World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. mohd halimi zulkifli

Case No. D2011-1038

1. The Parties

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

The Respondent is mohd halimi zulkifli of Kuala Lumpur, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <lego-harry-potter-hogwarts-castle.org> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2011. On June 17, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 20, 2011, GoDaddy.com, Inc. 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 July 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2011.

The Center appointed David Levin Q.C. as the sole panelist in this matter on August 25, 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.

4. Factual Background

The Complainant is the owner of numerous trademark registrations relating to the LEGO products going back to 1953. LEGO products are regularly sold in about 130 countries around the globe. The Complainant is also the owner of more than 1000 domain names containing the term “lego”. The Complainant has provided documentary evidence of numerous trademark registrations in many countries. The Complainant’s licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in Malaysia and elsewhere. It is the owner of many domain names directly connected with Malaysia including <legolandmalaysia.com>, <legolandmalaysia.com.my>, <legolandmalaysia.my>, <legolandmalaysiathemepark.com>, <legolandmalaysiathemepark.com.my> and <legolandmalaysiathemepark.my>.

The Respondent registered the disputed domain name on December 7, 2010.

5. Parties’ Contentions

A. Complainant

The trademark of LEGO is one of the world’s most recognized marks, listed by Superbrands UK in its 2009/10 assessment as the 8th most famous trademark and brand in the world. The Complainant maintains that by reputation and statutory recognition it is entitled to protection with the right to prevent any use of the well-known trademark or a confusingly similar representation of it in connection with any products or services, even beyond those classes for which it has been formally registered.

The fame of the trademark has been confirmed in numerous previous UDRP decisions. In addition to the trademark LEGO, the disputed domain name also comprises the trademark HARRY POTTER. Since March 2010 the Complainant and Warner Bros. Consumer Products Inc. have a license agreement concerning the use of the trademark HARRY POTTER incorporated in the LEGO product line.

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. The Complainant contends that it meets these requirements in that, on the evidence:

(i) the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights; and

(ii) the Respondent lacks rights or legitimate interests in the disputed domain name; and

(iii) the Respondent registered and is using the disputed domain name in bad faith.

The Complainant maintains that on the evidence produced it has established each of the three elements required.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The use of the Complainant’s world renowned mark LEGO as the initial four characters of the disputed domain name makes the disputed domain name confusingly similar to the Complainant’s trademark. Given its reputation, the impression conveyed by the Respondent’s use of the LEGO mark is that the website to which the disputed domain name resolves is in some manner authorized by or connected with the Complainant, which the Panel is satisfied is a completely false conclusion.

The addition of the suffix “harry-potter-hogwarts-castle” to a world renowned mark does nothing to render the disputed domain name any less confusingly similar to the LEGO mark. In addition to the trademark LEGO, the disputed domain name includes in the added suffix a reference to another well-known mark, that of the “Harry Potter” franchise. Since March 2010 the Complainant and Warner Bros. Consumer Products Inc. have a license agreement concerning the use of the trademark HARRY POTTER incorporated in the LEGO product line. In Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co.,Ltd. v. IC, WIPO Case No. D2003-0112, it was held that a mere combination of two separate trademarks, is to be considered confusingly similar to each of the asserted trademarks.

In LEGO Juris A/S v. Nasirudin, EazySmart.com, WIPO Case No. D2011-0617, the panel stated;

“…for the purposes of paragraph 4(a)(i) of the Policy the disputed domain name <lego-harrypotterhogwartscastle.com> is confusingly similar to the trademark LEGO. The additional component “harrypotterhogwartscastle”, easily read as “Harry Potter Hogwarts Castle”, is found not to detract from confusing similarity but to enhance it, since according to the evidence there is a business relationship between the respective owners of the trademarks LEGO and HARRY POTTER.”

The domain name challenged in that decision is almost identical to the disputed domain name.

The Panel finds that the addition of the suffix does not distance the Respondent from the Complainant’s mark but in fact strengthens the connection and further it seeks to trade off a commercial connection of the Complainant with Warner Bros. Consumer Products Inc. This is likely to reinforce any Internet user’s reasonable belief that the website to which the disputed domain name resolves has authorization from or a connection with the Complainant. This is also relevant to consideration of registration and use in bad faith, as discussed further below.

The Panel determines that the disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO.

B. Rights or Legitimate Interests

There is no evidence that the Respondent has any rights to or legitimate connection with the mark of the Complainant or that the Respondent has rights or legitimate interests in the disputed domain name. The Respondent does not assert any such entitlement, and the Panel finds that it has no legitimate right to use the mark LEGO in or in connection with its business or domain name. The Panel accepts the contention advanced by the Complainant that in circumstances where its mark is so well-known throughout the world, it is very likely that any use of it by the Respondent cannot be a bona fide use.

In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”.

The Panel finds that the Respondent has no rights to or legitimate interests in the LEGO mark nor in any exploitation of its relationship with the owners of the rights to the “Harry Potter” franchise names.

The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name currently resolves to a website containing sponsored links. The inference must be that the Respondent derives income or benefit from Internet users clicking on a link. Whether this is so does not detract from the conclusion that the Panel can infer bad faith registration and use. Whether or not the Respondent has influenced what links should be included on the sites is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not the Respondent is actually getting revenue from the pages itself. In Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, the Respondent claimed that the website was created by the registrar, that he had no knowledge of the content and that he had actually not received any money from the website. The panel then 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. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct;

(ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.”

Bad faith is also established from the matters set out above in relation to the addition of the suffix which included the words “harry potter”. In LEGO Juris A/S v. Online Toy Superstore, WIPO Case No. D2010-0839, the panel stated:

“The bad faith of the Respondent may also be inferred through a simple logical process as well, in the sense that it would, indeed, be highly unlikely that the Respondent would come up randomly and unintentionally with a famous word, such as “lego”, and register it as its own domain name, in combination with the term “playsets.com” which directly relates to the products offered under the third party trademark.”

The Panel accepts the same logical inference applies in this case.

It has been mentioned in earlier UDRP decisions that “the failure of the Respondent to respond to the letter of demand from the Complainant further supports an inference of bad faith”, Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

The Complainant has established that it attempted to make contact with the Respondent to encourage it to voluntarily give up the registration of the disputed domain name. No response was ever received to a series of attempts at obtaining a transfer of the disputed domain name, notwithstanding that the Complainant was generously prepared to offer compensation in the form of repayment of the Respondent’s expenses of registration and transfer fees (not exceeding out of pocket expenses).

In all the circumstances the Panel is reinforced in its conclusion that the registration of the disputed domain name was undertaken in bad faith and the continued use of the disputed domain name is also 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 <lego-harry-potter-hogwarts-castle.org> be transferred to the Complainant.

David Levin Q.C.
Sole Panelist
Dated: September 4, 2011

 

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