World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Giorgi Robitashvili

Case No. D2011-1562

1. The Parties

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

The Respondent is Giorgi Robitashvili of Tbilisi, Georgia.

2. The Domain Name and Registrar

The disputed domain name <legostarwarsgames.org> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2011. On September 16, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2011, the Registrar 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 September 22, 2011. Subsequent to the Complainant’s request on October 12, 2011, the proceedings were suspended between October 13 and November 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2011.

The Center appointed Martine Dehaut as the sole panelist in this matter on November 18, 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, Lego Juris A/S is the owner of trademarks LEGO protected and used in more than 130 countries. It has pointed out that LEGO trademark has been registered and used in Georgia, the Respondent’s country of residence, in connection with toys and other branded products like, inter alia computer hardware and software, books, and computer controlled robotic construction sets.

The Complainant owns also 1,000 domain names including LEGO. The list of the said domain names has been attached to the Complaint. Among these domain names, the following domain name registrations are mentioned: <lego-star-wars.net>, <lego-star-wars.org>, and <lego-starwars.us>.

According to the Complainant, the LEGO mark has been recognized as number eight (8) of the most famous trademarks and brands in the world. The Complainant indicates that the revenue for the Lego group in 2009 was more than USD 2.8 billion.

The Complainant declared that it has a license agreement since 1999 with the English company Lucasfilms Ltd regarding the development, manufacturing and sale of “Lego Star Wars” products. This line of products is very popular. Since “Star Wars” has been translated into the construction play pattern, the line has generated more than USD 1 billion in retail sales.

The Respondent, Giorgi Robitashvili, domicilied in Georgia, and the disputed domain name <legostarwarsgames.org> was registered on March 30, 2011.

According to the Complainant’s submitted evidence, the disputed domain name was used in relation with a website containing sponsored links.

The Complainant sent a cease and desist letter to the Respondent on May 9, 2011, requesting the voluntary transfer of the dispute domain name and offering a compensation for the expenses of registration and transfer fees. Despite several reminders, the Complainant did not receive any answer.

Consequently, The Complainant filed the Complaint with the Center on September 16, 2011 which was notified to Giorgi Robitashvili on September 22, 2011.

On October 11, 2011, the Respondent sent an e-mail to the Center, alleging that it had not understood the letter it received. Assuming that it had been asked do voluntary transfer the disputed domain name, it declared not to have been in a position to access to email account […]@yahoo.com for that purpose due to technical reasons. It confirmed that the disputed domain name was no longer in use. Consequently, pursuant to the Complainant’s request on October 12, 2011, the Center notified suspension of the proceedings up to November 11, 2011 to allow the Respondent to solve its technical problems. Without any further news from the Respondent, the proceeding has been reinstituted on November 9, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the dominant part of the disputed domain name <legostarwarsgames.org> comprises the verbal element “lego” which is identical to the trademark LEGO and to the domain names registered by the Complainant in many countries all over the world. A list of these registrations is enclosed to the Complaint.

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

The combination of the two trademarks STAR WARS and LEGO is to be considered confusingly similar to the asserted trademarks, so the concerned public being likely to think that the disputed domain name is related to the owners of the trademarks in question.

The addition of the term “games” as a suffix will not have any incidence on the overall impression of the disputed domain name, the dominant part of which will be recognized as the famous trademark LEGO.

The same argument applies to the addition of the Top-Level Domain (TLD), “org”.

Considering the reputation of the Complainant’s trademark LEGO, there is a risk that the public be misled and bound to regard the disputed domain name as related to the Complainant.

By using the trademark LEGO as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the trademark which may lead to its dilution or any other damage for the Complainant.

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

In effect it results from the investigations carried out by the Complainant that the Respondent does not own any registered trademark or tradenames corresponding to the disputed domain name.

Besides, it does not appear that the Respondent has been using the sign “lego” in any other way likely to give him legitimate rights in this name acquired through use.

The Complainant has not granted any authorization to the Respondent to use the trademark LEGO.

Considering the reputation of the trademark LEGO, it is highly unlikely that the Respondent would not have known the Complainant’s rights in LEGO at the date of the disputed domain name’s registration.

In using the disputed domain name to sponsor links to paid advertisings, the Respondent does not use the disputed domain name with a bona fide offering goods and services. On the contrary, it is used in bad faith to intentionally attempt to attract, for commercial gain, Internet users to the websites by creating a confusion with the Complainant’s trademark.

B. Respondent

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

6. Discussion and Findings

According to the paragraph 4(a) of the policy, the Complainant must prove each of the following three elements to obtain either the cancellation or the transfer of the dispute domain name:

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

(ii) the 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.

A. Identical or Confusingly Similar

The disputed domain name totally reproduces in the attack position, the Complainant’s well-known trademark LEGO associated with the trademark STAR WARS and the generic signs “games” and “org”. Thus the Panel has to decide whether the combination of the trademark LEGO with another trademark STAR WARS and the above-mentioned signs would have any impact in determining the confusing identity or similarity with the Complainant’s mark.

Firstly, the Panel confirms that the Complainant has provided relevant evidence of its trademark rights on LEGO which predates the disputed domain name registration.

As far as the combination with the trademark STAR WARS is concerned, the Panel has duly examined the evidence submitted by the Complainant. While no copy of the license agreement has been provided, the Panel has considered the written declaration of the Director Corporate Counsel dated May 5, 2009, attesting the existence of such an agreement. The said declaration has already been accepted by previous panel (see LEGO Juris A/s v. CV. Amanah, WIPO Case No. D2011-1464).

Besides, the Panel considers that the Complainant’s licensing relationship with Lucasfilms Ltd since 1999 has led to establish in the public mind a strong reputation on the LEGO products line incorporating STAR WARS.

Consequently, the disputed domain name combining the LEGO mark with the trademark STAR WARS is likely to mislead the public which is bound to link the disputed domain name with the LEGO mark and to consider that it is owned and used by the Complainant or any related company.

As stated by the Complainant, it has been decided in previous UDRP cases, that a domain name combining two separate trademarks is to be considered confusingly similar to the two asserted reproduced trademarks (see Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112).

Turning now to the generic TLD suffix, it is well established under the Policy that it does not play a relevant role for the purpose of determining the confusing similarity between a trademark and domain name containing such a suffix.

The same reasoning applies to the addition of the term “games” which is generic in respect with the concerned field of products and is not consequently sufficient to distinguish the disputed domain name from the Complainant’s trademark (see Harrods Limited v. Brad Shaw, WIPO Case No. D2004-0411).

Based on the foregoing, the Panel considers that the disputed domain name is confusingly similar to the LEGO trademark involved by the Complainant under the paragrah 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As expressly stated by the Complainant, it results from the searches it conducted that the Respondent does not own any trademark rights covering the disputed domain name and/or similar sign. Besides, no trace of any possible rights acquired by common use in the trade has been found. The Complainant confirms that it has not grant any authorization or license to the Respondent for the purpose of using its trademark and/or domain name and that “the Respondent is not an authorized dealer of the Complainant’s products and has never had business relationship with it”.

The Respondent has failed to respond to the Complaint and thus has not taken this opportunity to challenge the Complainant’s assertions in this respect.

Based on the above, the Panel considers that the Complaint complies with the conditions set forth in the paragrah 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the policy, the Complainant must prove that the Respondent has registered and is using the disputed domain name in bad faith. The paragraph 4(b)(iv) gives examples of circumstances likely to constitute evidence of both bad faith registration and bad faith use. The paragraph 4(b)(iv) particularly cites as a possible circumstance:

- the use of a domain name intentionally to attempt to attract, for commercial gain Internet users to the Respondent website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent website or location or of a product or service on the Respondent’s website or location.

The Complainant has submitted a screen print-out of an Internet page demonstrating that the disputed domain name was connected to a website containing sponsored links.

In the present case, the Complainant has declared and it has submitted evidence to support the allegation that the LEGO trademark has been recognized as number eight (8) of the most famous trademarks and brands in the world.

It goes without saying that the awareness of the LEGO mark and brands is recognized by the Panel.

The Panel considers as very unlikely that the Respondent would not have been aware of the LEGO mark and of the products line developed by the Complainant under the license agreement it has in relation with STAR WARS trademark.

Failing to reply to the Complaint, the Respondent has not given any information likely to legitimate its registration and use of the disputed domain name combining two famous trademarks, while it does not appear to have had any business and/or legal relationship with the Complainant. As stated in previous UDRP decisions, the selection of the domain name is an “indicium of bad faith”(see LEGO Juris A/S v .CV. Amanah, supra, and LEGO Juris A/S v. Online Toy Superstore, WIPO Case No. D2010-0839)

Besides, it results from the information and documents submitted by the Complainant that the disputed domain name was used in connection to a website containing sponsored links.

Such a use aims to mislead the Internet users for its own commercial gain and cannot be regarded as a legitimate noncommercial or fair use. Such a use constitutes bad faith under the precited paragraph 4(b)(iv) of the Policy. See LEGO Juris A/S v. Ken Rolling, WIPO Case No. D2011-1413.

Furthermore the Respondent failed to reply to the Complaint as well as to the cease and desist letter sent by the Complainant. The Respondent neither cooperated with the Complainant to transfer the disputed domain name while the proceedings were suspended. Such a passive attitude demonstrates a lack of actual and fair interest in the registration and use of the disputed domain Name.

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 <legostarwarsgames.org> be transferred to the Complainant.

Martine Dehaut
Sole Panelist
Dated: December 2, 2011

 

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