World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S, v. Lego Star Wars Minifigs

Case No. D2011-1231

1. The Parties

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

The Respondent is Lego Star Wars Minifigs of Klamath Falls, Oregon, United States of America (“U.S.A.”).

2. The Domain Name and Registrar

The disputed domain name <legostarwarsminifigs.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2011. On July 19, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 21, 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 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2011.

The Center appointed David Levin Q.C. as the sole panelist in this matter on August 22, 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 has been since 1953 and is currently the owner of numerous trademark registrations relating to the LEGO products, including registration in U.S.A.. 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. Almost all of these domain names include the LEGO trademark as the first four characters of what is usually a composite domain name, such as <legomoviesite.org> or <legonews.com>, for example.

The disputed domain name was registered on February 3, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant has established to the satisfaction of the Panel that the trademark of LEGO is one of the world’s most recognized marks, lists 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.

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;

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

(iii) the Respondent registered and uses 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 LEGO mark is that the website resolving from the disputed domain name is in some manner authorised by or connected with the Complainant, which the Panel is satisfied is a completely false conclusion.

The addition of the suffix “starwarsminifigs" 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 trademark STAR WARS. 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. This Panel is in any event satisfied on the evidence that the Complainant “has a license agreement with Lucasfilm Ltd. regarding the development, manufacturing and sale of LEGO® Star Wars™ products”. Thus the addition of the suffix does not distance the Respondent from the Complainant’s mark but in fact seeks to trade off a commercial connection of the Complainant with Lucasfilm Ltd. This is relevant to consideration of registration and use in bad faith.

So far as the Complainant is concerned, the addition of the suffix does nothing to remove the confusion inherent in the use of the mark LEGO at the commencement of the disputed domain name. This is likely to reinforce any Internet user’s reasonable belief that the site has authorisation from or a connection with the Complainant.

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.

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 Panel accepts the evidence that on entering the website using the disputed domain name there are sponsored links displayed which redirect the user, upon clicking the HTML links, to different online shops. The inference which the Panel draws, in the absence of any response from the Respondent, is that the Respondent derives income to itself once a visitor clicks on the links. This is an example of bad faith registration and use. Given the reputation of the LEGO brand and the unlikelihood of the Respondent selecting the disputed domain name for registration by chance the Panel infers that the registration of the site intended to draw income from the improper use of the connection to the Complainant was registration in bad faith.

Bad faith is also established from the matters set out above in relation to the addition of the suffix which included the word “starwars”.

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.

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 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 <legostarwarsminifigs.com> be transferred to the Complainant.

David Levin Q.C.
Sole Panelist
Dated: September 6, 2011

 

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