About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Jyotirmoy Biswas

Case No. D2018-0032

1. The Parties

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

The Respondent is Jyotirmoy Biswas of Magura, Bangladesh.

2. The Domain Names and Registrar

The disputed domain names <thelego.ninja> and <thelegoninjagomoviefull.com> are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2018. On January 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 10, 2018, 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 for the disputed domain names.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2018.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on February 16, 2018. 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 is the intellectual property holder of the toy-making LEGO Group, having its headquarters in Denmark. Over the years, the LEGO Group has expanded the use of the LEGO brand from its famous construction toys to other products, such as computer hardware and software, books, videos, and computer controlled robotic construction sets. The brand was also built into a successful movie franchise with computer-animated films featuring LEGO toys. The LEGO NINJAGO Movie, which is based on the LEGO NINJAGO toy line, is the third installment of the franchise and was released in the United States on September 22, 2017, grossing USD 121 million worldwide.

The Complainant is the owner of several trademark registrations for the term LEGO (including United States trademark No. 1018875, registered on August 26, 1975; United States trademark No. 2245652, registered on May 18, 1999; European Union trademark No. 39800, registered on October 5, 1998) as well as United States trademark No. 4726793, registered on April 28, 2015, for the term NINJAGO. It additionally holds more than 5,000 domain names containing the term LEGO.

The Respondent is a private person based in Bangladesh.

The disputed domain names, <thelego.ninja> and <thelegoninjagomoviefull.com>, were both registered on September 14, 2017. At the time of filing of the Complaint, both disputed domain names resolved to websites offering streaming and download access to the full LEGO NINJAGO Movie free of charge.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant contends the following:

The disputed domain names are identical or confusingly similar to the Complainant’s registered trademarks, creating an obvious risk of confusion. The disputed domain name <thelego.ninja> captures the Complainant’s LEGO trademark, merely adding the word “the”. The disputed domain name <thelegoninjagomoviefull.com> encompasses the Complainant’s LEGO and NINJAGO trademarks in its dominant part. The addition of the words “the”, “movie”, and “full” can be interpreted to mean the full version of the LEGO NINJAGO Movie, which is offered on the website associated with this disputed domain name.

The Respondent has no rights or legitimate interests in respect of the disputed domain names, as the Respondent, identified by the WhoIs database as one Jyotirmoy Biswas, is not commonly known by the disputed domain names. The Respondent is not a licensee of the Complainant nor was the Respondent authorized in any way to use the Complainant’s trademarks. The disputed domain names and the associated metadata are designed to attract Internet users who search for the Complainant’s LEGO NINJAGO Movie to the Respondent’s websites, offering pirated versions of the movie. When users click to play the movie, they are redirected to third party websites offering pirated movies. Therefore, the Respondent cannot invoke a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The disputed domain name was registered and is being used in bad faith. Due to the considerable reputation of the LEGO trademark, the success of the LEGO movie franchises, and the wide publicity of the LEGO NINJAGO Movie, the Respondent should be considered to have had knowledge of the Complainant and its trademark rights when registering the disputed domain names. The Respondent’s registration of the disputed domain names shortly before the official release of the LEGO NINJAGO Movie suggests that the Respondent opportunistically registered the disputed domain names to improperly capitalize on the publicity of the upcoming movie. The Respondent’s use of the disputed domain names in relation to websites offering pirated versions of the Complainant’s movie constitutes a disruption of the Complainant’s business. As a further indication of bad faith, the Respondent has engaged in a pattern of cybersquatting, since it currently holds several other domain names similarly including recent movie titles and misappropriating the trademarks of well-known brands and businesses.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has proved that it has rights in the trademarks LEGO and NINJAGO.

The disputed domain name <thelego.ninja> is identical with the Complainant’s famous LEGO trademark, but for the addition of the definite article “the”. Due to the combination with the TLD “.ninja”, there is a high probability that Internet users will associate the disputed domain name with the LEGO NINJAGO Movie and therefore with the Complainant.

The disputed domain name <thelegoninjagomoviefull.com> contains the Complainant’s LEGO and NINJAGO trademarks in their entirety and, leaving aside the word “full”, is identical with the name of the Complainant’s movie. As correctly stated by the Complainant, the addition of the word “full” is most probably meant to indicate that the full movie is available on the website associated with the disputed domain name.

Based on the above, the Panel finds that the disputed domain names are identical or confusingly similar with the Complainant’s registered trademarks.

The Complainant has thus fulfilled the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a strong prima facie case that the Respondent lacks any rights or legitimate interests in relation to the disputed domain names. Moreover, the Respondent has failed to submit a Response or make any effort to attempt to refute this prima facie case.

The record is clear that the Complainant did not authorize or license the Respondent to use its LEGO and NINJAGO trademarks. The Respondent cannot claim to be known by the disputed domain names. The Respondent has not been using the disputed domain names in connection with a bona fide offering of goods or services or with noncommercial or fair use purposes, but to offer access to pirated content, while at the same time attempting to impersonate the Complainant, inter alia, by displaying the official logo as well as screen captures from the LEGO NINJAGO Movie. Consequently, the Panel determines that the Respondent has no rights or legitimate interests in the disputed domain names.

Therefore, the Complainant has also met the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the Complainant’s credible contentions and the overall circumstances of this case, the Panel finds that the Respondent intentionally registered and used the disputed domain names incorporating the Complainant’s well-known trademarks in order to attract Internet users to its websites offering pirated media content, which cannot constitute a good faith, bona fide use of the disputed domain name. Particularly by offering unauthorized access to the Complainant’s movie free of charge, the Respondent has evidently sought to disrupt the Complainant’s business, which constitutes bad faith within the meaning of paragraph 4(b)(iii) of the Policy.

Furthermore, by registering the two very similar disputed domain names infringing on the Complainant’s rights as well as several other domain names targeting well-known brands, the Respondent has engaged in a pattern of abusive domain name registrations, indicating its bad faith pursuant to paragraph 4(b)(ii) of the Policy.

The Complainant has therefore satisfied the requirement under paragraph 4(a)(iii) of the Policy.

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 <thelego.ninja> and <thelegoninjagomoviefull.com> be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist
Date: February 28, 2018

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/