WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Cora Amicone

Case No. D2015-1217

1. The Parties

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

The Respondent is Cora Amicone of Georgetown, South Carolina, United States of America.

2. The Domain Name and Registrar

The disputed domain name <lego-starwars.xyz> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2015. On July 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2015, 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 July 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 11, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 12, 2015.

The Center appointed Selma Ünlü as the sole panelist in this matter on August 21, 2015. 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 facts stated in the Complaint are as follows:

(1) The Complainant, LEGO Juris A/S produces and sells construction toys and other products under the trademark LEGO since 1953. The LEGO products are promoted and sold in many, including the United States of America, where the Respondent is located.

(2) The Complainant has several trademark registrations for the trademark LEGO around the world including the United States of America with registration number 3440699 registered on June 3, 2008. Additionally, the Complainant owns thousands of domain names containing the word “lego” where most of them put the word “lego” at the beginning such as <lego-agent.info>, <lego-star-wars.com> and nearly 4,300 domain names including the ones containing the word “starwars” following the word “lego”.

(3) The trademark LEGO has been recognized as being well-known as deduced from Annex 9A, Annex 9B and Annex 9C to the Complaint by relevant rankings and publications. The trademark LEGO became well-known due to its extensive advertising and promotional activities.

(4) The Complainant has a license agreement with Lucasfilm Ltd. regarding the use of the trademark STAR WARS incorporated in the LEGO product line.

(5) The disputed domain name <lego-starwars.xyz> was created on February 11, 2015.

Panel’s observation of the case file reveals the following:

(1) The disputed domain name is inactive and there was no content provided, when the Panel visited the Respondent’s website on September 1, 2015.

(2) The Complainant is the owner of the LEGO trademark and the domain names containing the word “lego” such as <lego-star-wars.net>, <lego-starwars.de>, <lego-starwors.de> and <lego-starwarsshop.com>.

(3) The trademark LEGO is well-recognized worldwide and well-known with reference to toys.

(4) The Complainant has sent a cease-and-desist letter to the Respondent and proposed to compensate the expenses of registration of the Respondent’s disputed domain name, but did not receive any reply.

5. Parties’ Contentions

A. Complainant

The Complainant requests the Panel to issue a decision transferring the disputed domain name to the Complainant on the following grounds:

(i) The disputed domain name is identical or confusingly similar to the trade and service marks 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 was registered and is being used in bad faith.

(i) Identity or Confusingly Similarity

The Complainant alleges that the disputed domain name is identical to the LEGO trademarks in which the Complainant has rights.

The Complainant claims that the trademark LEGO is one of the world’s most recognized marks, listed by “Superbrands” in 2015 ranked 11th in the “Toy and Education” category in the world, by “Global RepTrak 2014” ranked 9th and been selected as the “Most Influential Toy of all Time”.

The Complainant states that the disputed domain name <lego-starwars.xyz> is the combination of the Complainant’s trademark LEGO and its licensed trademark STARWARS. The Complainant argues that the combination of the different trademarks fails to preclude confusion and creates a likelihood of confusion in the minds of the consumers.

As a result, the Complainant would like to emphasize that although the LEGO and STARWARS trademarks are not registered in combination as a trademark, the disputed domain name should be accepted as being similar to the LEGO mark.

(ii) Rights or Legitimate Interests

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent is not licensed or permitted to use the Complainant’s mark. With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that, according to its verifications, the Respondent is not the owner of any registered trademark or trade name corresponding to the disputed domain name and the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant claims that trade public will perceive the disputed domain name either as a domain name owned by the Complainant, or that there is some kind of commercial relation with the Complainant and as a result the Complainant will be damaged.

The Complainant points out that the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.

The Complainant further maintains that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services. The Complainant also alleges that the disputed domain name has previously been directed to the website “www.ebay.com” for commercial purposes.

(iii) Registered and Used in Bad Faith

With reference to the circumstances evidencing bad faith, the Complainant states that the Respondent was aware of the well-known trademark of the Complainant when the Respondent registered the disputed domain name. With reference to the use of the disputed domain name, the Complainant states that the disputed domain name was connected to a website containing links to “www.ebay.com” and other sponsored links to various online shops where LEGO products, as well as other products, are offered for sale.

The Complainant therefore concludes that the Respondent has been using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its website.

As an additional circumstance evidencing bad faith, the Complainant provided that a cease-and-desist letter was sent to the Respondent requesting a voluntary transfer of the disputed domain name and offering compensation for the out of pocket expenses, but no reply was received by the Respondent despite the Complainant's reminders.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

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

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

A. Identical or Confusingly Similar

The test for identity or confusing similarity under the Policy, paragraph 4(a) (i) is typically limited in scope to a direct comparison between a complainant’s trademark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated its earlier rights in the trademark LEGO in several countries worldwide, including the United States of America where the Respondent is located. Additionally, as concluded in prior panel decisions, the Panel finds the Complainant’s LEGO trademark is a well-known trademark.

The disputed domain name <lego-starwars.xyz> is the combination of LEGO owned by the Complainant and STARWARS owned by the Complainant’s licensor, Lucasfilm Ltd. The Complainant claims to have a license agreement with Lucasfilm Ltd. concerning the use of the trademark STARWARS incorporated in the LEGO product line, and as evidence in Annex 14 to the Complaint, the Complainant includes a letter signed by a “Director, General Counsel”, stating that “This is to confirm that that the LEGO Group has a license with Lucasfilms Ltd. regarding the development, manufacturing and sale of LEGO Star Wars products” (Annex 14 of the Complaint).

It is well established in previous UDRP cases that incorporating a trademark into a domain name may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark (Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059; F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358.

It is clear that the use of the combination of well-known trademarks of a complainant creates a likelihood of confusion with those trademarks in the minds of Internet users. See, e.g., LEGO Juris A/S v. Devin Steenberg, WIPO Case No. D2015-0394 where the panel concluded that “the Complainant's trademark with the trademark STARWARS is not sufficient to prevent a finding of confusingly similarity with the Complainant's LEGO trademark. Moreover, the incorporation of the trademark STARWARS in the disputed domain name actually serves to heighten the confusion as “LEGO Star Wars” is a product line of the Complainant.”

The addition of the generic Top-Level-Domain (“gTLD”) “.xyz” may be disregarded for the purpose of this comparison. It is well established in previous UDRP cases that the addition of a generic Top-Level-Domain – being a required element of every domain name – is irrelevant when assessing whether or not a trademark is identical or confusingly similar for purposes of the Policy.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademarks and thus, the first requirement under paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [respondent] of the dispute, your use of, or 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) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [respondent] are 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.”

The burden of production lays on the Complainant who must demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above elements, prove rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant sufficiently demonstrates the fact that the Respondent does not have any rights or legitimate interests in the disputed domain name for the purpose of the Policy. The Complainant has not granted the Respondent any right or license to use the LEGO and STARWARS trademarks.

The Panel also finds that the Respondent has not provided evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interests in the disputed domain name nor does the Panel find any indication that such exist. Thus, the Panel finds that the Respondent has failed to furnish evidence to show that it has rights or legitimate interests in the disputed domain name.

Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name.

The Panel notes that the disputed domain name has been pointed to a website which displays links mainly aimed at directing visitors to third party commercial websites, including the website "www.ebay.com", where LEGO products are offered for sale. The Panel finds that the use of the disputed domain name in connection with a website which merely redirects users to locations at which LEGO products and other goods may be purchased from a third party does not constitute a legitimate, noncommercial use of the disputed domain name under the Policy.

Hence, as the rights or legitimate interests of the Respondent have not been duly proven inter alia under paragraph 4(c) of the Policy, the Panel concludes that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 the respondent’s 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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on respondent’s website or location.

Based on this submission and the facts, the Panel considers that the disputed domain name was registered primarily for commercial purposes only. See, e.g., LEGO Juris A/S v. Saputro Wijayanto, WIPO Case No. D2013-0916.

Additionally, by consideration of the foregoing, the Panel is of the opinion that due to the extensive and intensive usage of such trademarks, as well as the above mentioned domain names, the Respondent, who appears to be located in United States, cannot be taken to be unaware of their existence. See, e.g., Inter-IKEA Systems B.V. v. McLaughlin Mobility, WIPO Case No. D2000-0499.

The Panel finds that Internet users, in light of the contents of the web page linked to the disputed domain name, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent's website. The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable to this case since the Respondent has attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its website and of the websites linked thereto.

Although not decisive, the Panel also puts weight on the fact that the Respondent has not honored the Panel with a response and thus provided no evidence of any actual or contemplated good faith use of the disputed domain name.

In accordance with prior decisions, the Panel also finds that a failure to respond to a cease and desist letter can be further evidence of bad faith. See, e.g., Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003, in which the panel stated: “[a]ny such bad faith is compounded when the domain name owner, upon receipt of notice that the disputed domain name is identical or confusingly similar to a registered trade mark, refuses to respond.”

Considering the above, the Panel finds that the disputed domain name was registered and used in bad faith. Therefore, 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 name <lego-starwars.xyz> be transferred to the Complainant.

Selma Ünlü
Sole Panelist
Dated: September 5, 2015