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WIPO Arbitration and Mediation Center


LEGO Juris A/S v. Ma Ying Jo / PrivacyProtect.org

Case No. D2012-0785

1. The Parties

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

Respondent is Ma Ying Jo of Shanghai, China / PrivacyProtect.org of Nobby Beach, Australia.

2. The Domain Name and Registrar

The disputed domain name <legostarwars3theclonewars.com> (the “Disputed Domain Name”) is registered with RegisterMatrix.com Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2012. On April 17, 2012, the Center transmitted by email to Registrar, a request for registrar verification in connection with the Disputed Domain Name. On April 25, 2012, Registrar 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 Complainant on April 30, 2012, providing the registrant and contact information disclosed by Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 2, 2012.

The Center verified that the Complaint with amendment 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 Respondent of the Complaint with amendment, and the proceedings commenced on May 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 24, 2012.

The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on June 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

Complainant has registered the trademark LEGO (the “LEGO Trademark”) around the world in connection with a range of toy and related goods. Its vast portfolio of registrations is listed in 36 pages of Annex 6 of the Complaint, ranging alphabetically from Afghanistan to Zimbabwe, and including Australia (collectively, the “LEGO Registrations”). Below are some details of a few samples of the LEGO Registrations:

Canadian registration No. TMA106457, registered on April 26, 1957, for: toys being block building sets, toy-vehicles, toy-boats, toy-houses, model traffic signs and similar goods, parts thereof and accessories thereto; battery powered electric motors and switchgear for use therewith; Instructional books; educational books; storage containers for toy building elements; children's books; toys, namely building block base plates and base plate holders, model parts and equipment and accessories for towns and castles and houses and farms and landscapes and hospitals and trains and vehicles and space stations, people and doll and animal figures; furniture, namely play tables and chairs, shelving and storage trays; educational and teaching materials and printed matter, namely activity cards, wall boards and shape and colour mosaic elements.

European Community Trademark registration no.39800, registered on Oct 5, 1998 , in Nice classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42.

United States registration no.1018875, registered on August 26, 1975, for: toy building blocks and connecting links for the same, sold separately and as kits for construction of toy houses, buildings, household furnishings, robots, doll figures and vehicular toys.

Complainant owns the domain name <lego.com> (registered on August 22, 1995).

The Disputed Domain Name was registered on March 23, 2011.

5. Parties’ Contentions

A. Complainant

Complainant contends (in accordance with paragraph 4(a) of the Policy) that the Disputed Domain Name is confusingly similar with the LEGO Trademark in which it has rights; that Respondent has no rights or legitimate interests in the Disputed Domain Name; and that Respondent registered and uses the Disputed Domain Name in bad faith.

B. Respondent

Respondent did not reply to the Complainant’s contentions and is in default.

6. Discussion and Findings

One fundamental requirement of due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules, and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (see Section 3, supra).

In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate”. Furthermore, paragraph 15(a) of the Rules provides that “[a] Panel shall 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”. Since Respondent has not submitted any evidence, the Panel will render its decision on the basis of the uncontroverted evidence supplied by Complainant.

A. Identical or Confusingly Similar

Complainant contends that it has rights in the LEGO Trademark and that the Disputed Domain Name is confusingly similar thereto.

In particular, Complainant contends that it has rights to the LEGO Trademark established in the worldwide marketplace. Complainant contends that it, its subsidiaries, its licensees and their predecessors (collectively, for simplicity of expression herein, “Complainant”) commenced use of the LEGO Trademark many decades ago (e.g. in the United States in 1953) in association with construction toys, and later expanded to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets; and that Complainant today sells toys and related products bearing the LEGO Trademark in more than 130 countries worldwide, and generated in 2009 more than USD 2.8 billion in revenue with a global market share that rose to about 6% in 2010.

In particular, Complainant contends that the LEGO Trademark is famous, being “…among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. Indeed, the LEGO trademark and brand have been recognized as being famous. For instance…a list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world.”

In addition to its aforedescribed activities and famous status in the worldwide marketplace with the LEGO Trademark, Complaint asserts its vast portfolio of LEGO Registrations (see Section 4 supra).

The Panel accepts the preceding contentions about the worldwide marketplace and the LEGO Registrations as uncontroverted, convincing and supported by the evidence. The Panel concludes that Complainant has rights in the LEGO Trademark, and recognizes (in line with affirmations of previous UDRP decisions) the famous nature of the LEGO Trademark.

As for confusing similarity, Complainant contends that the component “lego” is the dominant part of the Disputed Domain Name; that the component “lego” is identical to the LEGO Trademark and forms the dominant part of the LEGO Registrations, and that the addition of the top-level domain “.com” does not have any impact on the overall impression of the dominant part of the Disputed Domain, which remains “lego”.

For the intermediate components of the Disputed Domain Name - “starwars” and “3theclonewars” - Complainant contends that in 1999, it became a licensee of Lucasfilm Ltd. for the trademark STAR WARS in association with its family of famous science fiction films (including the animated film, “Star Wars: The Clone Wars”) and related merchandising products. Complainant contends that it incorporated the STAR WARS trademark into its product line and has sold more than USD 1 billion worldwide of such products.

Complainant cites the reasoning of the decision of LEGO Juris A/S v. school, WIPO Case No. D2011-0639, regarding the domain name <legostarwarsets.com>:

“The disputed domain name consists of the Complainant's trade mark in its entirety, together with a mark under which an extremely successful product line has been sold for over a decade. Far from resolving any confusion caused by the use of the term “lego”, the addition of the term “Starwarsets” actually exacerbates it.”

In the present case, based on such reasoning, Complainant contends that the addition of the intermediate components of “starwars” and “3theclonewars” exacerbates the false impression that the Disputed Domain Name belongs to, or is affiliated with, Complainant.

The Panel accepts the preceding contentions on confusing similarity as uncontroverted, convincing and supported by the evidence, and finds that the Disputed Domain Name is confusingly similar to Complainant’s LEGO Trademark.

The Panel concludes that Complainant has met the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name.

In particular, Complainant contends that it gave no license or authorization of any other kind to Respondent to use the LEGO Trademark; that it did not find that Respondent has any registered trademarks or trade names corresponding to the Disputed Domain Name; that it did not find anything that would suggest that Respondent has been using the LEGO Trademark in any other way that would give it any legitimate rights thereto, and so contends that Respondent may not claim any rights established by usage. Complainant contends that it is highly unlikely that Respondent would not have known of Complainant’s rights in the LEGO Trademark when it registered the Disputed Domain Name; and that it is in fact obvious that it is the fame of the LEGO Trademark that motivated Respondent to so register.

In particular, Complainant contends that Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services but instead chose to register the Disputed Domain Name to generate Internet traffic to a commercial website using the Disputed Domain Name (the “Disputed Website”), that has sponsored, “pay-per-click” advertising links.

In particular, Complainant contends that although such links may be permissible in some circumstances, such links would not of themselves create a legitimate interest but are only permissible where the subject domain name consisted of dictionary or common words or phrases support links that genuinely related to the generic meaning of the subject domain name. However, where such links are based on trademark value (as contended, Section 6.A supra), Complainant contends that the UDRP decisions have tended to consider such practices generally as unfair use (resulting in misleading diversion).

To Complainant’s contentions, Respondent has provided no arguments or evidence of rights or legitimate interests. By virtue of the aforedescribed rights of Complainant in the LEGO Trademark and the fact that the LEGO Registrations predate (some by many decades - see Sections 4 and 6.A supra) the registration of the Disputed Domain Name, Complainant convincingly argues that Respondent has no rights to or legitimate interests in the Disputed Domain Name. The Panel, especially in the absence of any response from Respondent, considers that the circumstances described in paragraph 4(c) of the Policy, regarding the circumstances in which Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name, likely do not exist.

The Panel accepts the preceding contentions on Respondent’s lack of rights or legitimate interests in the Disputed Domain Name, as uncontroverted, convincing and supported by the evidence.

The Panel concludes that Complainant has met the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith.

In particular, Complainant contends that Respondent registered the Disputed Domain Name in bad faith by doing so after the LEGO Trademark achieved fame worldwide, with knowledge of such fame, of the much earlier LEGO Registrations, and of Complainant’s domain name registration of <lego.com> (see Sections 4 and 6.A supra), with the intention of using the Disputed Domain Name in bad faith.

Complainant further contends that Respondent has in fact been using the Disputed Domain Name in bad faith by using it to redirect Internet users to the Disputed Website that has sponsored, “pay-per-click” links, based on a likelihood of confusion with Complainant’s LEGO Trademark, all contrary to paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. Repeating some of its contentions (see Section 6.B supra), Complainant contends that Respondent intentionally chose the Disputed Domain Name to generate traffic to the Disputed Website and thereby misleads Internet users thereto and consequently, Respondent is tarnishing the LEGO Trademark.

The Panel accepts the preceding contentions on Respondent’s registration and use of the Disputed Domain Name, as uncontroverted, convincing and supported by the evidence.

The Panel concludes that Complainant has met the third requirement of paragraph 4(a) of the Policy.

Finally, although the Complainant raised some other contentions and implicitly made certain inferences about Respondent, the Panel has concluded as it has and for the preceding reasons, and does not need to address those other contentions or make explicit some of those implicit. Many of these other points are moot simply because Respondent did not respond.

In particular, the Panel notes that Complainant implicitly makes certain inferences about the relationship (financial, control, knowledge or otherwise) between Respondent and the Disputed Website (and the links/advertisements thereon). Because Respondent did not respond, the Panel does not have to address hypotheticals (e.g. whether Respondent had a direct “commercial gain” or not). That said, Complainant cites the decision of Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912. There, the domain name registrant did respond, and the pertinent portion of that decision is:

“Respondent’s statement that the parking page was created by the Registrar, and that at the time the Respondent had no knowledge of its contents. These statements are corroborated by the information and disclaimer on the parking page itself, and the Registrar’s contractual right under clause 3.6 of the registration contract referred to above. Further, the Respondent states that he has not received any money or discount from the website. However, these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.”

Were the Panel motivated (which it does not consider necessary), it is inclined to find guidance from that decision if Respondent had responded.

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 <legostarwars3theclonewars.com> be transferred to Complainant.

Mark Ming-Jen Yang
Sole Panelist
Dated: June 15, 2012