World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Sony Laksono, N/A / PrivacyProtect.org

Case No. D2011-2268

1. The Parties

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

The Respondent is Sony Laksono, N/A of Palembang, Indonesia / PrivacyProtect.org of Nobby Beach, Australia.

2. The Domain Name and Registrar

The disputed domain name <legostarwarscloneturbotank.org> (the “Domain Name”) is registered with UK2 Group Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2011. On December 23, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 23, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 28, 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 December 28, 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 December 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2012.

The Center appointed Dinant T.L. Oosterbaan as the sole panelist in this matter on January 26, 2012. 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

According to the evidence submitted by the Complainant there are multiple trademark registrations for the LEGO trademark in various countries. The Complainant submits that the LEGO mark is well known and famous. The Complainant owns more than 1000 domain names containing the term “Lego”. Since 1999 the Complainant has a license agreement with Lucasfilm Ltd. concerning the development, manufacturing and sale of Lego Star Wars products. The Lego Star Wars product line has generated substantial sales.

The Domain Name resolves to a website on which Lego products are offered for sale. Visitors to the website are redirected (clicked through) to Amazon.com to do the actual purchase of the products; such products are not counterfeit products.

The Domain Name <legostarwarscloneturbotank.org> was registered on May 27, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Domain Name is confusingly similar to the famous LEGO trademark as the Domain Name contains the LEGO trademark in its entirety. According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name in view of its trademark. There is no bona fide offering of goods or services as the Respondent has intentionally chosen the Domain Name based on the LEGO trademark in order to generate traffic to a site where Internet users are merely redirected to another site to do the actual purchase. The Complainant submits that the Respondent has registered and is using the Domain Name in bad faith, as the Respondent knew or should have known of the LEGO trademark of the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements to obtain an order that the Domain Name should be transferred:

(i) 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) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

The Panel is satisfied that the registrant of record for the Domain Name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark and secondly that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Complainant has established that it is the owner of various trademark registrations for LEGO. The Complainant’s registrations predate the creation date of the Domain Name. The Complainant has also demonstrated that the LEGO trademark is famous.

The Domain Name <legostarwarscloneturbotank.org> incorporates the entirety of the Complainant’s well-known LEGO trademark as its distinctive element. Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety. The Panel does not have to decide whether or not the Complainant has offered sufficient evidence that it has a right to act as licensee of Lucasfilm Ltd. concerning the use of any Star Wars trademark in the Domain Name, as the incorporation of the well-known LEGO trademark of the Complainant is sufficient to establish confusingly similarity.

The Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

In the opinion of the Panel, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. This is particularly true as the Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the famous trademark of the Complainant. Based on the evidence provided by the Complainant, it appears that the Domain Name is connected to a website containing sponsored links and provides a click-through to the Amazon.com website. In the Panel’s view, the Respondent makes use of the confusing similarity with the LEGO trademark of the Complainant, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, the Respondent cannot be considered as a reseller of the Lego Star Wars products, the reseller is Amazon.com, while the Respondent is acquiring revenue when a visitor clicks through on the links provided. The Respondent was not commonly known by the Domain Name nor has it acquired trademark rights. Under these circumstances the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. The Panel notes that the same result was reached in various other UDRP decisions, including LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913 (<mylegostore.com>), and LEGO Juris A/S v. Suka LLC, WIPO Case No. D2011-1057 (<legohalo.org> and <legospiderman.net>).

C. Registered and Used in Bad Faith

The Panel finds that the Domain Name has been registered and is being used in bad faith. The LEGO trademark is a well known and long existing trademark and the Respondent knew or should have known that the Domain Name included the trademark of the Complainant. Furthermore, the use of the Domain Name as described above is in this case a clear indication of bad faith.

The Panel finds that the above elements mean that the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the mark of the Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product on its website or location.

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 <legostarwarscloneturbotank.org> be transferred to the Complainant.

Dinant T.L. Oosterbaan
Sole Panelist
Dated: February 3, 2012

 

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