The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Ken Rolling of Anchorage, Alaska, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2011. On August 22, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2011, 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 September 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2011.
The Center appointed Torsten Bettinger as the sole panelist in this matter on October 7, 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 owner of the well-known LEGO trademark, used throughout the world in connection with brick-shaped construction toys marketed to children. The LEGO mark is registered in many countries world wide, including in the United States, where the Respondent is located. The Complainant has used its LEGO mark in commerce since 1953. The Complainant has subsidiaries and branches throughout the world, and Lego products are sold in more than 130 countries. The Complainant indicates that revenues for the LEGO Group in 2009 exceeded USD 2.8 billion.
In 1999, the Complainant entered into a license agreement with Lucasfilm Ltd. for the creation of a line of toys featuring the characters of the popular Star Wars movies. The Complainant provided a signed declaration indicating that such license agreement remains active. In addition to producing and marketing a line of Star Wars-themed construction sets, the Complainant has also developed a Star Wars video game, in which the characters appear to be made of Lego toys.
The disputed domain name was registered on April 7, 2011. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name is confusingly similar to its LEGO trademark as it fully includes the mark followed by the third-party trademark STAR WARS and the descriptive term “video game”. The Complainant has a license to use the STAR WARS mark in connection with its line of Star Wars-branded Lego products, including construction toy sets and video games. The Complainant argues that a domain name which contains the trademarks of two companies shall be deemed confusingly similar to each of the two marks. Further, the Complainant states that the “video game” portion of the domain name is merely descriptive of its goods and as such is incapable of distinguishing the disputed domain name from the LEGO trademark.
The Complainant further contends that it has not authorized the Respondent to use its LEGO mark in any fashion, that the Respondent has no connection to the Complainant, and that the Respondent is not using the disputed domain name in connection with any bona fide commercial, noncommercial or fair use.
Finally, the Complainant states that the disputed domain name was registered and has been used in bad faith due to the worldwide strength of its LEGO mark and its numerous registrations for the mark which predate the registration of the domain name. As the website at the disputed domain name displays pay-per-click links for, inter alia, online video games, the Complainant argues that the Respondent has registered and used the disputed domain name in order to divert Internet traffic to its website for commercial gain in violation of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin,WIPO Case No. D2009-0323; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR,WIPO Case No. D2001-1480; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698.
Additionally, it is well established that a gTLD suffix, such as “.info”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The disputed domain name clearly contains the entirety of the Complainant’s well-known LEGO mark. LEGO is the first term in the textual string of the domain name, combined with the terms “star wars” and “video game”. Since Complainant has demonstrated that it has an active license with Lucasfilm Ltd. for the production and sale of Star Wars-themed Lego products, including a Lego Star Wars video game that chronicles the action of the Star Wars movies, it is clear that these terms are associated with the goods sold by the Complainant.
Previous UDRP panels have addressed the issue of disputed domain names which contain third-party trademarks, and it has been determined that a domain name containing more than one trademark may be considered confusingly similar to each of the marks contained therein. See Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793; Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC,WIPO Case No. D2003-0112; and F. Hoffmann-La Roche AG v. Bob,WIPO Case No. D2006-0751.
Furthermore, in this instance, the STAR WARS mark is indicative of a product line produced by the Complainant under license. Therefore, the inclusion of the STAR WARS trademark serves to heighten the risk of confusion by Internet users. See LEGO Juris A/S, v. Lego Star Wars Minifigs,WIPO Case No. D2011-1231 and LEGO Juris A/S v. DomainsByP / DBA David Inc,WIPO Case No. D2011-1288.
Finally, as regards the addition of the term “video game, “ it is well-established that the addition of generic or dictionary terms which are descriptive of a complainant’s goods or services will generally not serve to distinguish a respondent’s domain name from the relevant trademark. See Revlon Consumer Products Corporation v. Vladimir Sangco,WIPO Case No. D2010-1774; Viacom International Inc. v. Transure Enterprise Ltd.,WIPO Case No. D2009-1616; and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110.
The Panel thus finds that the disputed domain name is confusingly similar to the Complainant's LEGO trademark and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the consensus view among WIPO UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its LEGO mark in any fashion and that there is no connection between the Respondent and the Complainant. There is no evidence on the present record, on the website active at the disputed domain name, or in the publicly-available WhoIs records to indicate that the Respondent is commonly known by the domain name or a name corresponding to the domain name. Additionally, as discussed below, the website displays pay-per-click links through which the Respondent appears to generate click-through revenue. Thus, the Respondent is clearly not making a noncommercial or fair use of the domain name. Finally, the Respondent’s use of the domain name does not constitute a bona fide offering of goods or services as it is trading on the goodwill of the Complainant’s trademark in order to generate revenue.
The Respondent’s website displays a single graphic from the Complainant’s “Star Wars” video game, which contains the Complainant’s logo. A small link at the top of the page reads “Blog”. Clicking on this link directs users to a landing-style page which contains minimal text and a number of sponsored links for, inter alia, “Xbox 360 Games” and the online game EVONY, which has no connection to the Complainant. The Respondent thus uses the Complaint’s trademark, and the name of its popular video game, to earn pay-per-click revenue. Such use of the disputed domain name to generate revenue via sponsored links does not constitute a bona fide offering of goods or services. See Lego Juris A/S v. Young entrepreneur success, Trian Tego Utomo MSA,WIPO Case No. D2010-0354 and LEGO Juris A/S v. J.h.Ryu,WIPO Case No. D2010-1156.
The Respondent has not replied to the Complaint, and as such has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
The Complainant has provided substantial evidence that its LEGO mark is widely known throughout the world in connection with its signature brick building toys. The LEGO mark has been in use since 1953, and the Complainant’s license agreement with Lucasfilm Ltd. has been in place since 1999. The disputed domain name selected by the Respondent contains the Complainant’s trademark in combination with a third-party mark and the term “video game”, which combined suggest one of the Complainant’s successful commercial products. Thus, it is clear to the Panel that the Respondent was fully aware of the Complainant and its LEGO mark when it selected the disputed domain name.
Furthermore, by fully incorporating the LEGO mark in the disputed domain name and using the domain name in connection with a landing page displaying a graphic from the Complainant’s Star Wars video game, and providing links to third parties’ websites, the Respondent was, in all likelihood, trying to divert Internet traffic intended for the Complainant’s website to its own for commercial gain by creating a likelihood of confusion with the Complainant’s marks. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267 and F. Hoffmann-La Roche AG v. DOMIBOT,WIPO Case No. D2006-0327.
The Panel additionally notes in this regard that the Respondent failed to reply to the Complainant’s cease-and-desist letter of May 18, 2011, and a subsequent follow-up message sent on June 20, 2011.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also been met. 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.
Torsten Bettinger
Sole Panelist
Dated: October 21, 2011
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