The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Matthe Haycraft of Seattle, Washington, United States of America (“United States” or “US”). 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2017. On December 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2017, the Registrar 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 the Complainant on December 6, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 11, 2017.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2018.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on January 10, 2018. 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 in this proceeding, LEGO Juris A/S of Billund, Denmark, is the owner of the world-renowned LEGO trademark used in connection with the famous LEGO construction toys and other LEGO-branded products.
The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the US.
The Complainant owns the LEGO mark, which enjoys thorough protection through many registrations thereof worldwide, US included.
The LEGO trademark is among the best-known trademarks in the world.
The Complainant is, inter alia, the owner of US trademark registration number 1018875 for the LEGO mark, granted in August 26, 1975.
Moreover, the Complainant is also the owner of thousands of domain name registrations corresponding to and/or containing the LEGO mark.
The Complainant is also the owner of US trademark registration number 4719400 for the NINJAGO mark, granted on April 14, 2015.
Based on the LEGO NINJAGO toy line, the LEGO NINJAGO movie is a 3D computer-animated action comedy martial arts film produced by Warner Animation Group. It is the third installment of the LEGO movie franchise, and since its release in the United States on September 22, 2017 it has grossed over USD 121 million worldwide.
The disputed domain name currently resolves to an unauthorized website offering a pirated version of the Complainant’s LEGO Ninjago movie.
The Complainant’s trademark registrations predate the registration of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant claims that the dominant part of disputed domain name comprises the terms “lego” and “ninjago”, which are identical to the registered trademarks LEGO and NINJAGO, and that the addition of the generic term “full” can be interpreted to mean the full version of the LEGO NINJAGO movie. The Complainant thus concludes that the disputed domain name is confusingly similar to the LEGO and NINJAGO trademarks. To this end, the Complainant quotes several UDRP decisions in which it is established that confusing similarity is generally recognized when well-known trademarks are paired with different kinds of generic prefixes and suffixes.
The Complainant further states that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name. In fact, the Complainant claims that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, and that it has not found anything else that would suggest that the Respondent has been using the terms “lego” and/or “ninjago” in any other way that would give it any legitimate rights in the name. No license, or authorization of any other kind, has been given by the Complainant to the Respondent to use the LEGO trademark.
Moreover, the Complainant asserts that LEGO is a world-famous trademark (including in the US where the Respondent resides). It is clear that the Respondent was aware of the rights the Complainant has in the trademarks LEGO and NINJAGO, and of the value of said trademarks, at the time of the registration.
The Complainant then claims that, due to the fame of the Complainant’s trademarks and the success of the LEGO movie franchises, as well as the widespread publicity for the LEGO Ninjago movie, the Respondent should be considered to have known of the existence of the Complainant’s trademarks and the LEGO Ninjago movie when registering the disputed domain name. In fact, there is no question that the Respondent has and had such knowledge given that information about the LEGO Ninjago movie is displayed on the disputed websites, including citing the movie release date as September 22, 2017.
There is no connection between the Respondent and the Complainant.
The Respondent’s registration of the disputed domain name in September 2017, shortly before the LEGO Ninjago movie official release in the United States on September 22, 2017, strongly suggests that the Respondent opportunistically registered the disputed domain name in bad faith to improperly capitalize on the publicity generated by the upcoming movie, to lure Internet users to watch a full pirated version of the movie free online, ahead of its official release in theatres.
Finally, the Respondent holds registrations for several other domain names that similarly include recent movie titles which misappropriate the trademarks of well-known brands and businesses, particularly in the movie entertainment industry. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(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 in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established rights in the LEGO and NINJAGO trademarks.
The disputed domain name contains the Complainant’s LEGO and NINJAGO marks, with the addition of the term “full” and the generic Top-Level Domain “.org”.
The addition in the disputed domain name of the term “full” is obviously not enough to avoid confusing similarity with the renowned LEGO and NINJAGO trademarks.
This Panel agrees with the previous UDRP decisions, namely that confusing similarity is generally established when the domain name incorporates the complainant’s trademark in its entirety, and the addition of generic prefixes and suffixes does not avoid confusing similarity. This is even more true where, as in the present case, the disputed domain name incorporates not one but two of the complainant’s trademarks.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the LEGO and NINJAGO trademarks in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the LEGO and NINJAGO marks when it registered the disputed domain name.
In fact, the Complainant’s LEGO trademark is a fanciful name with no meaning aside from referring to the Complainant’s goods. It has been registered and used for many decades and thus it long predates the disputed domain name’s registration.
The Respondent’s knowledge of the LEGO and NINJAGO marks is particularly obvious, given that information about the LEGO Ninjago movie is displayed on the website at the disputed domain name, including citing the movie release date as September 22, 2017.
The Panel finds that the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under the Policy.
Moreover the Panel notes the following:
Further inference of bad faith registration and use of the disputed domain name is given by the fact that the Respondent has never replied to the Complainant’s cease-and-desist letter. Indeed, owing to the fact that the Respondent has not denied the assertions of bad faith made by the Complainant in the pre-action communications and in this proceeding, it is reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain names he would have responded to them.
Finally, the Complainant has shown that the Respondent is engaged in a pattern of conduct of bad faith registration and use.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied 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.
Fabrizio Bedarida
Sole Panelist
Date: January 14, 2018
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