WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Domains by Proxy, Inc. / Goodsteed Limited

Case No. D2010-1100

1. The Parties

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

The Respondent is Domains by Proxy, Inc. / Goodsteed Limited of Scottsdale, Arizona, United States of America and of Nicosia, Cyprus, respectively.

2. The Domain Names and Registrar

The disputed domain names <legodeathstar.net>, <legofigures.net>, <legomen.net>, <legominifigures.net>, <legopeople.net>, <legostarwarsgames.net> and <legotrains.net> (the “Domain Names”) are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2010. On July 2, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Names. On July 5, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 6, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 8, 2010. The Center verified that the Complaint together with the amendment to 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 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2010.

The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on August 3, 2010. 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.

Upon Panel Order dated August 17, 2010, the Complainant was required to submit evidence that the company Lucasfilm Ltd., owner of the STAR WARS trademark, which is not a party in the current UDRP proceedings, agrees to the Complainant’s request for transfer of the domain name <legostarwarsgames.net> to the Complainant, as it comprises in part the STAR WARS trademark.

The Panel decided to grant the Complainant’s requests for the extension of the deadlines to submit the evidence requested for by Panel Order No. 1. The final due date for the Complainant to submit such evidence was September 27, 2010.

The evidence requested was communicated to the Panel on September 17, 2010 in the form of an authorization from Lucasfilm Ltd. to the registration and to the transfer to the Complainant of the domain name <legostarwarsgames.net>. Another authorization from Lucasfilm Ltd. concerning <legodeathstar.net> has been communicated as well.

4. Factual Background

The Complainant’s trademark LEGO is a trademark for construction toys and other LEGO branded products.

The LEGO mark has been used in relation to such goods for decades in many countries throughout the world. The Complainant alleges to be the owner of trademark registrations for LEGO, and submits as evidence an internal listing of its trademark registrations worldwide. The Complainant’s licensees are authorized to exploit the Complainant’s trademark rights in the United States and elsewhere.

The Complainant explains it initiated the use of LEGO trademark in United States in 1953 and that its products, through its subsidiaries and branches throughout the world, are now sold in more than 130 countries, including the United States.

The Complainant provides a listing of over 1.000 domain names containing the word LEGO and for which the Complainant claims to be the owner.

According to “Superbrands UK”, LEGO in the years 2009-2010 was the world most renowned toy brand, and number 8 in the list of the 500 most renowned brands in the world.

The Complainant claims to be maintaining an extensive website under the domain name <lego.com>.

The Complainant claims benefit of article 6bis of the Paris Convention for the Protection of Industrial Property, as confirmed and extended by article 16.2 and article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights and argues the protection for the mark LEGO goes far beyond toys and goods similar to toys.

The Complainant explains it has entered in 1999 into a license agreement with Lucasfilm Ltd. concerning the use of the STAR WARS trademark which is incorporated in the LEGO product line. The license was originally signed to last until 2007. In 2006, an agreement was reached to extend this license to 2011.

The Domain Names were registered on February 3, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following.

A. The Domain Names are confusingly similar to the trademark owned by the Complainant

The Complainant contends that:

- the dominant part of the Domain Names comprises the trademark LEGO, which is identical to the Complainant’s registered trademarks and domain names;

- the Domain Names are confusingly similar to the Complainant’s world famous trademark LEGO, the fame of which has been confirmed in numerous previous UDRP decisions, for example in LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692, LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715 and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680;

- the addition of the prefixes and suffixes to the Domain Names are not relevant and do not impact the overall impression of the dominant part of the name LEGO, instantly recognisable as the world famous trademark. The Complainant’s finds support in Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488;

- in addition to the trademark LEGO, one domain name also comprises the trademark STAR WARS. The Complainant finds support in Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112, which states that the mere combination of two separate trademarks is to be considered confusingly similar to the asserted trademarks and that “[p]ersons (…) 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 addition of the top-level domain “.net” does not have any impact on the overall impression of the dominant portion of the Domain Names, and it is therefore irrelevant to determine the confusing similarity between the Complainant’s trademark and Domain Names;

- anyone who sees the Domain Names is bound to mistake it for names related to the Complainant.

B. The Respondent has no rights or legitimate interests in respect to the Domain Names

The Respondent has no registered trademarks or trade names corresponding to the Domain Names.

The Complainant has never given to the Respondent any license or authorization to use LEGO trademark, nor is the Respondent an authorized distributor of the Complainant’s and has never had business relationship with the Complainant, despite the text found on the websites associated to the Domain Names. The Complainant finds support in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.

It is unlikely that the Respondent was not aware of the Complainant’s legal rights in the LEGO brand at the time of the registration of the Domain Names. The Complainant finds support in Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314.

The Respondent is not using the Domain Names in connection with a bona fide offering of goods or services but is instead using them to generate traffic to web sites that contain links to LEGO items for sale as well as sponsored links. The Complainant finds support in Drexel University v. David Brouda, WIPO Case No. D2001-0067.

C. The Domain Names were registered and are being used in bad faith

The trademark LEGO designates the toys produced and sold by the Complainant and has the status of a well-known and reputed trademark, with a substantial and widespread reputation throughout the European Community and throughout the world. The number of third party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed the last years. The considerable value and goodwill of the mark LEGO is most likely a reason for this and it is also what made the Respondent register the Domain Names.

The Complainant tried to settle the matter amicably by sending a cease and desist letter to the Respondent by email, without receiving any answer despite the two reminders sent. The Complainant finds support in 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 and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460, according to which the failure of a Respondent to respond to a cease and desist letter, or similar attempt at contact, has been considered relevant in a finding of bad faith.

The Domain Names are connected to sites offering links to LEGO products sold on via “www.amazon.com” as well as sponsored links. Consequently the Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.

It is irrelevant whether or not the Respondent is actually getting revenue from the pages himself. The Complainant finds support in Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs a panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

In view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain an order that the Domain Names should be transferred:

(1) the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the Domain Names; and

(3) the Domain Names have been registered and are being used in bad faith.

In compliance with paragraph 3(b)(viii) and (xv) of the Rules, the Complaint must “[s]pecify the trademark(s) or service mark(s) on which the complaint is based” and “[a]nnex any documentary or other evidence, including […] any trademark or service mark registration upon which the complaint relies”.

The Complainant has also to “describe the grounds on which the Complaint is made” on the basis of paragraph 3(b)(ix) of the Rules.

Therefore the Complainant has to submit relevant evidence of its rights and of the alleged facts that support the grounds on which the Complaint is made.

In light of the UDRP’s mission to fight against cybersquatting by providing a fast and cost effective international procedure, it is in the interest of trademark owners to ensure the credibility and quality of this procedure. The balance between the efficacy and the quality of the UDRP procedure is an important question. This is a general key issue.

The Panel should therefore be able to decide the case on the basis of the Complaint and the proof submitted.

What is unique about the Internet is that it allows companies to potentially reach any consumer globally. As such, it contributes to the creation of new wealth, but at the same time engenders new costs, like the administrative costs incurred by trademark owners to fight against cybersquatting.

In the present case, the Complainant is the registered owner of a Community Trademark No. 39800 for the word mark LEGO, notably in connection with toys and toy related products.

The Complainant also provided a listing of its other trademark registrations as evidence of its rights in the mark LEGO. In the Panel’s opinion, party-prepared internal listings do not per se constitute appropriate evidence of trademark rights. In the case of claimed registered rights some form of evidence of registration by a competent authority is typically required. If not a copy of the relevant trademark certificate, then at the very least a print-out of the relevant registration form of the relevant online official trademark registry should be provided. The only print-out from an official online trademark registry provided in this case concerns the above cited Community trademark.

In addition, the Complainant provides an attestation from its Director as sole evidence of the alleged license agreement with Lucasfilm Ltd. This is however not sufficient to accurately evidence the existence and scope of said agreement

As the Panel, in compliance with paragraph 7 of the Rules, must be “impartial and independent”, it can not solely base its decision on previous UDRP decisions in which the panel upheld the rights of the Complainant on the mark LEGO.

The Complaint has, in accordance with the language of the registration agreement of the Domain Name, been submitted in English. The trade registry of the Complainant provided under Annex 7 is submitted in Danish. However, the main data indicated in the trade registry is identical to the data included in the Complaint.

Regarding the grounds of the Complaint, the Complainant claims to be operating an extensive LEGO website, but does not provide any clear evidence supporting this assertion.

However, in accordance with paragraph 10(a) of the Rules, the Panel considers itself competent to independently obtain additional evidence from the Internet in order to clarify the issue. The Panel refers to previous decisions issued by other panels concerning LEGO, which have adopted the same view (LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Stop2shop, G V, WIPO Case No. D2009-0784 and LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC., WIPO Case No. D2009-0924).

Such circumstances lead the Panel to visit the USPTO online trademark registry, LEGO website and to check on the website “www.lego.com” the existence of LEGO products which are co-branded LEGO and STAR WARS.

The Panel could check that, amongst the multiple domain name procedures it has initiated, the Complainant has also successfully filed three complaints against the current Respondent (LEGO Juris A/S v. Domains by Proxy, Inc./Goodsteed Limited, WIPO Case No. D2010-0917, LEGO Juris A/S v. Goodsteed Limited, WIPO Case No. D2010-0797 and LEGO Juris A/S v. DomainsByProxy.com / Goodsteed Limited, WIPO Case No. D2010-0659), and the Complainant notably uses the subdomains <starwars.lego.com> and <minifigures.lego.com> on the Internet, as concluded by the Panel from its own Internet searches.

A. Identical or Confusingly Similar

The Complainant is the registered owner of a Community Trademark for the word mark LEGO, notably in connection with toys and toy related products.

The Panel verified on the website ”www.lego.com” that under the section “products” there is a link entitled “Star Wars”. When clicking on this link, the Internet user is redirected to a page at <starwars.lego.com>. This part of the website <lego.com> is available in some countries, including the United States and some European countries.

On the basis of the Complainant’s Community trademark, for which the Complainant has submitted proof in the form of a printout of the Community Trademark Registry, it is established that the Complainant has prior trademark rights in the word LEGO with protection within the European Community.

Furthermore, the Complainant uses the sub domains <starwars.lego.com> and <minifigures.lego.com> on the Internet.

The Domain Names consist of the Complainant’s trademark LEGO in its entirety, with the addition of the suffixes “deathstar”, “figures”, “men”, “minifigures”, “people”, “starwarsgames”, and “trains”.

The presence of the common terms “figures”, “men”, “minifigures”, “people”, and “trains” is not sufficient to distinguish it from the Complainant’s mark. It is widely accepted that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question (see e.g., Terex Corporation v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0733 and Billabong International Limited, GSM (Operations) Pty Ltd, GSM (Trademarks) Pty Ltd, GSM (Europe) Pty Ltd, GSM (NZ Operations) Ltd v. Mookie Lei, WIPO Case No. D2008-0101).

The Complainant’s trademark LEGO is protected for toys and according to the Panel research on the Complainant’s website “www.lego.com”, this trademark is used in connection with figurines and toys such as vehicles or trains. Therefore a likelihood of confusion with the Complainant’s trademark cannot be excluded.

As for the suffixes “starwargames” and “deathstar”, the Complainant first provided a letter from its Director certifying that there is an agreement with the company Lucasfilm Ltd. as to the use of the STAR WARS trademarks in connection with the commercialisation of toys and game sets under the co-branding LEGO STAR WARS.

This agreement was not attached by the Complainant to the Complaint. A search on the Complainant’s website “www.lego.com” confirmed the existence of a STAR WARS series for LEGO products. Furthermore, the Complainant commercialises a deathstar toy replica under the co-branding LEGO STAR WARS; the deathstar being a battle station featured in STAR WARS movies. For these reasons, the use of the terms “starwargames” and “deathstar” within the Domain Names does not alter the likelihood of confusion with the Complainant’s trademark.

The Lucasfilm Ltd. affidavit that has been finally provided by the Complainant upon Panel Order expressly specifies that Lucasfilm Ltd. agrees to the transfer of the domain name <legostarwarsgames.net> to the Complainant, which further legitimates the Complainant’s request.

The generic top-level domain “.net” can be disregarded when judging identity or confusing similarity (see e.g. Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Names are confusingly similar to the Complainant’s trademark. The condition of the paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

As set forth by paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain names for purposes of [p]aragraph 4(a)(ii):

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain names, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not submit a Response in this proceeding and has not provided any evidence or circumstances required to establish that it has rights or legitimate interests in the Domain Names, according to paragraph 4(c) of the Policy.

There is no evidence that the Respondent makes noncommercial and fair use of the Domain Names without intention to divert consumers, as addressed under paragraph 4(c)(iii) of the Policy.

Further, the Respondent does not make a bona fide offering of goods and services, and the Complainant provides evidence that the Domain Names directed to websites comprising links to LEGO items for sale on “www.amazon.com”, as well as sponsored links. At the moment of drafting this Decision, this was still the case for the domain name <legostarwarsgames.net>. The Panel found that such website provides sponsored links to other distributors of LEGO products as well as to “www.amazon.com”.

Accordingly, the Respondent is not a reseller of LEGO products and the rules developed under the Oki Data decision on whether an offering of goods or services by a reseller may be regarded as bona fide for the purposes of paragraph 4(c)(i) of the Policy cannot apply (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

The Oki Data decision laid down four requirements that must be met before it may be said that a reseller of goods or services is making a bona fide offering of such good or services:

- “[r]espondent must actually be offering the goods or services at issue”;

- “[r]espondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods”;

- “the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents”;

- “[r]espondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name”.

As indicated by the screenshots of the websites to which the Domain Names directed when the Complaint was filed and which were submitted by the Complainant, the Domain Names contained sponsored links for Complainant’s products, as well as sponsored links to other products. As such the Respondent does not fulfil all the requirements set out above.

Furthermore, there is no evidence that the Respondent has any connection or affiliation with the Complainant, and the latter asserts it has not consented to the Respondent’s use of the trademark in the Domain Names.

Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

In view of the reputation of the trademark LEGO, the Panel is of the opinion that the Respondent must have been aware that the Domain Names reproduced the protected trademark of the Complainant.

The Complainant submits documents demonstrating that its LEGO trademark enjoys worldwide reputation for toys and leisure.

The Panel finds that the Domain Names were registered intentionally to misdirect customers looking for the Complainant’s websites relating to LEGO products, and notably the STAR WARS series. This constitutes bad faith registration.

The Complainant’s evidence show that the Domain Names redirected to web pages comprising links to LEGO items for sale on “www.amazon.com” as well as sponsored links. The Panel could check that the other links provided on the website “www.legostarwarsgames.net” were notably related to LEGO products, thus confirming the intention of the Respondent to create confusion.

The Respondent appears to have used the Domain Names to intentionally attempt to divert Internet traffic to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites. This constitutes bad faith registration and use of the Domain Names in application of paragraph 4(b)(iv) of the Policy (see e.g. CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201 and Lego Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master WIPO Case No. D2010-0138).

In addition, the Respondent has already been a party to three previous UDRP disputes with the Complainant concerning the relatively recent registration of the domain names <legostarwarsfigures.net>, <buylego.net>, <cheaplego.net>, <legorobot.net> and <legostorage.net> and was found to be cybersquatting on the LEGO trademark. In these cases the panels issued a transfer decision (LEGO Juris A/S v. DomainsByProxy.com / Goodsteed Limited, WIPO Case No. D2010-0659, LEGO Juris A/S v. Goodsteed Limited, WIPO Case No. D2010-0797 and LEGO Juris A/S v. Domains by Proxy, Inc./Goodsteed Limited, WIPO Case No. D2010-0917).

The fact that the Respondent has engaged in a pattern of such conduct is additional evidence of the registration and use of the Domain Names in bad faith, in the meaning of paragraph 4(b)(ii) of the Policy.

With respect to Lucasfilm Ltd. affidavit provided by the Complainant upon Panel Order, the Panel acknowledges that Lucasfilm Ltd. agrees to the Complainant request to transfer the domain name <legostarwarsgames.net> to the Complainant.

For the foregoing reasons, the Panel finds that the Complainant has also established the finding of bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <legodeathstar.net>, <legofigures.net>, <legomen.net>, <legominifigures.net>, <legopeople.net>, <legostarwarsgames.net> and <legotrains.net> be transferred to the Complainant.

Marie-Emmanuelle Haas
Sole Panelist
Dated: October 5, 2010