The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is school of Mukdahan, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2011. On April 12, 2011, the Center transmitted by email to N LLC. a request for registrar verification in connection with the disputed domain name. On April 12, 2011, N LLC 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 April 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2011.
The Center appointed Michael J. Spence as the sole panelist in this matter on May 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. 4. Factual Background
The Complainant is the proprietor of many well known marks including the term “lego”. Indeed these marks have on various occasions been classified as “famous”. The Complainant also owns more than 1000 domain names containing the term. It uses these marks to promote the sale of its products in over 130 countries, including Thailand. In 2009 the revenue of the Lego group was more than US D2.8 billion. Since 1999, the Complainant has had a licence concerning the use of the trade mark STAR WARS in relation to the Lego product line, a trade mark referring to the popular films of that name. The Respondent operates a website under the disputed domain name offering the Complainant's products for sale by offering click-through links to a third party retailer. The Respondent is not an authorized dealer of the Complainant's products. This is not made clear on the Respondent's website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its marks; that the Respondent has no rights or legitimate interests in its use; and that the registration and use of the disputed domain name is in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant's trade mark in its entirety, together with a mark under which an extremely successful product line has been sold for over a decade. Far from resolving any confusion caused by the use of the term ”lego”, the addition of the term “Starwarsets” actually exacerbates it. In this Panel’s view, there can be no doubt that the disputed domain name is identical or confusingly similar to the Complainant's marks.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie, that the Respondent has no rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
In this case, given the very well established reputation of the Complainant's mark and therefore the strong likelihood of confusion, the only possible legitimate interest that the Respondent might claim is as a reseller of the Complainant's goods. However, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes it clear that in order to constitute a legitimate, albeit unathourized, resale site, the site must 'accurately and prominently [disclose] the registrant's relationship with the trademark holder". In this case the absence of such a relationship is not made clear on the website operating under the disputed domain name. There is no evidence of the Respondent having any other rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy in relation to the disputed domain name. C. Registered and Used in Bad Faith
Given the long-standing and international reputation of the Complainant's marks, and given the use in the disputed domain name of the additional trade mark STAR WARS with which the Complainant's product is associated, it is inconceivable that the Respondent might have registered the disputed domain name unaware of the potential for consumer confusion. Given that the Respondent's website is not a legitimate resale site, it is apparent that the Respondent's intention was to profit from such confusion. Such an intention is a clear example of bad faith.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy in relation to the disputed domain name. 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 domain name, be transferred to the Complainant.
Michael J. Spence
Sole Panelist
Dated: June 3, 2011
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