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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Tanesha Chio

Case No. D2015-1310

1. The Parties

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

The Respondent is Tanesha Chio of Jefferson, Alabama, United States of America (the "USA").

2. The Domain Name and Registrar

The disputed domain name <legostarwars.xyz> (the "Domain Name") 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 28, 2015. On July 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 30, 3015, 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 August 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 27, 2015.

The Center appointed Nicoletta Colombo as the sole panelist in this matter on September 14, 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 Complainant is the owner of the famous trademark LEGO for construction toys and all other trademarks used in connection with it. It is also licensee of the trademark STAR WARS. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the USA.

Moreover, the Complainant is the owner of more than 4,300 domain names containing the term "lego", including for example: <lego-star-wars.net>, <lego-star-wars.org>, <lego-star-wors.de>, <lego-starwars.com>, <lego-starwars.eu>, <lego-starwars.us>, <lego-starwarsshop.com>, <lego-starwars.de> and <lego-starwors.de>. The trademark LEGO is among the best-known trademarks in the world. In the official top 500 Superbrands for 2015 list, provided by Superbrands UK, LEGO is shown as winner in the category "Child Products - Toys and Education". Moreover, the Reputation Institute nominated the LEGO Group as number 10 on its list of "the World's Most Reputable Companies" in 2014.

The Respondent registered the Domain Name on February 11, 2015. The website is active and directs Internet users to another commercial website, namely "www.ebay.com", offering various products from a wide range of different brands, besides the Complainant's products.

5. Parties' Contentions

A. Complainant

The Complainant contends the following:

a.) The Domain Name is confusingly similar to the prior trademark of the Complainant because:

- it reproduces the Complainant's trademark in its entirety;

- the adjunction of the trademark STAR WARS, for which the Complainant has signed a license agreement with Lucasfilms Ltd. does not detract from the overall impression. In fact, the addition of said trademark is rather fitted to create an impression that the Domain Name is associated with the Complainant as it holds licenses to develop, manufacture and sell LEGO Star Wars products as part of a partnership with Lucasfilm Ltd.;

- the addition of the generic Top-Level Domain ("gTLD") "xyz" does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine similarity between the trademark and the Domain Name.

b.) The Respondent has no rights or legitimate interests in respect of the Domain Name because:

- the Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. Neither has the Complainant found anything, including the WhoIs details, that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in the name;

- the Complainant has never given to the Respondent any license or authorization to use LEGO trademark, nor is it an authorized dealer;

- the Respondent is not using the name LEGO as a company name or has any other legal rights in the name, it is quite clear that the Respondent is simply trying to sponge off the Complainant's world famous trademark.

c.) The Domain Name was registered and is being used in bad faith because:

- the Respondent could not ignore the strong notoriety and world renown of the Complainant's trademark when it registered the Domain Name; it is unlikely that the Respondent was not aware of the Complainant's rights in the LEGO brand at the time of the registration of the Domain Name;

- the Complainant tried to settle the matter amicably sending a cease and desist letter to the Respondent by postal mail and email, without receiving any answer;

- the Respondent is not using the Domain Name in a bona fide manner; the Respondent has intentionally chosen the Domain Name based on the registered trademark in order to generate traffic and income through a website that is commercial through links incorporated in pictures of the Complainant's LEGO products directing Internet users to another commercial website, namely "www.ebay.com", offering various products from a wide range of different brands, besides the Complainant's products.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has trademark registrations for LEGO all over the world and has signed a license agreement with Lucasfilm Ltd. for the trademark STARWARS. Therefore, it has been proven that the Complainant has rights in the LEGO and STARWARS trademarks.

The Domain Name <legostarwars.xyz> incorporates LEGO which constitutes the Complainant's trademark.

Moreover, it incorporates also the trademark STARWARS owned by Lucasfilms Ltd. for which the Complainant claims to have a license agreement concerning the use of the trademark STAR WARS incorporated in the LEGO product line1.

The Panel finds that the combination of the Complainant's trademark with the trademark STAR WARS does not render the Domain Name dissimilar to the trademark of the Complainant, on the contrary, it increases the confusing similarity between the Domain Name and the Complainant's trademark. In fact, the term "star wars" specifically relates to the Complainant's product line.

There are several UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant's mark even if it is added to another trademark. In particular, there are UDRP decisions stating that the incorporation of both trademarks LEGO and STARWARS in a domain name is misleading and confusingly similar to the trademark LEGO (LEGO Juris A/S v. Devin Steenberg, WIPO Case No. D2015-0394,; LEGO Juris A/S v. Saputro Wijayanto, WIPO Case No. D2013-0916; LEGO Juris A/S v. Miguel Angel Villen / PrivacyGuardian.org, WIPO Case No. D2013-0479; LEGO Juris A/S v. Julius Oconnell, WIPO Case No. D2013-0108; and LEGO Juris A/S, v. Lego Star Wars Minifigs, WIPO Case No. D2011-1231).

Additionally, the Panel does not typically consider, when analyzing the identity or similarity, the gTLD suffix – in this case ".xyz" – because it is a necessary component of the disputed domain name and does not give any distinctiveness (see, i.e., Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457).

Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant's trademark.

B. Rights or Legitimate Interests

The Respondent has not filed any response in this case. There is prima facie indication in the evidence provided to the Panel that there are no rights or legitimate interests on the part of the Respondent in the Domain Name or has made preparations to use it 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 Domain Name, see paragraph 4(c) of the Policy.

Specifically, on the basis of the evidence filed before the Panel, the Respondent has not received any license or authorization from the Complainant to use the famous trademark LEGO, nor has it been authorized to register and use the Domain Name.

Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Domain Name is exploited by the Respondent to generate traffic and income by re-directing Internet users to another commercial website, namely "www.ebay.com", offering various products from a wide range of different brands, besides the Complainant's products.

The Respondent must have been aware of the existence of the LEGO marks and the Complainant's Lego Starwars products. In all likelihood, only someone who was familiar with the Complainant's marks would have registered a domain name inclusive of such mark.

The Panel is of the opinion that the Respondent has registered the Domain Name with the intent to profit from the reputation of the famous trademark of the Complainant by choosing a domain name that is confusingly similar to the Complainant's mark.

Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel believes that the Complainant has demonstrated that the Domain Name has been registered and is being used in bad faith.

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 <legostarwars.xyz> be transferred to the Complainant.

Nicoletta Colombo
Sole Panelist
Date: September 28, 2015

1 The Complainant has filed as evidence a letter signed by the "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).

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