The Complainant is Lego Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Thomas Dickinson of Alice Springs, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2011. On October 7, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On October 7, 2011, Moniker Online Services, 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 October 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2011.
The Center appointed William R. Towns as the sole panelist in this matter on November 17, 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 trademark LEGO used in relation to a popular line of construction toys and other LEGO branded products, including video and computer games. The Complainant holds trademark registration for LEGO in numerous jurisdictions around the world, including the United States of America, the European Union, and Australia. The Complainant’s LEGO products are sold in more than 130 countries around the world, including Australia. The Complainant first used the LEGO mark in the United States in 1953, and established a presence in Australia as early as 1962. The Complainant also owns more than 1,000 domain names incorporating the term “lego”.
The Complainant’s mark LEGO has become well known, and a number of UDRP panels have concluded that LEGO is a famous mark. The Complainant’s LEGO branded construction toy products have achieved worldwide popularity, and LEGO was recognized as the eighth most powerful brand in the Superbrands Top 500 annual survey of brands in 2009.
The Complainant entered into a license agreement with Lucasfilm Ltd. in 1999 regarding the use of “Star Wars” by the Complainant in the development, manufacturing and sale of products. The Complainant’s website reflects the incorporation of the STAR WARS mark into the Complainant’s product lines consistent with this license agreement. The Complainant’s LEGO STAR WARS products include not only construction toys but computer and video games.
The disputed domain name was registered by the Respondent on November 29, 2010. The disputed domain name currently resolves to a landing page containing search links including “Star Wars Lego”, “Star Wars Toys”, “Star Wars Games”, “Video Game”, and “Computer Game”. Internet visitors clicking on these links are taken to secondary web pages with advertising links to third-party websites, including the Complainant’s website and other websites offering LEGO STAR WARS products, as well as other makers’ toys computer games’ video games, and various consumer products or services. Prior to the commencement of these proceedings, the Respondent’s website, in addition to containing advertising links, also prominently displayed the following legend on its home page: “Lego Star Wars Headquarters for Lego Star Wars”.
On January 23, 2011 the Complainant sent by email a notice letter to the Respondent, seeking the transfer of the disputed domain name. After receiving no reply, the Complainant again attempted to contact the Respondent on two further occasions without success. Thereafter, the Complainant commenced this administrative proceeding under the Policy. 5. Parties’ Contentions A. Complainant
The Complainant maintains that the disputed domain name is confusingly similar to the Complainant’s mark. According to the Complainant, the LEGO mark is incorporated in its entirety and is the dominant element of the disputed domain name. The Complainant asserts that the LEGO mark is a famous mark, and submits that prior UDRP panel decisions have confirmed the fame of the LEGO mark. The Complainant submits that sales of LEGO products in 2009 alone generated USD 2.8 million in revenues.
The Complainant argues that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant submits that the Respondent has not been authorized to use the Complainant’s mark, that the Respondent is not a reseller of the Complainant’s products, and that the Respondent’s use of the disputed domain name with a pay-per-click advertising website does not constitute a bona fide offering of goods or services. To the contrary, the Complainant contends that the Respondent was clearly aware of the Complainant’s famous LEGO mark, and that the Respondent registered the disputed domain name in order to exploit and profit from the Complainant’s mark, generating pay-per-click revenue creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
In view of the foregoing, the Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant also asserts that the Respondent’s bad faith is demonstrated by the Respondent’s failure to replay to the Complainant’s notice letter. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the disputed domain name: and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) that the disputed domain name is confusingly similar to the Complainant’s LEGO mark, in which the Complainant clearly has established rights. In considering the question of identity or confusing similarity, the first element of the Policy stands essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the mark and the disputed domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011.
In this instance, the disputed domain name incorporates the Complainant’s LEGO mark in its entirety. The inclusion of “star wars” does not serve to dispel such confusing similarity, given the Complainant’s use of STAR WARS in combination with the LEGO mark. Nor does the addition of “hq”, by all appearances an abbreviation for “headquarters”, in any manner serve to lessen the confusing similarity of the disputed domain name to the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain name is confusingly similar to the Complainant’s mark. The Respondent is using the disputed domain name in connection with an apparent pay-per-click parking site featuring advertising links to third-party websites offering. There is no indication that the Respondent has been commonly known by the disputed domain name, and it is undisputed that the Respondent has not been authorized by the Complainant to use the Complainant’s mark.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the undisputed circumstances and facts in the record, the Panel concludes that the Respondent acquired the disputed domain name in order to exploit the reputation and fame of the Complainant’s LEGO mark and attract Internet users to the Respondent’s pay-per-click website through the creation of Internet user confusion. See Aubert International SAS and Aubert France SA v. T Co.,WIPO Case No. D2008-1986 (and decisions cited at paragraph 6.18 therein). Under such circumstances, the Respondent’s use of the disputed domain name to generate pay-per-click advertising revenues does not qualify as a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380; First American Funds, Inc. v. Ult.Search, Inc,WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph 4(a)(iii)). See also Trade Me Limited v. Vertical Axis Inc,WIPO Case No. D2009-0093.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name: or
(ii) circumstances indicating that the Respondent registered the disputed 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 Respondent has engaged in a pattern of such conduct: or
(iii) circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor: or
(iv) circumstances indicating that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 Respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. Based on the undisputed circumstances and facts reflected in the record, it is clear, in this Panel’s view, that the Respondent had the Complainant’s mark in mind when registering the disputed domain name. The Respondent registered the disputed domain name in order to exploit and profit from the Complainant’s mark, by attracting Internet users to the Respondent’s website to generate pay-per-click advertising revenues. See Aubert International SAS and Aubert France SA v. T Co., supra. The Panel further finds that the Respondent is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: November 29, 2011
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.
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