WIPO Domain Name Decision D2016-1314 for legomarvelsuperheroes.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Robert Stewart, HUSH IP LLC Case No. D2016-1314 1. The Parties

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

The Respondent is Robert Stewart, HUSH IP LLC, with an address in Phoenix, Arizona, United States of America. 2. The Disputed Domain Name and Registrar

The disputed domain name is . It is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”). 3. Procedural History

According to the information and documents provided by the WIPO Arbitration and Mediation Center (the “Center”), the history of this proceeding is as follows:

- The Complaint was filed with the Center on June 28, 2016.

- On June 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 2016, the Registrar transmitted by email to the Center a verification response confirming that the Respondent is listed as the registrant and providing the Registrant’s contact details.

- The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution effective July 31, 2015 (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy effective July 31, 2015 (the “Supplemental Rules”).

- In accordance with Rules paragraphs 2 and 4, on July 12, 2016, the Center formally notified the Respondent of the Complaint, and this proceeding commenced on that date. The Center advised the Respondent that, in accordance with Rules paragraph 5, the due date for a Response to the Complaint was August 1, 2016.

- The Center sent the Notification of the Complaint to the Respondent by email to various email addresses, including the email address specified in the Whois database and on the website to which the disputed domain name resolves, by facsimile transmission to the facsimile number in the Whois database and by courier to the postal address in the Whois database. Some but not all of the emails were rejected as undeliverable. The facsimile transmission was not successful. The couriered package was not delivered because the postal address in the Whois database was incorrect.

- The Respondent did not file a Response by the specified due date or at any time thereafter. The Center sent a Notification of Respondent Default to the Respondent on August 2, 2016.

- The Center appointed Bradley J. Freedman as the sole Panelist in this proceeding on August 10, 2016. The Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rules paragraph 7.

Based on the information and documents provided by the Center, the Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules, and that all technical requirements for this proceeding have been met.

The language of the registration agreement for the disputed domain name is English. Consequently, the language of this proceeding is English. (See Rules paragraph 11(a).) 4. Factual Background

The following information is derived from the Complaint and supporting evidence submitted by the Complainant and the Panel’s review of the website to which the disputed domain name resolves, as described below:

- The Complainant is a Danish limited company with its principal place of business in Billund, Denmark. The Complainant is the owner of the LEGO trademark used in connection with the LEGO brand of construction toys and other LEGO branded products.

- The Complainant is the registered owner of numerous registrations for the LEGO trademark in various countries throughout the world. In particular, the Complainant is the registered owner of the LEGO trademark registered on June 3, 2008, in the United States of America (the jurisdiction in which the Respondent resides), under registration no. 3440699, for use in association with various goods and services, including online retail and other services relating to toys, games, comic books and cartoons.

- The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the United States and elsewhere.

- The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States of America. The LEGO Group has expanded its use of the LEGO trademark to, among other things, computer hardware and software, books, videos and computer controlled robotic construction sets.

- The LEGO Group maintains an extensive website under the domain name . The Complainant is the owner of over 4,000 domain names containing the term “Lego”.

- The LEGO trademark is a well-known trademark with a substantial and widespread reputation throughout the world. LEGO is among the best-known trademarks in the world, due in part to decades of extensive use of the LEGO trademark on all of the Complainant’s products, packaging, displays, advertising and promotional materials. The LEGO trademark and brand have been recognized as being a leading brand by various organizations, including Superbrands UK and the Reputation Institute, and TIME magazine.

- The Complainant is licensed to manufacture, market and sell “LEGO Marvel Super Heroes” products as part of a business partnership with Marvel Characters B.V./Disney Consumer Products, Inc. and under a license granted by Marvel Characters B.V./Disney Consumer Products, Inc.

- The disputed domain name was registered on January 4, 2015.

- The disputed domain name resolves to a website that displays the heading “Buy this domain”, which links to a SEDO website that offers to sell the disputed domain name for approximately USD $1,000. The website also displays “” as a banner at the top of the page, a number of “Sponsored Links” identified by phrases such as “LEGO Marvel Superheroes”, “LEGO Games Online Free to Play” and “LEGO Marvel”, a link identified by the words “Related Links” and a “Search Ads” functionality. The website also currently displays the following disclaimer at the bottom of the site: “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois).”

- The Complainant has not given a license or any other kind of authorization to the Respondent to use the LEGO trademark. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.

- On January 16, 2015, the Complainant sent by email a cease and desist demand letter to the Respondent requesting that the Respondent voluntarily transfer the disputed domain name to the Complainant and offering to compensate the Respondent for registration expenses and transfer fees. The Respondent did not respond to the letter. In January and February 2015, the Complainant sent reminders to the Respondent, but the Respondent did not respond.

The Respondent has not filed a Response to the Complaint or disputed the Complainant’s factual assertions or evidence in any other manner.

On its own initiative, the Panel reviewed the website to which the disputed domain name resolves in order to view the content and functionality of the website (including links on the website). The Panel’s review of the website is consistent with the consensus view that a UDRP panel may undertake limited factual research into matters of public record, including accessing the website linked to a disputed domain name, if the panel considers it necessary to reach the right decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), section 4.5. 5. Parties’ Contentions A. Complainant

The Complainant contends as follows:

- The Complainant is the owner of the famous trademark LEGO registered and used throughout the world, and the disputed domain name is confusingly similar to the LEGO trademark because the disputed domain name combines the LEGO trademark with a reference to products relating to MARVEL brand super heroes that the Complainant is licensed to develop, manufacture and sell.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name, and does not have any right to use the Complainant’s LEGO trademark.

- The Respondent registered and is using the disputed domain name in bad faith because the Respondent is using the disputed domain name to confuse and divert Internet users to the Respondent’s website that displays “Sponsored Listings” about the Complainant’s products. B. Respondent

The Respondent has not filed a Response to the Complaint or answered the Complainant’s contentions in any other manner. 6. Discussion and Findings

The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of domain names – conduct commonly known as “cybersquatting” or “cyberpiracy”. The Policy does not apply to other kinds of disputes between a trademark owner and a domain name registrant.

The application of the Policy is limited to situations in which a complainant asserts and proves the following requirements set out in Policy paragraph 4(a): (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The burden is on a complainant to prove all three required elements in order to be entitled to relief under the Policy.

Rules paragraph 10(b) requires that the Panel ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to give actual notice of the Complaint to the Respondent. Further, the Registrar’s Domain Registration Agreement requires the Respondent to keep the contact information in the WhoIs record for the disputed domain name current and complete. The Respondent cannot hide behind a failure to provide accurate and complete contact information to the Registrar. In the circumstances, the Panel finds that the Respondent has been given notice of this proceeding in accordance with Rules paragraph 2 and has been given a fair opportunity to answer the Complaint and present its case. In accordance with Rules paragraph 14(a), the Panel will proceed to a decision on the Complaint.

The Respondent’s failure to file a Response to the Complaint does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a). Rules paragraph 15(a) requires the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that the Panel deems applicable. In accordance with Rules paragraph 14(b), the Panel may draw inferences as the Panel considers appropriate from the Respondent’s failure to file a Response to the Complaint (see WIPO Overview 2.0, section 4.6). In the circumstances, the Panel’s decision is based on the Complainant’s assertions and evidence, information obtained by the Panel as a result of the Panel’s review of the website to which the disputed domain name resolves, and inferences drawn from the Respondent’s failure to file a Response, all as set out in this decision. A. Identical or Confusingly Similar

The Complainant is the owner of the LEGO trademark. The Complainant asserts that the LEGO trademark is “famous” worldwide. The Complainant’s LEGO trademark was registered in numerous countries throughout the world, including the United States of America (where the Respondent resides) many years before the disputed domain name was registered. The Respondent has not contested the Complainant’s assertions. In the circumstances, the Panel finds that the Complainant has rights in the LEGO trademark.

The Policy requires that the disputed domain name be “identical or confusingly similar” to the Complainant’s trademark. Neither the Policy nor the Rules provide any explicit guidance with respect to the test to be applied regarding the confusing similarity requirement of the Policy. The consensus reflected in previous UDRP decisions is that the appropriate test for confusing similarity is a literal comparison of the domain name in dispute and the complainant’s trademark. See WIPO Overview 2.0, section 1.2. The literal comparison approach is supported by a number of considerations, which have been discussed in various UDRP decisions. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Ms. Patricia Chung,WIPO Case No. D2004-0490; Pancil, LLC v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0492; Highlights for Children, Inc. v. Services LLC,WIPO Case No. D2007-0337; Scania CV AB (Publ) v. ScaniaF,WIPO Case No. D2008-0113. For those reasons, the Panel considers the appropriate test for confusing similarity to be a literal comparison of the disputed domain name and the Complainant’s LEGO trademark.

The disputed domain name is comprised of the Complainant’s LEGO trademark, the term “marvelsuperheroes” and the “.com” suffix.

The addition of the term “marvelsuperheroes”, which is easily read as “MARVEL super heroes” does not avoid a finding of confusing similarity, and may actually enhance the confusing similarity, because: (1) the LEGO trademark is the dominant part of the disputed domain name; and (2) the “marvelsuperheroes” term is descriptive of products that the Complainant is licensed to manufacture, market and sell under an agreement with Marvel Characters B.V./Disney Consumer Products, Inc. For a similar finding regarding the domain name, see LEGO Juris A/S v. Nasirudin, EazyS,WIPO Case No. D2011-0617.

The “.com” suffix is typically irrelevant for the purpose of determining whether a domain name is identical or confusingly similar to a trademark, because the “.com” suffix is merely descriptive of the relevant registry service and does not distinguish the domain name from the relevant trademark. See WIPO Overview 2.0, section 1.2; Accor v. Noldc Inc.,WIPO Case No. D2005-0016; L’Oréal v Tina Smith,WIPO Case No. D2013-0820; Titoni AG v Runxin Wang,WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877.

In light of the Respondent’s use of the disputed domain name for a website that displays “Sponsored Listings” about the Complainant’s products, and in the absence of any explanation or rationale put forward by the Respondent for the registration and use of the disputed domain name, the Panel finds that the disputed domain name was intended by the Respondent to be confusingly similar to the Complainant’s LEGO trademark and was calculated to mislead and deceive Internet users who are searching for an official website for the Complainant’s LEGO Marvel Super Heroes products.

For those reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy. B. Rights and Legitimate Interests

The second element required by Policy paragraph 4(a) – the registrant has no rights or legitimate interests in respect of the domain name – requires a complainant to prove a negative proposition, which can be particularly difficult. The consensus reflected in previous UDRP decisions is that a complainant’s burden of proof regarding this element must be applied in light of the fact that the nature of the registrant’s rights or legitimate interests, if any, in a domain name lies most directly within the registrant’s knowledge. As a practical matter, once a complainant makes a prima facie showing that a registrant does not have rights or legitimate interests in a domain name, the evidentiary burden shifts to the registrant to provide evidence of its rights or legitimate interests in the domain name. See WIPO Overview 2.0, paragraph 2.1.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (1) the Complainant has not found any evidence that the Respondent owns any registered trademark, trade name or company name that corresponds to the disputed domain name; (2) the WhoIs details for the disputed domain name do not suggest that the Respondent has used the LEGO trademark in any way that would give the Respondent any legitimate rights in the disputed domain name; (3) the Complainant has not given any license or authorization of any kind to the Respondent to use the LEGO trademark; (4) the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant; and (5) the Respondent is not using the disputed domain name for a bona fide offering of goods and services, but rather for a website that displays “Sponsored Listings” about the Complainant’s products.

Except for the assertions in the signed and certified Complaint, the Complainant has not provided any evidence of trademark, trade name or company name searches or other investigations to indicate that the Respondent does not have any interest in any mark that includes the term “Lego” and is not commonly known as “Lego”. In some circumstances, the omission of that evidence might be fatal to a complaint under the Policy. Nevertheless, in the circumstances of this case (including the name of the Respondent, the distinctive nature of the Complainant’s LEGO trademark and evidence of the Respondent’s use of the disputed domain name for a website that displays “Sponsored Listings” about the Complainant’s products), the signed and certified Complaint together with an adverse inference from the Respondent’s failure to respond to the Complaint or provide any justification for the registration and use of the disputed domain name are sufficient to satisfy the Complainant’s evidentiary burden.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, the Panel is obligated to consider whether the Respondent’s use of the disputed domain name demonstrates rights or legitimate interests in the disputed domain name. See WIPO Overview 2.0, section 4.6.

According to Policy paragraph 4(c), each of the following circumstances, if proved, demonstrate a registrant’s rights to or legitimate interests in a domain name: (i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; (ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or (iii) the registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s mark.

Policy paragraph 4(c)(i) is not applicable. To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent’s use of the disputed domain name must be in connection with a bona fide offering of goods or services (see WIPO Overview 2.0, paragraph 2.6). In this case, the Respondent’s use of the disputed domain name is not bona fide within the meaning of Policy paragraph 4(c)(i) because:

- the disputed domain name is confusingly similar to the Complainant’s registered LEGO trademark, which is distinctive and specific to the Complainant in connection with toys and other products and has been used for many years;

- there is no apparent connection or relationship between the disputed domain name and the name or business of the Respondent; and

- the Respondent does not use the disputed domain name to advertise or sell the Respondent’s own wares or services, but rather the Respondent uses the disputed domain name for a website that displays “Sponsored Listings” about the Complainant’s products and offers the disputed domain name for sale.

Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend, and there is no evidence, that the Respondent has been commonly known by the disputed domain name or that the disputed domain name is derived from the Respondent’s trademarks or trade names.

Policy paragraph 4(c)(iii) is not applicable. The Respondent does not contend, and there is no evidence, that the Respondent is making a non-commercial or fair use of the disputed domain name. To the contrary, the evidence establishes that the Respondent uses the disputed domain name for a website that displays links to a number of commercial websites that advertise products or services.

For those reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith

Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and is using the disputed domain name in bad faith. The language of Policy paragraph 4(a)(iii) is conjunctive and requires the Complainant to prove both bad faith registration of the disputed domain name and bad faith use of the disputed domain name.

“Bad faith” within the meaning of the Policy is a term of art, and is not intended to apply to distasteful conduct that might constitute bad faith in the ordinary sense of the term. Policy paragraph 4(b) provides that each of the following circumstances are evidence that a registrant has registered and is using a domain name in bad faith:

(i) circumstances indicating that the registrant 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 the complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant 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 registrant has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location.

The Policy expressly states that those circumstances are non-exhaustive. To establish that a registrant registered and is using a domain name in bad faith, a complainant need only establish one of the four non-exhaustive criteria set out in Policy paragraph 4(b).

The Complainant relies on Policy paragraph 4(b)(iv), which applies if the Complainant establishes that the Respondent registered and is using the disputed domain name to confuse and divert Internet users to the Respondent’s website for commercial gain. There is no direct evidence that the Respondent knew of the Complainant or the Complainant’s LEGO trademark, or intended to use the disputed domain name to confuse and divert Internet users. Nevertheless, the Respondent’s knowledge and intention may be determined by common sense inferences from circumstantial evidence.

The Panel finds that the Respondent knew of the Complainant and the Complainant’s LEGO trademark when the Respondent registered the disputed domain name, and the Respondent registered and is using the disputed domain name to confuse and divert Internet users to the Respondent’s website, based on the following circumstances:

- The Complainant’s LEGO trademark is distinctive and specific to the Complainant in connection with toys and other products, and has been used throughout the world for many years.

- The disputed domain name combines the LEGO trademark with a reference to MARVEL brand super heroes, and the Complainant is licensed to develop, manufacture and sell products relating to MARVEL brand super heroes.

- There is no apparent connection or relationship between the disputed domain name and the Respondent or the Respondent’s business, wares or services.

- The Respondent uses the disputed domain name for a website that displays the heading “Buy this domain”, which links to a SEDO website that offers to sell the disputed domain name for approximately USD $1,000, and displays a number of “Sponsored Links” identified by phrases that reference the Complainant and its products.

- There is no apparent legitimate justification for the Respondent’s registration and use of the disputed domain name.

- The Respondent has not denied knowledge of the Complainant or the Complainant’s LEGO trademark.

In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for the registration or use of the disputed domain name.

Policy paragraph 4(b)(iv) requires that the domain name be used “for commercial gain”. It is well known that many websites generate advertising revenue by directing Internet users to other websites. Based on the “Sponsored Links” displayed on the Respondent’s website, and in the absence of any explanation by the Respondent, the Panel finds that the website generates revenue by directing Internet users to other websites. See WIPO Overview 2.0, section 3.8. See also L’Oréal, Laboratoire Garnier & Compagnie v. Australian Internet Investments Pty Ltd.,WIPO Case No. D2008-1640.

The website displays the following disclaimer: “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois).” The Respondent has not provided any evidence to establish that the disclaimer is true.

Further, even if the disclaimer is true and the Respondent does not directly control the “Sponsored Links” or receive any revenue generated by the “Sponsored Links”, that does not prevent a finding that the Respondent registered and is using the disputed domain name in bad faith under Policy paragraph 4(b)(iv). The consensus reflected in previous UDRP decisions is that a domain name registrant will normally be held responsible for the content of a website to which the domain name resolves, even if the registrant does not directly control the content (e.g. automatically generated advertising links), because the registrant usually has a contractual right to control the content displayed on the website. See WIPO Overview 2.0, section 3.8. Further, Policy paragraph 4(b)(iv) does not require that the requisite “commercial gain” generated by a confusingly similar domain name be realized by the domain name registrant. See Villeroy & Bosch AG v. Mario Pingerna,WIPO Case No. D2007-1912.

For those reasons, pursuant to Policy paragraph 4(b)(iv), the Panel finds that the Respondent registered and is using the disputed domain name in bad faith to confuse and divert Internet users to the Respondent’s website for commercial gain.

In the circumstances, the Panel need not consider whether any of Policy paragraphs 4(b)(i), (ii) or (iii) are applicable, or whether there are other grounds for finding that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision

The Complainant has established each of the three requirements set out in Policy paragraph 4(a): (i) the disputed domain name is confusingly similar to the Complainant’s LEGO trademark; (ii) the Respondent does not have any rights to or legitimate interests in the disputed domain name; and; (iii) the Respondent registered and is using the disputed domain name in bad faith.

For those reasons, in accordance with Policy paragraph 4(i) and Rules paragraph 15, the Panel orders that the disputed domain name be transferred to the Complainant.

Bradley J. Freedman
Sole Panelist
Date: August 24, 2016

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