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WIPO Arbitration and Mediation Center


LEGO Juris A/S v. "Private Whois legopiratesofthecaribbeansets.com"

Case No. D2011-2271

1. The Parties

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

The Respondent is "Private Whois legopiratesofthecaribbeansets.com" of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <legopiratesofthecaribbeansets.com> is registered with Internet.bs Corp.

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 Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On December 23, 2011, Internet.bs Corp. 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 January 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2012.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on February 1, 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

The Complainant, seated in Denmark, has been for several years the right holder of numerous verbal trademarks consisting of the word “LEGO” throughout the world, including in the Bahamas. All these trademarks have been registered in particular but not only under class 28 of the Nice Classification.

The Complainant also owns hundreds of domain names consisting in whole or in part of the word “LEGO”. It in particular operates under the URL address “www.lego.com/piratesofthecarribean/en-us/Default.aspx” a webpage dedicated to its products’ offering related to the Pirates of the Carribean.

In a survey conducted by Superbrand UK in 2009 regarding Superbrands Top 500, the LEGO trademark was ranked as the 8th most powerful brand in the world.

The Respondent registered the domain name <legopiratesofthecaribbeansets.com> on July 8, 2011.

On December 8, 2011, the Complainant sent a cease and desist letter both in hardcopy and through email to the Respondent, drawing its attention upon the infringement of its exclusive rights, and inviting the Respondent to transfer the domain name in its favor. In spite of reminder that were sent on December 15 and 22, 2011, the Respondent did not reply.

As of the day of the filing of the Complaint, the disputed domain name was connected to a parking website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the domain name contains the word “LEGO” as its dominant part. Considering the worldwide reputation enjoyed by the Complainant’s brand, the domain name would have to be considered as confusingly similar with its LEGO trademarks. Such a likelihood would not be excluded by the addition of generic terms such as “piratesofthecarribeansets”.

The Complainant further considers that the Respondent would have no rights or legitimate interests in the disputed domain name. The Complainant did neither authorize nor license any right to the Respondent with regards to its LEGO brands. The Respondent is not known under that term and is not making any bona fide offering of goods or services under the domain name at stake.

Considering the worldwide reputation enjoyed by the LEGO brands, the Complainant finally claims that the Respondent was obviously aware of its rights when it registered the disputed domain name. It misleadingly diverts consumers to its website for its own commercial gain. As a result, the Complainant concludes that the domain name has been registered and is being used in bad faith.

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.”

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Procedural Issue

It is to be pointed out that, according to paragraph 4.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), “[…].there is wide recognition among panels that a complainant or provider who has correctly sent a UDRP case-communication to the WhoIs-listed registrant of record for a disputed domain name will (at least in the absence of better information) normally have discharged its communication responsibility under the UDRP Rules”.

This opinion is in line with paragraph 1 of the Rules, which defines the Respondent as “the holder of a domain-name registration against which a complaint is initiated.”

In other words, while a Complainant is entitled to require the disclosure of the actual domain name holder to the registrar in a domain name case involving a privacy or proxy registration service, such a request is not mandatory.

As a result, considering the listed registrant in the WhoIs database, the Panel considers that the Respondent has been properly identified in the Complaint.

B. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant proves to be the holder of numerous verbal trademarks throughout the world consisting of the word “LEGO”, including in the Bahamas. As already ruled by several Panels (LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260; LEGO Juris A/S v. Reginald Hastings, WIPO Case No. D2009-0680), there is no doubt in the Panel’s opinion that the LEGO brand enjoys a wide reputation and can be considered a well-known trademark under Art. 16.3 of the TRIPS Agreement, respectively Art. 6bis of the Paris Convention.

UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629.)

This is all the more true when the inserted trademark, a well-known one, consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive.

Such happens to be the case here. The addition of the terms “piratesofthecarribeansets” rather strengthen the likelihood of confusion by making users mistakenly believe that they will find products related to the Pirates of Carribean on a website sponsored by the Complainant.

As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.

C. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of the WIPO Overview 2.0.).

In the present case the Complainant is the owner of numerous LEGO trademarks. The Complainant has no business or other relationships with the Respondent.

The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.

On its side, the Respondent has not answered to the Complaint.

Considering the absence of Response and the fact that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

Consequently, in light of the above, the Panel considers the paragraph 4(a)(ii) of the Policy to be fulfilled.

D. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

Bad faith requires the Respondent to be aware of Complainant’s trademarks. In the present case, the Complainant is the owner of numerous LEGO trademarks, which enjoy a worldwide reputation and amount to well-known trademarks as pointed out above

Considering the worldwide reputation of the LEGO brands, the Panel finds it hard to believe that the Respondent would have chosen and registered the disputed domain name <legopiratesofthecaribbeansets.com> in good faith, without having been aware of the LEGO trademarks. The Respondent having neglected to proceed, did not bring any convincing evidence to support such a choice; such evidence does not result from the file, and the Respondent has to bear the consequences of its default on that regard.

There is no doubt in the Panel’s opinion that the Respondent was very well aware of the Complainant’s trademarks, and that the disputed domain name has been registered, respectively is being used to attract Internet users to Respondent’s website for commercial gain, by creating a likelihood of confusion and leading Internet users to believe that Respondent’s website is linked to the Complainant.

Consequently, the Panel is of the opinion that the disputed domain name <legopiratesofthecaribbeansets.com> has been registered and is being used in bad faith under the 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 domain name <legopiratesofthecaribbeansets.com> be transferred to the Complainant.

Philippe Gilliéron
Sole Panelist
Dated: February 12, 2012