precedent has generally recognised confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes.”

The fact that Complainant’s Mark has been used in tandem with registered marks of Lucasfilm (STAR WARS and INDIANA JONES) is not sufficient to distinguish the Disputed Domain Names. Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC , a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896 (“the addition of other marks does not create a distinct mark / domain name, capable of overcoming a claim of confusing similarity, it merely adds to the potential confusion of Internet users as to the source, sponsorship and affiliation of the Domain Name.”); Pfizer Inc. v. Martin Marketing, WIPO Case No. D2002-0793. In addition, the panel in Yahoo! held that misspellings of trademarks were not sufficient to distinguish a particular domain name.

Respondents’ use of Complainant’s Mark in full in each and every one of the Disputed Domain Names renders them identical or confusingly similar under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that Complainant show that Respondents have no rights or legitimate interests in the domain name. A determination regarding a respondent’s rights and legitimate use can be accomplished by demonstrating that one of following the situations outlined in section 4(c) of the Policy is applicable:

(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.

As a perfunctory matter, Respondents submitted no response to the Complaint and therefore have not come forward with affirmative facts that would support a finding of rights or legitimate interests in the Disputed Domain Names. Therefore, as has been held in prior cases, “By not submitting a proper response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.” Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC , a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896.

C. Registered and Used in Bad Faith

Finally, Complainant must demonstrate that Respondents have registered and used the Disputed Domain Names in bad faith. Evidence of bad faith under paragraph 4(b) of the Policy is determined by demonstrating one of the following:

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

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.

First, it is unquestionable that Respondents knew about Complainant’s worldwide, well-established Mark before Respondent’s registered the Disputed Domain Names. The registration of such a well-known mark alone supports a finding of bad faith under paragraph 4(b) of the Policy. LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260 (“the fact that the disputed domain names include the Complainant’s well-known trademark LEGO, held and used in commerce by the Complainant for many years prior to the date the Respondent became the registrant of the disputed domain names, the Respondent must have known and been aware of the Complainant’s rights in this mark at the time the Respondent registered the disputed domain names, which include the Complainant’s mark, is a further factor supporting a conclusion of bad faith.”).

Furthermore, in this case, the Disputed Domain Names registered and used by Respondents are “parked” web sites. In prior cases mere “parking” of a web site has been sufficient to demonstrate a finding of bad faith. “It is now well-established that the use of a parking page in this manner is strong evidence of bad faith.” Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474.

Finally, it appears that Respondent Transure Enterprise Ltd has engaged in similar “parking” practices in the past and has, in fact, used the Mark at issue in this case in the past. LEGO Juris A/S v. DomainPark Ltd., David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138. In LEGO Juris A/S v. DomainPark Ltd., David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138, the panel noted “perhaps the most compelling evidence of Respondents' bad faith is evidenced in its long pattern of abusive registration, infringement and cybersquatting. Domain names of Respondent incorporating famous and distinctive marks have been the subject of approximately 38 UDRP proceedings and in each case the panel ordered Respondent, Transure Enterprise Ltd to transfer the respective domain names to the complainant.”

Respondents’ parking of the Disputed Domain Names, coupled with their knowledge of Complainant’s well-known Mark and the fact that Transure Enterprise Ltd. has been party to numerous UDRP proceedings, including proceedings involving the same Complainant and Mark at issue here, support a clear finding of registration and use in bad faith.

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 Disputed Domain Names be transferred to Complainant.

Maxim H. Waldbaum
Sole Panelist

Dated: November 19, 2010

 

Explore WIPO