WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Domains by Proxy, Inc., DomainsByProxy.com / DBA David Inc.
Case No. D2011-1839
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 Domains by Proxy, Inc., DomainsByProxy.com of Arizona, United States of America / DBA David Inc of Utah, United States of America (the “U.S.” or the “United States”).
2. The Domain Names and Registrar
The disputed domain names <legoninjagospinjitzu.com> and <legoninjagozane.com> (“the Disputed Domain Names”) are registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2011. On October 25, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Disputed Domain Names. On October 26, 2011, Wild West Domains, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 11, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 14, 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 Respondent of the Complaint, and the proceedings commenced on November 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2011.
The Center appointed Jacques de Werra as the sole panelist in this matter on December 20, 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, which is based in Denmark, is the owner of the LEGO trademark which is used in connection with the famous LEGO brands of construction toys and other LEGO branded products. The Complainant and its licensees, through their predecessors, commenced use of the LEGO trademark in the U.S. during 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown. By way of example, the revenue for the LEGO Group in 2009, was more than USD 2,8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States, where the Respondent is based.
The Complainant is the owner of the LEGO trademark which is registered on a global basis (“the Trademark”) and is among the best-known trademarks in the world. The Complainant is also the owner of more than 1,000 domain names containing the term LEGO.
The Disputed Domain Names have been created on March 21, 2011. They are used in a domain parking page system (as link farms) and point to various products and services including toys and games (some of which compete with those of the Complainant).
The Complainant tried to contact the Respondent on May 4, 2011 through two separate cease and desist letters, sent by email. The Complainant advised the Respondent that the unauthorized use of the Trademark within the Disputed Domain Names violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the Disputed Domain Names and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). No response was received so two reminders were sent on May 17 and June 15, 2011, which remained unanswered.
5. Parties’ Contentions
The Complainant claims that the Disputed Domain Names are confusingly similar to the Trademark because their initial distinctive element consists of the Trademark to which suffixes have been added. These suffixes however do not affect the overall impression of the Disputed Domain Names given that these suffixes are elements of a new line of products launched by the Complainant. “Ninjago” is indeed a LEGO product line that was released this year (2011), whereby the Complainant has video games, various different products and models, videos and a specific section on its website presenting the LEGO Ninjago product line which is named “Ninjago Masters of Spinjitzu”, and one of the characters of which is named “Zane”. Consequently, the Disputed Domain Names which contain suffixes relating to this new product line (i.e. “ninjagozane” and “ninjagospinjitzu”) strengthen the impression that the Disputed Domain Names belong to, or are affiliated with the Complainant.
The Respondent has no rights or legitimate interests in the Disputed Domain Names because the Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Disputed Domain Names. The Complainant has also not found anything that would suggest that the Respondent has been using the Trademark in any other way that would give them any legitimate rights in such name. Consequently the Respondent may not claim any rights established by common usage. The Complainant has further not granted any license or authorization of any other kind to use the Trademark in any manner. It is further highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the Trademark at the time of the registration of the Disputed Domain Names. It is rather obvious that it is the fame of the Trademark that has motivated the Respondent to register the Disputed Domain Names. The Respondent is today not using the Disputed Domain Names in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally registered the Disputed Domain Names in order to generate traffic to web sites displaying sponsored links to various online shops and lotteries.
The Disputed Domain Names were registered in bad faith because there is no doubt that the Respondent was aware of the rights the Complainant has in the Trademark and the value of said trademark at the time of registration of the Disputed Domain Names. By using the Disputed Domain Names with parking services, the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for its own commercial gain which constitute a bad faith use of the Disputed Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the 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 domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trademark acquired through its global use and registration which predate by many decades the dates of registration of the Disputed Domain Names. The Panel has further no hesitation in finding that the Trademark is a well-known trademark as held by many other panels. See e.g., LEGO Juris A/S v. Tang Qingming, WIPO Case No. D2011-1526 (referring to other WIPO UDRP cases).
In this case, the Disputed Domain Names integrate the Trademark in full to which it adds suffixes (i.e. (“ninjagozane” and “ninjagospinjitzu”) which are distinctive terms which expressly refer to a recent product line launched this year (2011) by the Complainant. The Panel consequently holds that the addition of these distinctive suffixes does not distinguish the Disputed Domain Names from the Trademark in any manner, but rather reinforces the risk of confusing similarity between them.
The Panel consequently finds that the Disputed Domain Names are confusingly similar to the Trademark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the respondent has rights or legitimate interests in the disputed domain name:
“(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.”
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the Trademark. The Complainant has prior rights in the Trademark which precede the Respondent’s registration of the Disputed Domain Names by decades. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The evidence further suggests that the Disputed Domain Names are used by the Respondent in connection with commercial landing pages which feature various products and services including games and toys some of which are competing with those offered by the Complainant. The use of the Trademark in this manner without the authorisation of the Complainant does not give rise to any rights or legitimate interests in the Disputed Domain Names on the part of the Respondent.
The Respondent has failed to show that it has acquired any trademark rights in respect of the Disputed Domain Names or that the Disputed Domain Names are used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the Disputed Domain Names or to show that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names.
The Panel consequently finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the Disputed Domain Names.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel first acknowledges that the Complainant is the owner of the Trademark which is highly distinctive and which has been used for decades. Therefore, the Panel can validly infer that the Respondent had or should have had knowledge of the Complainant’s Trademark and business at the time when it registered the Disputed Domain Names as they incorporate the Complainant’s Trademark in its entirety with the addition of distinctive suffixes which refer to a most recent line of products launched by the Complainant. Consequently, it is not conceivable that the Disputed Domain Names have been registered by the Respondent without having in mind the Complainant and the Complainant’s products.
Paragraph 4(b)(iv) of the Policy lists one of the typical situations which, if found, shall be evidence of the registration and use of a domain name in bad faith:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
From the records of the file, it appears that the Respondent is using the Disputed Domain Names in connection with web portal sites providing sponsored links for various services (in a link farm system), including games and toys of competitors of the Complainant. It can thus be considered that the Respondent has set up this system in the expectation of some financial gain through a pay-per-click or click-through system which constitutes bad faith use of the Disputed Domain Names. See Public Storage v. PrivacyProtect.org / Trade Out Investments Ltd, WIPO Case No. D2011-0452.
Therefore, the circumstances of this case lead the Panel to consider that the Respondent was aware of the Complainant’s Trademark and of its corresponding toys and games and thus registered the Disputed Domain Names and uses them in bad faith in order to attract Internet users by creating a likelihood of confusion with the Complainant’s Trademark for the Respondent’s commercial gain. See Confédération Nationale du Crédit Mutuel v. Joanna Rosen, WIPO Case No. D2010-1348.
For these reasons, the Panel finds that the third element of the Policy is established, and that the Disputed Domain Names were registered and are being used in bad faith by the Respondent, pursuant to paragraph 4(a)(iii) of the Policy.
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 Names <legoninjagospinjitzu.com> and <legoninjagozane.com> be transferred to the Complainant.
Jacques de Werra
Dated: December 28, 2011