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WIPO Arbitration and Mediation Center


LEGO Juris A/S v. Julius Oconnell

Case No. D2013-0108

1. The Parties

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

The Respondent is Julius Oconnell of Florida, United States of America.

2. The Domain Names and Registrar

The disputed domain names <beststarwarslego.com> and <setslego.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2013. On January 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 17, 2013, 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.

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 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2013.

The Center appointed David Stone as the sole panelist in this matter on February 19, 2013. 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.

There are two disputed domain names included in this administrative proceeding, namely <beststarwarslego.com> and <setslego.com>. In accordance with paragraph 3(c) of the Rules, the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Paragraph 10(e) of the Rules requires UDRP panels to decide a request to consolidate multiple domain name disputes in accordance with the Policy and the Rules. As Julius Oconnell is the Respondent for both disputed domain names referenced in this Complaint, the Panel is satisfied that the two disputed domain names can and should be dealt with concurrently.

4. Factual Background

The Complainant LEGO Juris A/S is a leading global manufacturer of toys under the trade mark LEGO. LEGO products are sold in more than 130 countries, including in the United States of America where the Respondent is located. The Complainant owns trade mark registrations around the world, including in the United States of America for the mark LEGO in relation to various goods and services.

The Complainant also owns more than 1000 domain names containing the term LEGO.

The disputed domain names <beststarwarslego.com> and <setslego.com> were both registered on December 1, 2012. The disputed domain names direct to online shops, which offer visitors a chance to bid on various kinds of products, including the Complainant’s products. If a visitor places a bid then he/she will be directed to <ebay.com>.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names are confusingly similar to its registered trade mark LEGO. The disputed domain names incorporate the Complainant’s mark in its entirety with the addition of the prefixes “beststarwars” and “sets”. The Complainant submits that the addition of “beststarwars” and “sets” will not have any impact on the overall impression of the dominant part of the disputed domain names.

The Complainant contends that there is no evidence to suggest that the Respondent has been using LEGO in any way that would give it legitimate rights in the name, and consequently that the Respondent may not claim any rights established by common usage. The Complainant further contends that the Respondent is not in any way affiliated with the Complainant or authorised or licensed to use the LEGO trade mark.

The Complainant submits that LEGO is a well-known trade mark worldwide, and that it is highly unlikely that the Respondent would not have known of the Complainant’s rights in the trade mark at the time of the registration.

The Complainant asserts that the disputed domain names were registered and are being used in bad faith.

The Respondent is using the disputed domain names to generate traffic and income through sites which contain online shops. Further evidence of the Respondent’s bad faith is represented by the failure to respond to the cease and desist letter sent by the Complainant on January 3, 2013.

The Complainant requests that the disputed domain names be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:

(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant provided evidence that it has prior registered trade mark rights in the mark LEGO around the world, including in the United States of America. From the evidence supplied, the Panel finds that LEGO is a well-known mark, at least in relation to toys. Several other UDRP panels have made similar findings: see 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 Jr, WIPO Case No. D2009-0680.

The disputed domain names incorporate the Complainant’s trade mark in its entirety with, respectively, the prefixes “beststarwars” and “sets”. Previous UDRP panels have held that adding common terms to a registered trade mark and registering the result as a domain name does not mitigate the confusing similarity between the domain and the mark: see LEGO Juris A/S v. Thomas Plaut WIPO Case No. D2012-1822; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Deutsche Telekom AG v. Gems N Pearls International Holding, WIPO Case No. D2005-0820. In any event, as evidenced by the Complainant, “Star Wars Lego” is a well-known line of Lego products. Additionally, the use of the prefix “sets” implies groups or collections of units in separate packs, the most common way in which LEGO brand products are marketed. The confusion is therefore amplified by the addition of “beststarwars” and “sets” rather than reduced.

Accordingly the Panel finds that the Complainant has established the first element under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Guidance regarding establishing rights or legitimate interests is provided in paragraph 4(c) of the Policy.

Three circumstances are identified that would establish rights or legitimate interests:

(i) bona fide prior use;

(ii) common association with the domain name; and

(iii) legitimate noncommercial use.

The Complainant has made a prima facie case that none of these circumstances applies. The Respondent did not exercise its right to respond substantively in these proceedings. Thus, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other argument supporting rights or legitimate interests.

Consequently, the Panel finds that the Complainant has established the second element under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides guidance regarding establishing bad faith.

Four non-exhaustive circumstances are identified where the respondent’s intention in registering a domain name may be evidence of bad faith. These intentions may be summarized as follows:

(i) to sell the domain name to the rights-holder at a profit;

(ii) to prevent the rights holder from registering a domain name;

(iii) to disrupt the business of a competitor; and

(iv) to divert Internet traffic for commercial gain.

Given that the LEGO trade mark is well-known, the Panel finds that in all likelihood the Respondent would have been aware of the Complainant’s trade mark at the time the disputed domain names were registered. Previous UDRP panels have made a finding of bad faith where the complainant’s trade mark was shown to be well-known or in wide use at the time of registration of the disputed domain names (SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

Both disputed domain names in the present proceedings direct visitors to websites the appearance of which is likely to suggest to the visitors, at least initially, that they have accessed websites operated by the Complainant. Visitors are offered an online shop which presents opportunities to place bids on various kinds of products. Once a visitor places a bid, he/she will be redirected to <ebay.com> where unrelated products are offered for sale. In LEGO Juris A/S v. David Hudson, WIPO Case No. D2012-0060, the domain names in question led visitors to unrelated products of third party providers, as well as links redirecting the user to third party sites. This was found to indicate bad faith conduct on the Respondent’s part.

The Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the web sites at the disputed domain names (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant's mark.

The Respondent’s failure to respond to the Complainant’s cease and desist letter is an additional indication of bad faith (News Group Newspapers Limited and News Network Limited v Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc v Azumano Travel, WIPO Case No. D2000-1598; America Online Inc. v Antonio R. Dia, WIPO Case No. D2000-1460).

Accordingly the Panel finds that the Complainant has established the third element 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 <beststarwarslego.com> and <setslego.com> be transferred to the Complainant.

David Stone
Sole Panelist
Date: February 25, 2013