WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Brannum Case No. D2010-0146 1. The Parties
Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Brannum of Robinsdale, Minnesota, United States of America. 2. The Domain Name and Registrar
The disputed domain name [“Domain Name”] is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2010. On February 2, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Name. On February 4, 2010, GoD, Inc., transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 5, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 8, 2010.
The amendment to the Complaint showed that, based on information provided by the Registrar GoD, the correct Respondent is Brannum of Robinsdale, Minnesota, United States and not Domains by Proxy, Inc as stated in the original Complaint.
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 Respondent of the Complaint, and the proceedings commenced on February 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 3, 2010.
The Center appointed Clive L. Elliott as the sole panelist in this matter on March 10, 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. 4. Factual Background
Complainant is a corporation based in Denmark. It is the owner of the trademark LEGO. It is also the owner of more than 1,000 domain names containing the term “lego”.
The Domain Name was first created (according to the WhoIs) on October, 7, 2006. 5. Parties' Contentions A. Complainant
Complainant asserts that it is the owner of the trademark LEGO and all other trademarks used in connection with the LEGO brand of construction toys and other LEGO branded products. Complainant states that its licensees are authorized to exploit the Complainant's intellectual property rights including its trademark rights, in the United States and elsewhere. Complainant advises that it commenced use of the LEGO mark in the United States, through its predecessor, during 1953 to identify construction toys made and sold by them. Complainant contends that over the years the business of making and selling LEGO has grown substantially and states my way of example that in 2008 the revenue for the LEGO Group was more than USD 1.8 billion. Complainant advises that it has subsidiaries and branches throughout the world and that LEGO products are sold in more than 130 countries.
Complainant contends that the trademark LEGO is well known due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. It supports its contention that the trademark is recognized as being famous by annexing the Superbrands UK report of the official top 500 superbrands for 2009/2010 wherein LEGO is placed as number 8 of the most famous trademarks and brands in the world.
Complainant claims that the LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets and that it maintains an extensive web site under the domain name .
Complainant advises that in 1999 it entered into a license agreement with Lucasfilm Ltd concerning the use of the trademark Star Wars incorporated in the LEGO product line. Complainant states that STAR WARS was the first licensed property produced by the LEGO Group and that although the license was originally slated to last from 1999 to 2007, due to its popularity, an agreement was reached in 2006 with Lucasfilm Ltd and the LEGO Group to extend the license to 2011. Complainant advises that since the LEGO Group translated Star Wars into the construction play pattern, the line has generated more than $1 billion in retail sales around the world.
Complainant states that the dominant part of the Domain Name comprises the word LEGO which is identical to its registered trademark. Complainant also states that in addition to being confusingly similar to its trademark LEGO, the Domain Name also comprises the trademark STAR WARS.
Complainant believes that the addition of the suffix “figures” is not relevant and will not have any impact on the overall impression of the dominant part of the domain name, which it believes is instantly recognizable as a world famous trademark.
Complainant submits that people are likely to mistake the Domain Name for a name related to the Complainant as the likelihood of confusion includes an obvious association with its trademark and persons seeing the Domain Name at issue, even without being aware of the content, are likely to think that the Domain Name is in some way connected to Complainant. Complainant believes that there is a considerable risk that the trade public will perceive the Domain Name either as a domain name owned by Complainant or that there is some kind of commercial relationship with Complainant. Complainant also asserts that there is a risk that its trademark will be tarnished by being connected to the Domain Name and it asserts that Respondent is exploiting the goodwill and image of Complainant's trademark.
Complainant claims that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services and believes that Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a web site that contains sponsored links to LEGO items for sale.
Complainant asserts that it sent a cease and desist letter to Respondent on December 9, 2009 and when no response was received a reminder letter was sent to Respondent on January 12, 2010. Complainant also asserts that an additional reminder was sent to Respondent on January 20, 2010 and that no reply has been received from Respondent. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has clearly established that it is the owner of the trademark LEGO through registration and extensive use of the trademark. LEGO is one of the world's leading brands in relation to construction toys. Complainant has also extended the use of the trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.
Complainant asserts that in 1999 it entered into a license agreement with Lucasfilm Ltd. concerning the use of the trademark STAR WARS incorporated in the LEGO product line and that since the LEGO Group translated Star Wars into the construction play pattern, the line has generated more than USD 1 billion in retail sales around the world.
On this basis the Panel finds that Complainant clearly has trademark rights in the combination LEGO and STAR WARS (referred to as “the Trademark”) through its extensive marketing and sales of construction toys used in conjunction with the well-known Star Wars trilogy.
The Domain Name is confusingly similar to the Trademark as it consists of the combined term LEGO and Star Wars in conjunction with the descriptive word/suffix “figures”. Complainant argues that the addition of this suffix is essentially irrelevant and will not have any impact on the overall impression of the dominant part of the Trademark, which would be instantly recognizable and associated with Complainant. The Panel accepts this argument. The inclusion of the word/suffix “figures” does not defeat the identity or confusing similarity created by use of the Trademark in its entirety and the addition of the word “figures” to the Trademark fails to distinguish the Domain Name from the Trademark.
For these reasons it is found that the Domain Name is confusingly similar to the Trademark, that Complainant has rights in the Trademark and that the requirements of paragraph 4(a)(i) of the Policy are thus met. B. Rights or Legitimate Interests
In the absence of a Response it is difficult to ascertain what rights or interests Respondent might assert in support of its registration and use of the Domain Name.
Complainant in turn asserts that Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a web site that contains sponsored links to LEGO items for sale. This appears to suggest that Respondent is using the Domain Name to generate “click through” revenue. In the absence of any explanation or denial from Respondent the Panel infers that this is primarily a pay per click scheme and that the primary purpose of the Domain Name is to generate “pay per click” revenue in accordance with this now well-established practice.
On this basis the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant thus succeeds in meeting the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Respondent has registered and has used the Domain Name in bad faith.
The Panel is obliged to look at the evidence and submissions before it. For the reasons set out above there is no basis to conclude that Respondent's conduct and motivations were proper. In the event the Panel concludes that the Domain Name was registered and used in bad faith. On this basis, Complainant has satisfied 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 name be transferred to Complainant.
Clive L. Elliott
Sole Panelist
Dated: March 28, 2010
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