WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Dustin Murray, LakeOntario PVT LTD

Case No. D2018-0030

1. The Parties

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

The Respondent is Dustin Murray, LakeOntario PVT LTD of Sacramento, California, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <thelegoninjagofull.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2018. On January 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 10, 2018, 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 for the disputed domain name.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2018. On February 9 and February 12, 2018, the Center received informal email communications from the Respondent, indicating that it would like to delete the disputed domain name. On February 12, 2018, the Center notified the Parties that if they wished to explore settlement options, the Complainant should submit a request for suspension by February 17, 2018. The Complainant replied that it did not wish to engage in settlement discussions.

The Center appointed Tobias Zuberb├╝hler as the sole panelist in this matter on February 16, 2018. 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 intellectual property holder of the toy-making LEGO Group, having its headquarters in Denmark. Over the years, the LEGO Group has expanded the use of the LEGO brand from its famous construction toys to other products, such as computer hardware and software, books, videos, and computer controlled robotic construction sets. The brand was also built into a successful movie franchise with computer-animated films featuring LEGO toys. The LEGO NINJAGO Movie, which is based on the LEGO NINJAGO toy line, is the third installment of the franchise and was released in the United States on September 22, 2017.

The Complainant is the owner of several trademark registrations for the term LEGO (including United States trademark No. 1018875, registered on August 26, 1975 and United States trademark No. 2245652, registered on May 18, 1999) as well as United States trademark No. 4726793, registered on April 28, 2015, for the term NINJAGO. It additionally holds more than 5,000 domain names containing the term LEGO.

The Respondent is a private person based in the United States.

The disputed domain name was registered on September 12, 2017. The disputed domain name is currently inactive. However, the Complainant has submitted evidence that it was used to resolve to a website which prominently displayed the LEGO NINJAGO Movie logo and provided links for free streaming and downloading the full version of the LEGO NINJAGO Movie.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant contends the following:

The disputed domain name captures the Complainant’s registered trademarks LEGO and NINJAGO, simply adding the dictionary terms “the” and “full”, creating an obvious risk of confusion. The additional terms can be interpreted to mean the full version of the LEGO NINJAGO Movie, which is made available on the website associated with the disputed domain name.

The Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent, identified by the WhoIs database as one Dustin Murray, is not commonly known by the disputed domain name. The Respondent is not a licensee of the Complainant nor was the Respondent authorized in any way to use the Complainant’s trademarks. The disputed domain name and the associated metadata are designed to attract Internet users who search for the Complainant’s LEGO NINJAGO Movie to the Respondent’s website, where they can download a pirated version of this movie. Therefore, the Respondent cannot invoke a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The disputed domain name was registered and is being used in bad faith. Given the considerable reputation of the LEGO trademark and the wide publicity of the LEGO NINJAGO Movie, the Respondent should be considered to have had knowledge of the Complainant and its trademark rights when registering the disputed domain name. The Respondent’s registration of the disputed domain name shortly before the official release of the LEGO NINJAGO Movie suggests that the Respondent opportunistically registered the disputed domain name to improperly capitalize on the publicity of the upcoming movie. Although the disputed domain name is currently inactive, its previous use in relation to a website offering a pirated version of the Complainant’s movie constitutes a disruption of the Complainant’s business.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights in the LEGO and NINJAGO trademarks, based on its trademark registrations as well as on the substantial goodwill acquired by the LEGO brand throughout the years.

The disputed domain name comprises the Complainant’s LEGO and NINJAGO trademarks in their entirety. The addition of the words “the” and “full”, which have a negligible semantic content, does not change the fact that the Complainant’s trademarks dominate the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.

The Complainant has thus satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a strong prima facie case that the Respondent lacks rights or legitimate interests in relation to the disputed domain name. Moreover, the Respondent has failed to submit a Response or make any effort to attempt to refute this prima facie case.

The record is clear that the Complainant did not authorize or license the Respondent to use its LEGO and NINJAGO trademarks. The Respondent cannot claim to be known by the disputed domain name. Furthermore, the Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services or with noncommercial or fair use purposes, but to offer access to pirated content. Consequently, the Panel determines that the Respondent has no rights or legitimate interests in the disputed domain name.

Therefore, the Complainant has also met the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Claimant’s LEGO trademark is famous worldwide. Its combination with the NINJAGO trademark, as it appears in the title of the LEGO NINJAGO Movie, is easily recognizable as relating to the Complainant. The Respondent, who could not have been ignorant of the Complainant and its rights, chose to register the disputed domain name incorporating these trademarks. The website associated with the disputed domain name displayed the official logo for the Complainant’s movie and offered free access to a pirated version of this movie without any authorization from the Complainant, which cannot constitute a good faith, bona fide use of the disputed domain name. This supports a strong inference that the Respondent has registered and used the disputed domain name with the intention of disrupting the Complainant’s business, which constitutes bad faith within the meaning of paragraph 4(b)(iii) of the Policy.

The Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(iii) in connection with paragraph 4(b)(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, <thelegoninjagofull.com>, be transferred to the Complainant.

Tobias Zuberb├╝hler
Sole Panelist
Date: February 28, 2018