WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Ji xiangpeng

Case No. D2011-1267

1. The Parties

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

The Respondent is Ji xiangpeng of Jinan, China.

2. The Domain Name and Registrar

The disputed domain name <legostarwars3.org> is registered with Name.com LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2011. On July 25, 2011, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On July 26, 2011, Name.com LLC 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 July 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2011.

The Center appointed David Levin Q.C. as the sole panelist in this matter on August 25, 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 has been since 1953 and is currently the owner of numerous trademark registrations relating to the LEGO products, including registration in China. LEGO products are regularly sold in about 130 countries around the globe including China. The Complainant is also the owner of more than 1000 domain names containing the term “lego”, including, for example, <lego.cn>, <lego.com.cn>, <lego.org.cn>, <legoasia.cn>, <legoland.cn>, <legouniverse.cn> and <legostore.com.cn>. Almost all of these domain names include the LEGO trademark as the first four characters of what is usually a composite domain name.

The disputed domain name was registered on February 23, 2011

5. Parties’ Contentions

A. Complainant

LEGO opened its flagship store in China at the World Shopping Mall in Beijing in September 2007 and Mr. Knudstorp who is the president of LEGO expects that LEGO will be the market leader by 2020. LEGO has been present in China for 15 years. The Chinese trademark registration matured into registration as early as in 2004, which is 7 years prior to the date when the disputed domain name was registered. The Complainant is also the owner of more than 1000 domain names containing the term ”lego”.

The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive website under the domain names <lego.com> and <lego.com.cn>.

The LEGO Group has a license agreement with Lucasfilm Ltd. concerning the use of the trademark STAR WARS incorporated in the LEGO product line.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. The Complainant contends that it meets these requirements in that, on the evidence:

(i) the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights;

(ii) the Respondent lacks rights or legitimate interests in the disputed domain name; and

(iii) the Respondent registered and uses the disputed domain name in bad faith.

The Complainant maintains that on the evidence produced it has established each of the three elements required.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The dominant part of the disputed domain name comprises the word ”lego”, which is identical to the registered trademark LEGO, a mark registered by the Complainant in and as part of numerous trademark registrations and domain names throughout the world. The use of the Complainant’s world renowned mark LEGO as the initial four characters of the disputed domain name makes the disputed domain name confusingly similar to the Complainant’s trademark. Given its reputation, the impression conveyed by the Respondent’s use of LEGO mark is that the website resolving from the disputed domain name is in some manner authorized by or connected with the Complainant, which the Panel is satisfied is a completely false conclusion.

In addition to the trademark LEGO, the disputed domain name also comprises the trademark STAR WARS. The addition of the suffix “starwars3” to a world renowned mark does nothing to render the disputed domain name any less confusingly similar to the LEGO mark. In addition to the trademark LEGO, the disputed domain name includes in the added suffix a reference to another well-known mark, the trademark STAR WARS. In Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC WIPO Case No. D2003-0112 it was held that a mere combination of two separate trademarks, is to be considered confusingly similar to each of the asserted trademarks.

This Panel is in any event satisfied on the evidence that the Complainant has a licence agreement with Lucasfilm Ltd “in relation to the development, manufacturing and marketing of LEGO® Star Wars™ products”. Thus the addition of the suffix does not distance the Respondent from the Complainant’s mark but in fact seeks to trade off a commercial connection of the Complainant with Lucasfilm Ltd. This is relevant to consideration of registration and use in bad faith.

The additional suffix “3” does not detract from the overall confusion. It does not have any impact on the overall impression of the dominant part of the name, LEGO, instantly recognizable as a world famous trademark. In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh WIPO Case No. D2004-0488 it was stated that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. The disputed domain name must therefore be considered to be confusingly similar with the Complainant’s trademark.

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

B. Rights or Legitimate Interests

There is no evidence that the Respondent has any rights to or legitimate connection with the mark of the Complainant or that the Respondent has rights or legitimate interests in the disputed domain name. The Respondent does not assert any such entitlement, and the Panel finds that it has no rights or legitimate interests to use the mark LEGO in or in connection with its business or domain name. The Panel accepts the contention advanced by the Complainant that in circumstances where its mark is so well-known throughout the world, including in China, it is very likely that any use of it by the Respondent cannot be a bona fide use.

The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

At the time of filing the Complaint the website connected to the disputed domain name had been de-activated. Before the issue of a cease and desist letter the disputed domain name was connected to a website based on a registered trademark in order to generate traffic to a website displaying sponsored links referencing the trademark LEGO and other links. The use of the disputed domain name to direct Internet traffic to sponsored links is not a bona fide use of the disputed domain name: see earlier UDRP cases including one involving the LEGO trademark, LEGO Juris A/S v. J.h.Ryu WIPO Case No. D2010-156, where the panel stated: “Further, Respondent’s use of the Disputed Domain Name to sponsor links to paid advertising is not use of the Disputed Domain Name in connection with a bona fide offering of goods or services.”

This issue was also discussed in LEGO Juris A/S v. Jan Cerny, WIPO Case No. D2010-0707. No evidence has been found that the Respondent uses the disputed domain name as a company name or that it has any other legitimate rights in the name LEGO.

Although the Respondent’s website is currently disabled, it does not prevent the Respondent from reactivating it again at any time.

The Panel accepts the evidence that on entering the website using the disputed domain name there were (prior to deactivation) sponsored links displayed. The inference which the Panel draws, in the absence of any Response from the Respondent, is that the Respondent derives or has established the site with the intention to derive income to itself once a visitor clicks on activated links. This is an example of bad faith registration and use. Given the reputation of the LEGO brand and the unlikelihood of the Respondent selecting the disputed domain name for registration by chance, the Panel infers that the registration of the disputed domain name intended to draw income from the improper use of the connection to the Complainant was registration in bad faith.

In LEGO Juris A/S v. Floyd Goddard/ Oneandone, Private Registration WIPO Case No. D2010-0544, the panel stated: “The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of the Complainant’s trademarks and activities at the time of the registration of the disputed domain may be considered an inference of bad faith.”

This Panel comes to the like conclusion and draws the same inference from the conduct of the Respondent as to bad faith registration in this case.

The Complainant has established that it attempted to make contact with the Respondent to encourage it to voluntarily give up the registration of the disputed domain name. No response was ever received to a series of attempts at obtaining a transfer of the disputed domain name, notwithstanding that the Complainant was generously prepared to offer compensation in the form of repayment of the Respondent’s expenses of registration and transfer fees (not exceeding out of pocket expenses).

In the circumstances the Panel is reinforced in its conclusion that the registration of the disputed domain name was undertaken in bad faith and the continued use of the disputed domain name is also 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 name <legostarwars3.org> be transferred to the Complainant.

David Levin Q.C.
Sole Panelist
Dated: September 4, 2011