World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lego Juris A/S v. Adry Asry

Case No. D2011-1224

1. The Parties

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

The Respondent is Adry Asry of Malaysia.

2. The Domain Name and Registrar

The Disputed Domain Name <legostarwarstoy.net> (the “Disputed Domain Name”) is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2011. On July 18, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On July 18, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 11, 2011.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 15, 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

Complainant states that it has used the LEGO trademark since at least 1953 in connection with construction toys, that the LEGO trademark is “among the best-known trademarks in the world,” and that the LEGO brand has been identified by Superbrands UK as the eighth most-famous trademark in the world. Complainant further states that its products are sold in more than 130 countries and that revenue for Complainant and its licensees was more than USD 2.8 billion in 2009. Complainant has provided a 36-page list of trademark registrations that it owns worldwide for LEGO, including United States Registration No. 1,018,875 (first used in commerce on June 4, 1953, in connection with “toy building blocks and connecting links for the same, sold separately and as kits for construction of toy houses, buildings, household furnishings, robots, doll figures and vehicular toys”). These trademarks are referred to collectively hereafter as the “LEGO Trademark”.

Complainant states (and provides a declaration in support thereof) that it “has a license agreement with Lucasfilm Ltd. concerning the use of the trademark Star Wars incorporated in the LEGO product line.” Complainant states (and provides documentation in support thereof) that it attempted to contact the Respondent via e-mail about the Disputed Domain Name on three occasions, but the Respondent never replied.

The Disputed Domain Name was registered on January 10, 2011, and, according to Complainant (as also evidenced by a screen printout provided by Complainant) “has been connected to a web site containing links to Amazon.com where LEGO products were offered.”

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

The Disputed Domain Name is confusingly similar to the LEGO Trademark because the Disputed Domain Name contains the LEGO Trademark in its entirety; inclusion of the trademark STAR WARS in the Disputed Domain Name does not render the Disputed Domain Name not confusingly similar to the LEGO Trademark; and “addition of the suffix ‘toy’ is not relevant and will not have any impact on the overall impression of the dominant part of the name.”

The Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name because “no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO”; “[i]t is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name LEGO at the time of the registration”; using the Disputed Domain Name “to generate traffic to a web site displaying links to Amazon.com where the Complainant’s products are offered” is not a bona fide offering of goods or services; and “the links displayed on the website connected to the [D]isputed Domain Name should be seen as sponsored links as the Respondent most likely derives income once a visitor click on the links and is redirected to Amazon.com”.

The Disputed Domain Name was registered and is being used in bad faith because, by using the Disputed Domain Name in connection with “a web site containing links to Amazon.com where LEGO products were offered,” Respondent “has been using the [Disputed] Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites”; “there is no disclaimer on the website explaining the nonexisting relationship between the parties”; and, because LEGO is a famous trademark, “[i]t is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration”.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant it is apparent that Complainant has rights in and to the LEGO Trademark. This conclusion is further supported by numerous previous decisions under the Policy regarding the same complainant and trademark, including, just to cite a few recent decisions, LEGO Juris A/S v. Suka LLC, WIPO Case No. D2011-1057 (transfer of <legohalo.org> and <legospiderman.net>); LEGO Juris A/S v. pcmaniabg, WIPO Case No. D2011-1055 (transfer of <bg-lego.com>) and LEGO Juris A/S v. Paul Cotten, WIPO Case No. D2011-1050 (transfer of <legovideogames.net>).1

As to whether the Disputed Domain Name is identical or confusingly similar to the LEGO Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “legostarwarstoy”), as it is well-established that the top-level domain name (i.e., “.net”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2: “The applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”

The addition of certain words, as here (that is, “toy”), can “exacerbate[] the confusing similarity between [Complainant’s] trademark and the [Disputed] Domain Name and increase[] the risk of confusion between the [Disputed] Domain Name and the trademarks.” Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill, WIPO Case No. D2010-2124 (citing Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC, WIPO Case No. D2003-0748 “when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”)).

Here, because the word “toy” is associated with the LEGO Trademark, this word increases the confusing similarity between the Disputed Domain Name and Complainant’s trademark. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the [c]omplainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the [c]omplainant conducts its business”); and Guccio Gucci S.p.A. v. Hainei Zhou, WIPO Case No. D2011-1017.

Further, inclusion of another party’s trademark (STAR WARS) in the Disputed Domain Name does not prevent a finding of confusing similarity, as a panel recently held in a dispute involving the same complainant as in this proceeding, LEGO Juris A/S v. lego-hogwartscastle, WIPO Case No. D2011-0884 (transfer of <lego-hogwartscastle.com>) (“the addition of a third party mark in a domain name does not, by itself, distinguish the domain name from the mark of the complainant”). The fact that Complainant has represented that it has rights to use the third-party trademark is also instructive. See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No. D2004-0246 (transfer of, inter alia, <crowneplazaramada.com>, where the complainant stated that it “has secured the consent of” the third-party trademark owner).

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that, inter alia, Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name because “no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO”; “[i]t is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name LEGO at the time of the registration”; using the Disputed Domain Name “to generate traffic to a web site displaying links to Amazon.com where the Complainant’s products are offered” is not a bona fide offering of goods or services; and “the links displayed on the website connected to the [D]isputed Domain Name should be seen as sponsored links as the Respondent most likely derives income once a visitor click on the links and is redirected to Amazon.com”.

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.

Accordingly, as a result of Complainants’ allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant argues that bad faith exists pursuant to paragraph 4(b)(iv), given that the website used by Respondent in connection with the Disputed Domain Name “has been connected to a web site containing links to Amazon.com where LEGO products were offered.” This arrangement appears to be similar to that described in another proceeding brought by the same complainant as here, LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913. In that case, the panel said: “The [r]espondent may be fully entitled to operate a webpage that redirects Internet users interested in [c]omplainant’s branded products to Amazon.com, but in the circumstances of this case the [p]anel is not persuaded that such right would extend to the use of a domain name which incorporates and is confusingly similar to the [c]omplainant’s trademark for such a purpose. As such, the [p]anel finds the effect of the [r]espondent[’s] use of the disputed [d]omain [n]ame is to intentionally attempt, for commercial gain, to divert Internet traffic to its website by creating a likelihood of confusion with the [c]omplainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site”. This Panel agrees.

Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy.

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 <legostarwarstoy.net> be transferred to Complainant.

Douglas M. Isenberg

Sole Panelist

Dated: August 29, 2011

1 Interestingly, Complainant has filed so many complaints under the Policy that it has attracted the attention of the domain name industry press. For example, a blog post on Domain Incite dated July 22, 2011, under the headline, “Lego overtakes Microsoft in cybersquatting cases,” said that Complainant “has filed 236 cases using the Uniform Dispute Resolution Policy since 2006, the vast majority of them since July 2009” and that Complainant “has never lost a case.” See http://domainincite.com/lego-overtakes-microsoft-in-cybersquatting-cases/

 

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