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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. David McWilliams

Case No. D2014-0742

1. The Parties

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

The Respondent is David McWilliams of Perth, Western Australia, Australia

2. The Domain Names and Registrar

The disputed domain names <legominecraftdeals.com>, <legosimpsons.net> and <legosimpsonsset.com> are registered with FastDomain, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 7, 2014. On May 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 8, 2014, 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 May 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 6, 2014.

The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on June 17, 2014. 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 the leading global manufacturer of toys under the trade mark LEGO and also of all other trademarks used in connection with it.

LEGO has been registered as trademark in numerous countries all over the world, including Australia, where the Respondent is located. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in Australia and elsewhere.

No license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO.

The Complainant also owns more than 2,400 domain names containing the term "lego", including the country code Top-Level Domain ("ccTLD") for Australia ".au" and maintains an extensive website under the domain name <lego.com>, its official website.

The trademark LEGO is globally recognized. In 2000, the Fortune magazine and the British Association of Toy Retailers named LEGO the Toy of the Century and recently, the list of the official top 500 Superbrands for 2014, provided by Superbrands UK, shows LEGO as winner in the category "Child Products - Toys and Education". Moreover, the Reputation Institute nominated LEGO as number 10 on their list of "the World's Most Reputable Companies".

The Complainant holds licenses to develop, manufacture and sell LEGO Minecraft and LEGO "The Simpsons" products as part of a partnership with Mojang AB, respectively Twentieth Century Fox Licensing and merchandising.

The disputed domain name <legominecraftdeals.com> was registered on December 29, 2013, and the disputed domain names <legosimpsonsset.com> and <legosimpsons.net> were both registered on January 10, 2014.

The disputed domain name <legominecraftdeals.com> is currently connected to a website offering LEGO Minecraft products. There is a disclaimer on the website stating: "LEGO, the LEGO logo, DUPLO, LEGENDS OF CHIMA, MINDSTORMS, HEROICA and the Minifigure are trademarks and/or copyrights of the LEGO Group. Minecraft, the Minecraft logo are tademarks of and/or copyrights of Mojang AB. <legominecraftdeals.com> is not associated with Lego or Minecraft in any way".

At the present date, the disputed domain names <legosimpsonsset.com> and <legosimpsons.net> direct the user to "parked" websites with sponsored links.

5. Parties' Contentions

A. Complainant

The Complainant is the manufacturer of toys under the trademark LEGO and also of all other trademarks used in connection with it, which has been registered as trademarks in numerous countries all over the world, including in Australia, where the Respondent is located.

The Complainant declares that licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in Australia and elsewhere and argues that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO.

The Complainant also owns more than 2,400 domain names containing the term "lego", including the ccTLD designation for Australia ".au" and maintains an extensive website under the domain name <lego.com>, its official website. The Complainant submits it is its' strict policy that all domain names containing the word LEGO should be owned by the Complainant.

The Complainant claims that the trademark LEGO is globally recognized.

The Complainant submits that the dominant part of the disputed domain names <legominecraftdeals.com>, <legosimpsonsset.com> and <legosimpsons.net> comprises the term "lego", which is identical to the registered trademark LEGO. The disputed domain names <legominecraftdeals.com>, <legosimpsons.net> and <legosimpsonsset.com> comprise the term "lego", adding as suffixes the generic terms "minecraft deals", "simpsons" and "simpsons set" and adding either the generic Top-Level Domains ("gTLD") ".com" or ".net".

The Complainant argues that the addition of the gTLD ".com" or ".net" does not have any impact on the overall impression of the dominant portion of domain names and considers it therefore irrelevant to determine the confusing similarity between the trademark and the domain names.

The Complainant holds licenses to develop, manufacture and sell LEGO Minecraft and LEGO "The Simpsons" products as part of a partnership with Mojang AB, respectively Twentieth Century Fox Licensing and merchandising.

The Complainant alleges that once the disputed domain name <legominecraftdeals.com> was registered on December 29, 2013, and <legosimpsonsset.com> and <legosimpsons.net> on January 10, 2014, it is clear that the Respondent knew of the Complainant's legal rights in the name LEGO at the time of the registrations.

B. Respondent

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

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights". Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has "no rights or legitimate interests in respect of the domain name". Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the "domain name has been registered and is being used in bad faith". Policy, paragraph 4(a)(iii).

A. Identical or Confusingly Similar

The disputed domain names <legominecraftdeals.com>, <legosimpsons.net> and <legosimpsonsset.com> comprise the word "lego", adding as suffixes the generic terms "minecraftdeals", "simpsons" and "simpsonsset" and adding also the gTLD ".com" and ".net".

It has been clearly held by previous UDRP panels that the addition of a generic term does not limit the risk of confusion between a complainant's trademark and a disputed domain name (see Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488).

Moreover, the fact that LEGO commercializes LEGO The Simpsons and LEGO Minecraft highly strengthens the association with the trademark LEGO, when adding the generic terms "minecraft" and "simpsons" with the trademark LEGO on the disputed domain names.

In LEGO Juris A/S v. Nasirudin, EazySmart.com, WIPO Case D2011-0617, mentioned by the Complainant, the panel stated that: "…for the purposes of paragraph 4(a)(i) of the Policy the disputed domain name <lego-harrypotterhogwartscastle.com> is confusingly similar to the trademark LEGO. The additional component "harrypotterhogwartscastle", easily read as "Harry Potter Hogwarts Castle", is found not to detract from confusing similarity but to enhance it, since according to the evidence there is a business relationship between the respective owners of the trademarks LEGO and HARRY POTTER". The Panel finds the same applies to this case.

Concerning the gTLD, as in The Sonae SGPS, S.A. v. Luso Digital - Web Hosting Services, WIPO Case No. D2008-1907, the Panel considered that "the addition of the suffix ".com" is for registration purposes only, being a requirement of the Internet domain name system, and does not serve as a distinguishing feature for trademark purposes".

Accordingly, the requirement of Policy paragraph 4(a)(i) is fulfilled.

B. Rights or Legitimate Interests

Following Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666 "in order for a complainant to prove that a respondent has no rights or legitimate interests in the Disputed Domain Name, UDRP case law has consistently held that it is sufficient for a complainant to prove a prima facie case (see amongst others, 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). Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the panel".

The Panel finds that the Complainant has made out its prima facie case since the Respondent did not reply to the Complainant's contentions to demonstrate its rights or legitimate interests.

Moreover, given that LEGO is a trademark globally recognized, unless the respondent has acquired the right to use the word "lego" in a domain name through an authorization or license from the trademark holder, which has not occurred in this case, the Panel cannot find any legitimate reason for the Respondent to use this word in a domain name.

Based on this, and as further discussed below under the third element in more detail, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The disputed domain name <legominecraftdeals.com> directs to a website currently being used to resell the Complainants products LEGO Minecraft. The Respondent is not an authorized reseller nor has he any license or authorization to use the trademark LEGO.

The fact that the Respondent uses a disclaimer on the website for <legominecraftdeals.com> clearly suggests it is aware, of the Complainant's rights in the LEGO trademark. Moreover, the panel notes that he LEGO Group's Fair Play Policy, publicly available on the Complainants' official website clearly states that "a disclaimer will not serve to undo an improper trademark use. Therefore, use of the LEGO logo or improper use of the LEGO trademark cannot be made proper by including a disclaimer".

The Panel therefore, finds that the Respondent's improper use of the trademark being aware of the Complainants rights suggests bad faith on the part of the Respondent.

The disputed domain names <legosimpsonsset.com> and <legosimpsons.net> are currently directing users to "parked" websites with sponsored links.

As held by previous UDRP panels (see Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2002-0946; Inter Ikea Systems B.V. v. Daniel Woodson, WIPO Case No. D2011-1933), the use of a domain name that is confusingly similar to a trademark in order to attract Internet users to the Respondent's website clearly suggests bad faith.

Under these circumstances, the Panel finds that the Respondent registered and is using the disputed domain names 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 names, <legominecraftdeals.com>, <legosimpsons.net> and <legosimpsonsset.com> be transferred to the Complainant.

Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: July 1, 2014

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