WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Domains By Proxy, LLC, DomainsByProxy.com / Stephen Pierce International
Case No. D2012-0190
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Domains By Proxy, LLC, DomainsByProxy.com of Arizona, United States of America / Stephen Pierce International of Texas, United States of America.
2. The Domain Name And Registrar
The disputed domain name <legobatmanwalkthroughxbox360.com> is registered with Wild West Domains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2012. On February 3, 2012, the Center transmitted by email to Wild West Domains, LLC a request for registrar verification in connection with the disputed domain name. On the same date, Wild West Domains, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 10, 2012 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 February 10, 2012.
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 February 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2012.
The Center appointed Christian Pirker as the sole panelist in this matter on March 16, 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, LEGO Juris A/S which is based in Denmark, is the owner of LEGO and other trademarks used in connection with the LEGO brands of construction toys and various LEGO branded products. The trademark LEGO is a well-known trademark around the world. The Complainant and its licensees commenced use of the LEGO trademark in the United States in 1953. The Complainant is also the owner of more than 1,000 domain names containing the term “lego”. The LEGO Group has a license agreement with Warner Brothers Consumer Products, Inc. concerning the use of the trademark BATMAN incorporated in the LEGO product line, and it has been authorized by Microsoft Corporation to use the XBOX360 mark in relation to the disputed domain name. LEGO products are sold in more than 130 countries.
The Complainant’s marks LEGO have been registered, among others, as a Community trademark on October 5, 1998, with a filing date of April 1, 1996, registration no. 39800, in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42. The Complainant also owns numerous other trade and service marks in other jurisdictions that are listed in the Complaint.
The Complainant tried to contact the Respondent, requesting a voluntary transfer of the disputed domain name and offering compensation for the expenses of registration and transfer fees. However, no response from the Respondent was ever received.
The disputed domain name <legobatmanwalkthroughxbox360.com> was created on July 27, 2011.
5. Parties’ Contentions
The Complainant has alleged that the LEGO trademark is one of the world’s most recognized marks and has produced a list by “Superbrands UK”, where it appears in its 2009/10 assessment as the 8th most famous trademark and brand in the world. The Complainant maintains that by reputation and statutory recognition it is entitled to protection with the right to prevent any use of the well-known trademark or a confusingly similar representation of it in connection with any products or services, even beyond those classes for which it has been formally registered. Due to the use of the LEGO trademark in it entirety in the disputed domain name, <legobatmanwalkthroughxbox360.com> must be considered confusingly similar to the Complainant’s world famous trademark LEGO. The combination of the three trademarks LEGO, BATMAN and XBOX360 plus an additional generic descriptive word do not diminish the confusingly similarity to the Complainant’s trademark. The addition of the suffixes “batmanwalkthroughxbox360” is not relevant and will not have any impact on the overall impression of the dominant part of the name LEGO. Therefore, anyone who sees the disputed domain name is bound to mistake it for the name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain name, given the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the trademark LEGO or to apply for or use any domain name incorporating that mark.
In respect of bad faith, the Respondent cannot have ignored the fact that LEGO is a famous trademark worldwide and it is highly unlikely that it was not aware of the rights that the Complainant has in the trademark and the value of said trademark, at the time of registration. Moreover, the website to which the disputed domain name resolves displays sponsored links to other online shops, therefore the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for its own commercial gain.
Accordingly, the Complainant requests the Panel to issue a decision that the disputed domain name <legobatmanwalkthroughxbox360.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion And Findings
Paragraph 15(a) of the Rules instructs the Panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable”
Paragraph 4 (a) of the Policy states that the Complainant must prove that each of the three following elements are present:
(i) That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
A. Identifying the Respondent
As mentioned in prior UDRP decisions, from a purely procedural perspective in privacy cases, it is not particularly significant who is named as a respondent in the heading of a complaint. A complainant will usually satisfy its procedural obligation under the Policy by identifying as the “respondent” the person or persons named in the publically available WhoIs at the time that the complaint is filed with the Center. See e.g. Rapidshare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894.
That said, the individual or entity named as the formal respondent in proceedings in practice often does not really matter in privacy cases. The reason for this is that it is the motives and interests of the person, who de facto controls the domain name, and has been responsible for its registration, which is significant when addressing issues under the Policy. Take for example the position of an agent who has registered a domain name in its name on behalf of another. If the person actually controlling the domain name registered that domain name in bad faith, it is no answer to this to say that the named agent had no knowledge of a complainant’s mark and so far as it alone was concerned had acted in good faith. To hold otherwise would drive a coach and horses through the operation of the Policy. In such circumstances the knowledge of the principal is to be imputed to the agent. There is no reason why a privacy service should be treated in different way to any other agent in this respect. See e.g. RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev, supra.
In conclusion, as stated in RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev, supra, which addresses the use of privacy or proxy services and the UDRP, the Panel considers by parity that the disputed domain name is in fact controlled by both entities, the privacy service as public registrant and the underlying registrant and that naming both entities as Respondents respects the UDRP Rules (see, for example, General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834 and Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / Comdot Internet Services PVT. LTD., Laksh Internet Solutions Private Limited., Pluto Domain Services Private LTD., Compsys Domain Solutions Private Limited, WIPO Case No. D2008-1675).
B. Identical or Confusingly Similar
As already stated in other UDRP decisions (e.g. LEGO JURIS A/S V. LEVEL 5 CORP., WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680) and supported by the evidence submitted, the Complainant has established to the satisfaction of the Panel that it owns rights in the trademark LEGO and that it is one of the world’s most recognized marks.
The LEGO trademark is entirely included in the disputed domain name in addition with others’ trademarks BATMAN and XBOX360 and two descriptive words “walk through”.
As stated in LEGO Juris A/S, v. Lego Star Wars Minifigs, WIPO Case No. D2011-1231, “In addition to the trademark LEGO, the disputed domain name includes in the added suffix a reference to another well-known mark, that of 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.”
Further, the adjunction of the words “walk through” to the trademark LEGO in the disputed domain name does not diminish the confusing similarity with the trademark. In similar UDRP cases, panels have found that adding descriptive words does not avoid the confusing similarity between a trademark and a domain name incorporating said trademark. See e.g. Sanofi-Aventis v. Gideon Kimbrell, WIPO Case No. D2010-1559; Greenbrier IA, Inc. v. Moniker Privacy Services/Jim Lyons, WIPO Case No. D2010-0017 and Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green, WIPO Case No. D2010-0024.
Accordingly, the Panel finds that the disputed domain name <legobatmanwalkthroughxbox360.com> is confusingly similar to the Complainant’s trademark LEGO in accordance with paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy a respondent can establish its rights or legitimate interests in its domain name if it shows the presence of any of the following circumstances:
(i) Before any notice to the respondent of the dispute, the respondent uses of, or makes demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is for the complainant to demonstrate that the condition set out in paragraph 4(a)(ii) of the Policy is met prima facie. Provided that the complainant is successful in presenting a prima facie case, it is for the respondent to demonstrate its rights or legitimate interests. Accordingly, the burden of production shifts to the respondent.
In the present case, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent failed to respond to the Complaint.
Moreover, there is no evidence in the file that the Respondent has rights or legitimate interests in the disputed domain name.
Accordingly, the Panel considers that the Respondent does not have any rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
The third element to be established by the Complainant is that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name:
(i) Circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant who is the owner of the trademark or service mark, or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or its location.
The Complainant alleges that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.
Some UDRP panels in certain default cases have accepted credible factual allegation from a complainant as true, particularly as these pertain to paragraph 4(a)(iii) of the Policy regarding bad faith (Lexar Media, Inc. v. Michael Huang, WIPO Case No. D2004-1039; Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039; Plymouth State College v. Domains, Best Domains, WIPO Case No. D2002-0939).
Since the Respondent could unlikely be unaware of the Complainant’s trademark, has failed to give any answer and failed to challenge the Complainant’s allegations according to which the disputed domain name was registered and was being used in bad faith, such bad faith registration and use can be accepted by this Panel as true.
That being said, the Panel further states the following:
The instances of bad faith listed in the Policy, paragraph 4(b), are expressly without limitation. The Panel agrees with former WIPO UDRP decisions that the registration of a domain name incorporating a very well-known mark, of which the respondent must have clearly been aware of, without any evident right to do so, can itself be taken as evidence of bad faith. See, e.g., Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa, WIPO Case No. D2001-0745. It is a fortiori the case when the disputed domain name consists of three very well-known trademarks, as it is in the present case.
The awareness of the LEGO trademark may be considered to be significant and substantial. The Panel also notes that in a previous WIPO UDRP case including both the LEGO and the MINDSTROMS trademarks (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 name may be considered an inference of bad faith SeeParfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, and Sony Kabushiki Kaisha also trading as Sony Corporation v. Inja, Kil, WIPO Case No. D2000-1409.”
Taking in to account the above, added to the absence of participation in the proceeding of the Respondent, it is the Panel’s view that the Respondent’s registration was made with knowledge of the Complainant’s mark, which further supports a finding of bad faith registration.
Further, regarding the bad faith use issue and due to the similarity with LEGO Juris A/S, v. Lego Star Wars Minifigs, WIPO Case No. D2011-1231, the Panel adopts the wordings of the afore-mentioned decision according to which “the Panel accepts the evidence that on entering the website using the disputed domain name there are sponsored links displayed which redirect the user, upon clicking the HTML links, to other online shops. The inference which the Panel draws, in the absence of any response from the Respondent, is that the Respondent derives income to itself once a visitor clicks on the 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 site intended to draw income from the improper use of the connection to the Complainant was registration in bad faith.”
Accordingly, the Panel is convinced that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a) of the Policy.
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 <legobatmanwalkthroughxbox360.com> be transferred to the Complainant.
Dated: March 30, 2012