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WIPO Arbitration and Mediation Center


LEGO Juris A/S v. Whoisguard Protected, Whoisguard, Inc. / Gordon Johnston

Case No. D2016-1472

1. The Parties

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

The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama / Gordon Johnston of Montrose, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name, <legostarwars2015.com> (the "Domain Name"), is registered with eNom, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 20, 2016. On July 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 25, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on July 28, 2016.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 19, 2016.

The Center appointed Ellen B Shankman as the sole panelist in this matter on August 26, 2016. 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 date of the Domain Name registration was confirmed by the Registrar to be December 4, 2015. The Complainant provided evidence of multiple trademark registrations for the mark LEGO including, inter alia, European Union Trademark, No. 39800 (registered on October 5, 1998) that predates the date of the Domain Name registration for a wide variety of goods and services including toys and games. The Complainant also provided evidence of trademark registration held by Lucasfilm Entertainment Company for the trademark STAR WARS, not related to the Respondent. The Complainant also provided evidence of an agreement it has entered into with Lucasfilm regarding collaboration on Star Wars-themed LEGO toys.

The Panel also conducted an independent search to determine that the Domain Name is currently active, and resolves first to an "error" message then to an ICANN verification warning page.

The Respondent did not file any response. Since the Respondent did not respond, the facts regarding the use and fame of the Complainant's mark, as well as other statements regarding correspondence between the Parties including the non-response from the Respondent to the Complainant's cease-and-desist letters, are taken from the Complaint and are generally accepted as true in the circumstances of this case.

5. Parties' Contentions

A. Complainant

The Complainant alleges it is one of the world's most successful toy manufacturers and that its mark has not only been declared "well-known", but has been declared "famous" and has been identified as one of the Consumer SuperBrands of 2015. The trademark LEGO is 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. The Complainant provides ample evidence of the fame of its brand as well as numerous trademark and domain name registrations worldwide. The Complainant showed that recently, TIME also announced LEGO to be the "Most Influential Toy of All Time".

The Complainant alleges that LEGO Juris A/S, based in Denmark is the owner of LEGO, and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO-branded products. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights. Over the years, the business of making and selling LEGO-branded toys has grown remarkably. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries.

Moreover, the Complainant is the owner of close to 5,000 domain names containing the term "LEGO". The Complainant states that it is the strict policy of the Complainant that all domain names taking an unfair commercial advantage of the LEGO trademark should be recovered by the Complainant.

The Complainant also alleges that the mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered in the whole Community to be significant. According to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property ("PC"), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS Agreement"), the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e., regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO goes far beyond toys and goods similar to toys.

The Complainant also alleges that in addition to the trademark LEGO, the Domain Name also comprises the trademark STARWARS and the generic term "2015" and argues that, in Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112, it was established that a mere combination of two separate trademarks is to be considered confusingly similar to the asserted trademarks.

The panel stated that: "The two components of the disputed domain name are identical to the marks of the respective Complainants. The Panel considers that the domain name <konicaminolta.net> is confusingly similar to the Complainants' marks. Persons, worldwide, accessing the disputed domain name would be bound to think that the domain name had a connection with either Complainant or with the merged entity. The Panel decides that the domain name is confusingly similar to the Complainants' marks."

In this case, neither the addition of the trademark STARWARS nor the addition of the generic term "2015" 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. which has been accepted under the UDRP many times before. See, e.g., LEGO Juris A/A v. Devin Steenberg, WIPO Case No. D2015-0394 ("The Complainant claims to have a license agreement with Lucasfilm Ltd. concerning the use of the trademark STAR WARS incorporated in the LEGO product line, and as evidence in Annex 14 the Complainant includes a letter signed by a Mette M. Andersen whose title is given as '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'"). Also, in LEGO Juris A/S, v. Lego Star Wars Minifigs, WIPO Case No. D2011-1231, where the disputed domain name incorporated both trademarks LEGO and STAR WARS, the panel determined that the domain name was confusingly similar to the trademark LEGO. It is to be noted that there have been many third-party domain name registrations combining the LEGO trademark with the trademark "STAR WARS" in the past. See, for example, 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. Devin Steenberg, supra, all decided in the Complainant's favour. The addition of the generic Top-Level domain ("gTLD") ".com" does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine the confusing similarity between the trademark and the Domain Name.

The Complainant states that the Respondent is not an authorized user of the mark, nor is there any disclaimer on the website regarding the lack of connection between the Respondent and the Complainant. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a website that is commercial through sponsored links. Consequently, the Domain Name is being used for a commercial purpose.

The Complainant also alleges that the Domain Name was filed by the Respondent originally under a proxy registration in Panama, and was later determined to be resident in the United Kingdom, where the Complainant has trademark protection as well. The Complainant sent the Respondent three cease-and-desist letters complaining of the infringing action and asking for transfer of the Domain Name, to which the Respondent did not reply. The Complainant says that due to the non-response, it chose to file this UDRP Complaint.

To summarize the Complaint, the Complainant is the owner of numerous registrations for the trademark LEGO, in respect of broad goods and services including toys and games. The Domain Name is confusingly similar to the trademark owned by the Complainant. The combination of the Complainant's trademark with another trademark does not preclude a finding of confusingly similar use. Further, the addition of the generic or descriptive word "2015" and the gTLD ".com" does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant's trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent was aware of the rights of the Complainant in the trademark and the value of the trademark at the point of registration of the Domain Name. The Respondent has used the Domain Name to attract individuals/users for commercial gain by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement. The Domain Name was registered and is being used in bad faith. Thus, the Respondent's registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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 used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has more than satisfactorily proven that it has registered trademark rights for and a well-established reputation in the LEGO brand and that, even though not a prerequisite under the first element of the Policy, these rights precede the date of the Respondent's obtaining the Domain Name. This finding is consistent with the fact that the fame of the trademark has been confirmed in numerous previous UDRP decisions. For example, in LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692, the panel held: "The Panel finds that the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive". The Complainant also refers to LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715 ("The Panel finds, as numerous panels have found before, that the Complainant has established that LEGO is a well-known trademark and that the trademark is distinctive and famous") and LEGO Juris A/S v. Reginald Hastings Jr:, WIPO Case No. D2009-0680 ("LEGO is a mark enjoying high reputation as construction toys popular with children").

The Panel finds that the Domain Name is confusingly similar to the Complainant's trademark. The fact that the Respondent also chose the well-known trademark STARWARS of Lucasfilm Ltd., with which Complainant has a business arrangement for LEGO Star Wars figures/toys enhances the concern. Further, the Panel finds that the mere addition of "2015" to the Domain Name does not change the overall impression of the designation as being connected to the Complainant and underscores an attempted connection by the Respondent in the Domain Name to the trademark of the Complainant. The same is true for the gTLD ".com", which does not prevent a finding of confusing similarity between the Domain Name and the Complainant's trademark and its associated domain names — and if anything, enhances it. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 ("The incorporation of a Complainant's well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the Complainant's trademark"). In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, it was stated that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. In this case, said term does not detract from the overall impression.

"The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name." See paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant's registered trademark, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its mark.

The Panel finds that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO, and agrees with the Complainant's argument and the finding in case Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, in which the Panel stated that "in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent". Further, the Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant. This was stated by the panel as a factor in the finding of no legitimate interests with the respondent in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.

Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds compelling factual and circumstantial evidence in the record that the Respondent knew of the Complainant's mark when it registered the Domain Name. Given the distinctiveness of the Complainant's widespread reputation, the Panel agrees with the Complainant's claims that the Respondent has registered the Domain Name with full knowledge of the Complainant's trademark and that the continued holding of the Domain Name is in bad faith. This is consistent with the holding in Pfizer Inc. v. Legal Dept, Barry McMahon and Pfizer ltd, Sys Admin, WIPO Case No. D2013-2046.

In addition, it has been held in previous UDRP cases that knowledge of a corresponding mark at the time of the domain name's registration suggests bad faith. See, e.g., LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Caixa D'Estalvis i Pensions de Barcelona ("La Caixa") v. Eric Adam, WIPO Case No. D2006-0464; and Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services, WIPO Case No. D2000-0177.

Even where the Domain Name resolves to an error page, the Panel does not believe that it changes the finding. Under paragraph 3.2 of the WIPO Overview 2.0, regarding the question of whether there can be use in bad faith when the domain name is not actively used and there is passive holding, the consensus view is that it can: "With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, [and] no response to the complaint having been filed […] Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere 'parking' by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)." See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.

Previous UDRP panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii), and that in such cases the panel must give close attention to all the circumstances of the respondent's behaviour. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. Other UDRP panels have held that passive holding can be sufficient to constitute bad faith. See Redcats S.A. And La Redoute S.A. v. Tumay Asena, WIPO Case No. D2001-0859 and Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613.

In any event, the record shows that the Domain Name was previously being used to display pay-per-click links incorporating the Complainant's trademark, from which the Respondent presumably earned click-through revenues attempting to attract consumers looking for the Complainant, which would satisfy bad faith under paragraph 4(b)(iv) of the Policy.

Furthermore, the Respondent has taken active steps to conceal its identity, by registering the Domain Name using a privacy registration service, which taken together with the circumstances of this case further indicates bad faith by the Respondent. See, e.g., Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743.

Given the evidence of the Complainant's prior rights in the mark, the timing of the registration of the Domain Name and the Respondent's use of a proxy registration, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, 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 Domain Name, <legostarwars2015.com>, be transferred to the Complainant.

Ellen B Shankman
Sole Panelist
Date: September 9, 2016