World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. DomainsByProxy.com / DBA David Inc

Case No. D2011-1288

1. The Parties

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

The Respondents are DomainsByProxy.com of Scottsdale, Arizona, United States of America and DBA David Inc, of Layton, Utah, United States of America (the “United States”).

2. The Domain Name and Registrar

The disputed domain name <legostarwarssnowtrooperarmypack.com> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2011. On July 27, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On July 29, 2011, Wild West Domains, Inc. 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 August 1, 2011 providing the registrant and contact information disclosed by Wild West Domains, Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 9, 2011.

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 the Respondents of the Complaint, and the proceedings commenced on August 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 30, 2011.

The Center appointed Luca Barbero as the sole panelist in this matter on September 6, 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 produces and sells construction toys and other products under the trademark LEGO since 1953. Today, the LEGO products are promoted and sold in more than 130 countries, including the United States, where the Respondents are based.

The Complainant is the owner of numerous trademark registrations for LEGO, including the Community Trademark Registration No. 39800, filed on April 1, 1996, in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42, and the United States Trademark Registration No. 1018875, filed on September 17, 1974, in classes (international class) 28 and (U.S. class) 22.

Since 1999, the Complainant Group has a license agreement with Lucasfilm Ltd. concerning the use of the trademark STAR WARS incorporated in the LEGO product line.

The Complainant operates its main site at “www.lego.com” and is the owner of more than 1000 domain names containing the mark LEGO, including <lego.us>, <legoland.us>, <legostore.us> and <legostarwars.us>.

The disputed domain name <legostarwarssnowtrooperarmypack.com> was registered on March 21, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends that <legostarwarssnowtrooperarmypack.com> is confusingly similar to the Complainant’s registered trademark LEGO, since the addition of the trademark STAR WARS and of the suffix “snowtrooperarmypack” does not determine any impact on the overall impression of the dominant part of the domain name, constituted by the mark LEGO, which is instantly recognizable as a world famous trademark.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that, according to its verifications, the Respondents are not the owners of any registered trademarks or trade names corresponding to the disputed domain name and anyway the Respondents have no rights or legitimate interests in the disputed domain name.

The Complainant highlights that no license or authorization of any other kind to use the trademark LEGO has been given by the Complainant to the Respondents.

The Complainant points out that the Respondents are not using the disputed domain name in connection with a bona fide offering of goods or services since it has been pointed to a web site displaying sponsored links to the “www.amazon.com” web site and other commercial sites, from which the Respondents have likely derived pay-per-click revenues. The Complainant also states that the Respondents published at the bottom of the site the misleading indication “Copyright © 2011 LEGO Starwars Snow Trooper Army Pack Reviews” and contends that the Respondents’ use of the disputed domain name is tarnishing the trademark LEGO.

With reference to the circumstances evidencing bad faith, the Complainant states that the Respondents were aware of the well-known trademark of the Complainant when registered the disputed domain name. With reference to the use of the disputed domain name, the Complainant states that the disputed domain name was connected to a web site containing links to “www.amazon.com” and other sponsored links to various online shops where LEGO products, as well as other products, were offered for sale.

The Complainant therefore concludes that the Respondents have been using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to their web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of their web site.

As an additional circumstance evidencing bad faith, the Complainant informs the Panel that a cease and desist letter was sent to the Respondents requesting a voluntary transfer of the disputed domain name and offering compensation for the out of pocket expenses, but no reply was received by the Respondents before the filing of the Complaint despite the Complainant’s reminders.

The Complainant also contends that the Respondents have engaged in a pattern of abusive registrations since it also registered the domain name <legoninjagokai.com>, which has been subject to a separate UDRP proceeding.

B. Respondents

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondents is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of a number of trademark registrations for LEGO, including the Community Trademark Registration No. 39800 filed on April 1, 1996, in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42, and the United States Trademark Registration No. 1018875, filed on September 17, 1974, in classes (international class) 28 and (U.S. class) 22. Moreover, as recognized in prior panel decisions, the trademark LEGO is indisputably well-known worldwide.

The Panel finds that the combination of the Complainant’s trademark with the trademark STAR WARS is not sufficient to exclude the confusingly similarity. As stated in Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112, a mere combination of two separate trademarks, is to be considered confusingly similar to each of the asserted trademarks. Moreover, in light of the Complainant’s license agreement with Lucasfilm Ltd. regarding the development, manufacturing and sale of LEGO and STAR WARS products, the disputed domain name seeks to trade off a commercial connection of the Complainant with Lucasfilm Ltd.

Pursuant to a number of prior decisions rendered under the Policy, also the addition of descriptive terms to a trademark is not a distinguishing feature.

See, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).

Moreover, the addition of the trademark STAR WARS and of the terms “snowtrooperarmypack” is not sufficient to exclude the likelihood of confusion between the disputed domain name and the Complainant’s trademarks since the resulting domain name corresponds to the name of the Complainant’s product “LEGO Star Wars Snow Trooper Army Pack”.

See, along these lines, LEGO Juris A/S v. F.H.U. Betternet Rafal Biegun, WIPO Case No. D2011-0939:

“The disputed domain name fully incorporates the famous trademark LEGO. The other element of the disputed domain name is ‘ninjago’, which is also the name of a product line of the Complainant. The Panel finds that the disputed domain name is confusingly similar to the well-known trademark LEGO, because the mark is included in the disputed domain name in its entirety and the mark is in a dominating role in the disputed domain name due to its fame. The addition of ‘ninjago’, a product line of the Complainant, adds to the likelihood of confusion because it gives the impression that the domain name is owned by or affiliated with the Complainant or its respective product line”.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondents have no rights or legitimate interests in respect of the disputed domain name. The Respondents may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(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.”

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondents. If the Respondents fail to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).

In the case at hand, by not submitting a Response, the Respondents have not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondents and the Complainant. The Respondents are not licensees of the Complainant, nor have the Respondents otherwise obtained any authorization to use the Complainant’s trademarks.

Furthermore, there is no indication before the Panel that the Respondents are commonly known by the disputed domain name, have made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that they intend to make a legitimate, noncommercial or fair use of the disputed domain name.

The Panel notes that the disputed domain name has been pointed to a web site which displays links mainly aimed at directing visitors to third party commercial web sites, including the web site Amazon.com, where LEGO products are offered for sale.

The Panel finds that the use of the disputed domain name in connection with a web site which merely redirect users to locations at which LEGO products and other goods may be purchased from a third party does not constitute a legitimate, noncommercial use of the disputed domain name under the Policy. See, along these lines, LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913.

Thus, in light of the above, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the holder has registered or 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 holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location.

In light of the well-known character of the Complainant’s trademark, the Panel finds it unlikely that the Respondents would not have been aware of the Complainant's trademark when registering the domain name. The fact that the disputed domain name includes the name of one of the Complainant's products further indicates that the disputed domain name was registered specifically with the Complainant and its product in mind.

The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines, see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated also in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868,

“...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.

The Panel finds that Internet users, in light of the contents of the web page linked to the disputed domain name, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondents’ web site. Moreover, the Respondents have likely profited by earning pay-per-click revenues (see, inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).

The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondents have attempted to attract Internet users to their web site for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of their web site and of the sites linked thereto.

In accordance with prior decisions, the Panel also finds that a failure to respond to a cease and desist letter can be evidence of bad faith. See, e.g., Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003, in which the Panel stated: “[a]ny such bad faith is compounded when the domain name owner, upon receipt of notice that the disputed domain name is identical or confusingly similar to a registered trade mark, refuses to respond”.

As an additional circumstance of bad faith, the Respondents also registered another domain name confusingly similar to the Complainant’s trademark, <legoninjagokai.com>, which has been subject to a separate UDRP proceeding and has been used by the Respondents in the very same manner as the disputed domain name.

In view of the above, the Panel finds that the disputed domain name was registered and is being used 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 domain name <legostarwarssnowtrooperarmypack.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Dated: September 20, 2011

 

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