WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Devin Steenberg

Case No. D2015-0394

1. The Parties

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

The Respondent is Devin Steenberg of Kulpsville, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name <lego-starwars.biz> 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 March 5, 2015. On March 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2015, 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 March 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 2, 2015.

The Center appointed Alejandro Touriño as the sole panelist in this matter on April 17, 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 produces and sells construction toys and other products under the trademark LEGO since 1953. Today, the LEGO products are promoted and sold in more than 130 countries, including the United States of America, where the Respondent is based.

The Complainant has registered the trademark LEGO around the world in connection with a range of toy and related goods. Its vast portfolio of registrations is listed in Annex 6 of the Complaint, including the United States trademark No.1018875, registered on August 26, 1975, for toy building blocks and connecting links for the same, sold separately and as kits for construction of toy houses, buildings, household furnishings, robots, doll figures and vehicular toys.

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. Indeed, the LEGO trademark has been recognized as famous by most relevant rankings and publications.

The Complainant has a license agreement with Lucasfilm Ltd. concerning the use of the trademark STAR WARS incorporated in the LEGO product line.

The Complainant operates its main website at "www.lego.com" and is the owner of more than 4,300 domain names containing the trademark LEGO, including <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 disputed domain name was registered on November 1, 2014.

5. Parties' Contentions

A. Complainant

The Complainant contends that <lego-starwars.biz> is confusingly similar to the Complainant's registered trademark LEGO, since the addition of the trademark STAR WARS does not determine any impact on the overall impression of the dominant part of the domain name, constituted by the trademark LEGO, which is instantly recognizable as a world famous trademark.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that, according to its verifications, the Respondent is not the owner of any registered trademarks or trade names corresponding to the disputed domain name and the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant highlights that no license or authorization of any other kind to use the trademark LEGO has been given by the Complainant to the Respondent.

The Complainant points out that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services since it has been pointed to a website displaying sponsored links to the "www.ebay.com" website and other commercial websites, from which the Respondent has likely derived pay-per-click revenues.

With reference to the circumstances evidencing bad faith, the Complainant states that the Respondent was aware of the well-known trademark of the Complainant when the Respondent registered the disputed domain name. With reference to the use of the disputed domain name, the Complainant states that the disputed domain name was connected to a website containing links to "www.ebay.com" and other sponsored links to various online shops where LEGO products, as well as other products, are offered for sale.

The Complainant therefore concludes that the Respondent has been using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its website.

As an additional circumstance evidencing bad faith, the Complainant evidences that a cease and desist letter was sent to the Respondent requesting a voluntary transfer of the disputed domain name and offering compensation for the out of pocket expenses, but no reply was received by the Respondent despite the Complainant's reminders.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of a vast number of trademark registrations for LEGO, including the United States Trademark Registration No. 1018875, for "toy building blocks and connecting links for the same, sold separately and as kits for construction of toy houses, buildings, household furnishings, robots, doll figures and vehicular toys". Moreover, as recognized in prior panel decisions, the trademark LEGO is indisputably well-known worldwide.

The disputed domain name incorporates two trademarks. The trademark LEGO, which is owned by the Complainant and the trademark STAR WARS, owned by Lucasfilms Ltd. 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" (Annex 14 of the Complaint).

The Panel finds that the combination of the Complainant's trademark with the trademark STAR WARS is not sufficient to prevent a finding of confusingly similarity with the Complainant's LEGO trademark. Moreover, the incorporation of the trademark STAR WARS in the disputed domain name actually serves to heighten the confusion as "LEGO Star Wars" is a product line of the Complainant.

In view of the grounds above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark LEGO in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) before any notice to the Complainant of the dispute, the use by the Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, 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 name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

It is commonly accepted that, under the UDRP Rules, the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the respondent's rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).

In the case at hand, by not submitting a Response, the Respondent has not discussed the Complainant's prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the files, between the Respondent and the Complainant. The Respondent is not licensee of the Complainant, nor has the Respondent otherwise obtained any authorization to use the Complainant's trademarks.

Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has made preparations to use the disputed domain name 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 disputed domain name.

The Panel notes that the disputed domain name has been pointed to a website which displays links mainly aimed at directing visitors to third party commercial websites, including the website"www.ebay.com", where LEGO products are offered for sale.

The Panel finds that the use of the disputed domain name in connection with a website which merely redirects users to locations at which LEGO products and other goods may be purchased from a third party does not constitute a legitimate, noncommercial use of the disputed domain name under the Policy.

The Panel accepts the preceding contentions on Respondent's lack of rights or legitimate interests in the disputed domain name, as uncontroverted, convincing and supported by the evidence.

Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.

In light of the famous character of the Complainant's trademark, the Panel finds it unlikely that the Respondent would not have been aware of the Complainant's trademark when registering the domain name. The fact that the disputed domain name includes the name of one of the Complainant's products further indicates that the disputed domain name was registered specifically with the Complainant and its product in mind.

The Panel shares the view of a number of panel findings of "opportunistic bad faith" in the registration of renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103.

The Panel finds that Internet users, in light of the contents of the web page linked to the disputed domain name, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent's website. Moreover, the Respondent has likely profited by earning pay-per-click revenues (see, inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; Fry's Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).

The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable to this case since the Respondent has attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its website and of the websites linked thereto.

In accordance with prior decisions, the Panel also finds that a failure to respond to a cease and desist letter can be further evidence of bad faith. See, e.g., Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003, in which the Panel stated: "[a]ny such bad faith is compounded when the domain name owner, upon receipt of notice that the disputed domain name is identical or confusingly similar to a registered trade mark, refuses to respond".

In view of the above, the Panel finds that the disputed domain name was 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 disputed domain name <lego-starwars.biz> be transferred to the Complainant.

Alejandro Touriño
Sole Panelist
Date: April 27, 2015