Complainant is LEGO Juris A/S, Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is lego-hogwartscastle, Central Java, Indonesia.
The disputed domain name <lego-hogwartscastle.com> is registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2011. On May 24, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name.
On May 25, 2011, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 27, 2011.
The Center appointed Roberto Bianchi as the sole panelist in this matter on June 30, 2011. 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.
Complainant, based in Denmark, is the owner of LEGO and other trademarks used in connection with construction toys and other products. The revenue for the LEGO Group in 2009 was over US D 2,8 billion.
Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Indonesia.
The LEGO trademark is among the best-known trademarks in the world as a result, among other things, of extensive advertising. The LEGO trademark has been recognized as being famous. The list of the top 500 Superbrands for 2009/2010 issued by Superbrands UK shows the LEGO mark in the eighth place, between COCA-COLA and APPLE.
Complainant owns trademark registrations for the LEGO mark in numerous countries, including Indonesia, the country of residence of Respondent, under Reg. 430.237, renewed on March 15, 2009. Complainant also owns the LEGO Community Trademark, Reg. No. 000039800, Reg. Date October 5, 1998, filed on April 1, 1996, covering products and services of International Classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42.
Complainant has a product named “Hogwarts Castle” under the product section “LEGO Harry Potter”.
Warner Bros. Entertainment Inc., not a party in this proceeding, owns the word mark HOGWARTS, Reg. No. 2491427, Reg. Date September 18, 2001, covering goods/services of International Class 9, as confirmed by the Panel on July 14, 2011 by visiting the TESS and TARR databases of the USPTO.
The disputed domain name was registered on October 18, 2010.
In its Complaint, Complainant contends as follows:
Complainant is the owner of the well-known LEGO trademark. The disputed domain name is confusingly similar to Complainant’s LEGO registered trademark and the HOGWARTS trademark owned by Warner Bros. The suffix “castle” does not detract from the overall impression of confusion with the LEGO mark, and the disputed domain name must therefore be considered to be confusingly similar with Complainant’s trademark.
Respondent has no registered trademarks or trade names corresponding to the disputed domain name. Complainant has also not found that Respondent has been using LEGO in any other way that would give it any legitimate rights in the name. Complainant has given no license or authorization of any other kind to Respondent, to use the LEGO trademark. Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant.
The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. It is highly unlikely that Respondent would not have known of Complainant’s legal rights in the name LEGO at the time of the registration. It is obvious that it is the fame of the trademark what motivated Respondent to register the disputed domain name. Respondent cannot claim to have been using the LEGO name, without being aware of Complainant’s rights to it. This proves that Respondent’s interests cannot have been legitimate.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The domain name is connected to a website displaying information about LEGO Hogwarts Castle, showing the LEGO logotype and also containing links to “www.amazon.com”, where Complainant’s products are offered. Respondent cannot be considered as a reseller as the products are sold at “www.amazon.com” and not on its own website.
Respondent does not qualify to fulfill the requirements for a bona fide offering. Respondent is using the LEGO trademark and misleading Internet users to commercial websites for its own commercial gain and, consequently, Respondent is tarnishing the LEGO trademark. Thus, Respondent has no rights or legitimate interests in respect of the Domain Name.
The considerable value and goodwill of the mark LEGO is most likely what made Respondent register the disputed domain name. The domain name has been connected to a website containing links to “www.amazon.com where LEGO products were offered, Consequently, Respondent has been using the disputed domain name 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. Furthermore, as stated earlier, there is no disclaimer on the website explaining that no relationship exists with Complainant. Consequently, Respondent should be considered to have registered and to be using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions, and is in default.
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the disputed domain name 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 disputed domain name has been registered and is being used in bad faith.
As seen in section 4 above, Complainant owns trademarks rights in the LEGO mark.
The disputed domain name fully incorporates the LEGO mark, adding a hyphen, the terms “Hogwarts” and “castle”, and the gTLD “.com”.
“Hogwarts” is the name of a “school of magic and wizardry” appearing in the J.K. Rowling series of fiction books with Harry Potter as main character. It is also a trademark owned by Warner Bros., a third party to these proceedings. However, the addition of a third party mark in a domain name does not, by itself, distinguish the domain name from the mark of the complainant. See Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793, relating to <viagra-nascar.com> (“The addition of the third party mark does not eliminate the visual impression that the disputed domain name is associated with Complainant’s trademark”.) See also Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142, relating to <chevron-texaco.com> (“The disputed domain name […] clearly contains the Complainant's mark. The Panel is aware that another petroleum company's famous mark, viz. "Texaco", also is contained in the disputed domain name and that Texaco is not a party to this proceeding. However, the Panel finds the Complainant nonetheless satisfies the requirements of the Policy at 4a(i) […]. In this case, the Panel finds the Respondent's domain name, <chevron-texaco.com> is confusingly similar to the Complainant's Chevron mark.)”
As to the addition of the generic term “castle”, UDRP panels normally find that the addition of merely generic wording to a trademark in a domain name is insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP, and that the incorporated trademark constitutes the dominant component of the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 1.9.
Finally, it is well established that the addition or omission of a hyphen in a domain name does not alter by itself a finding of confusing similarity.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s LEGO mark.
Complainant contends that Respondent has no registered trademarks or trade names corresponding to the disputed domain name, that Complainant has given no license or authorization of any kind to Respondent to use the LEGO trademark, that Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant, that the domain name is connected to a website displaying information about LEGO Hogwarts Castle, showing the LEGO logotype and also containing links to “www.amazon.com”, where Complainant’s products are offered.
The Panel finds that considered together, these contentions and supporting evidence provided with the Complaint amount to a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. It is the consensus view of UDRP panels that once a complainant makes out a prima facie case, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview 2.0.
Since Respondent is in default and has not submitted any comments or evidence in its own favor, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.
Given that Complainant’s LEGO mark is well-known worldwide in respect of toys and other products, and that Complainant’s trademark registrations for LEGO predate the registration of the disputed domain name, it would be extremely unlikely that Respondent did not know of this mark and Complainant’s products before Respondent registered the disputed domain name. Moreover, Respondent’s use of the domain name in a website completely dedicated to Complainant’s LEGO Hogwarts product, re-directing Internet users to “www.amazon.com” website where Complainant’s LEGO products are being offered, reveals that Respondent aimed precisely at Complainant and its LEGO mark when it registered the disputed domain name, i.e. the disputed domain name was registered in bad faith.
As seen above under “rights and legitimate interests”, Respondent is not a reseller of Complainant’s LEGO Hogwarts product. Instead, in its website at the disputed domain name Respondent presumably receives monies from re-directing consumers interested in the Hogwarts product to the website at “www.amazon.com”, presumably a real reseller of Complainant’s products.
The Panel believes that this behavior of Respondent is a parasitic abuse of the domain name registration, described in Policy paragraph (b)(iv) (“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your web site or location.”), a circumstances of registration and use in bad faith.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Although Complainant contends that since March 2010 it has a license agreement with Warner Bros Consumer Products Inc. concerning the use of the HARRY POTTER trademark incorporated in the LEGO product line. Complainant failed to submit this agreement or an excerpt thereof, or any authorization by Warner Bros. Entertainment Inc., the owner of record of the HOGWARTS mark, incorporated in the disputed domain name, to seek transfer of this domain name in Complainant’s exclusive favor. This is no obstacle to a decision in favor of Complainant since the Panel, as the panel in Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142 cited above, believes that the owner of the third party mark would have the same recourse to a proceeding under the Policy or to court action as had Complainant LEGO Juris A/S.
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 <lego-hogwartscastle.com> be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Dated: July 14, 2011