The Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT Corporate Brand Services AB, Australia.
The Respondent is Wagner, Adam John, self-represented, of St Leonards, Australia. 2. The Domain Names and Registrar
The disputed domain names , , , , and are registered with NetRegistryPty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2011. On May 26, 2011, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain names. On May 27, 2011 and May 30, 2011, NetRegistryPty Ltd. transmitted by email to the Center its verification responses respectively 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 June 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2011.
On June 2, 2011, the Respondent sent an email communication stating the above-mentioned disputed domain names were set to expire on July 1, 2011 and “feel free to pick them up then”.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on June 24, 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 facts most relevant to the decision in this case are that:
- The Complainant is a well-known manufacturer of construction toys and is the owner of a great many registrations around the world for the trademark LEGO.
- The disputed domain names were registered in June and July of 2009.
- There has been no commercial or other relationship between the parties.
- Pre-Complaint correspondence between the parties failed to resolve the dispute.
- The Complainant petitions the Panel to order transfer of the disputed domain names from the Respondent to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant asserts trademark rights in the word LEGO and states that the disputed domain names are confusingly similar to the trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant alleges that the Respondent registered and used the disputed domain names in bad faith.
In particular, Complainant submits that:
“LEGO is a famous trademark worldwide. There is no doubt that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. The Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleadingly diverting consumers and scamming them for money.” B. Respondent
The Respondent did not reply to the Complainant's contentions. However, as previously stated, it wrote to the Center after notification of the Complaint and before the due date for a Response stating that the disputed domain names were set to expire on July 1, 20111. The Respondent added: “Feel free to pick them up then”, a statement presumably directed towards the Complainant, not the Center. 6. Discussion and Findings
For the sake of completeness, the Panel first makes it clear that the facts do not demonstrate a consent-to-transfer scenario. A Pre-Complaint offer to purchase the disputed domain names from the Respondent for its out-of-pocket expenses in registering the disputed domain names was rejected by the Respondent. There is no express offer to transfer directed to the Complainant itself. There is no warranty that the disputed domain names would not be renewed. Once they fell overdue they might be reregistered by anyone more lively on the occasion than the Complainant. It is clear to the Panel that it is appropriate to apply the Policy in the usual manner.
According to paragraph 4(a) of the auDRP, the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a name, trade mark 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 names; and
(iii) the disputed domain names have been registered or subsequently used in bad faith.
Although the Policy and the UDRP are two distinct policies, the Panel finds it appropriate to rely on precedent concerning the UDRP in deciding this case as both policies share substantial similarities. A. Trademark Rights / Identity or Confusing Similarity
Paragraph 4(a)(i) of the auDRP requires a two-fold enquiry. First, a threshold investigation of whether a complainant has rights in a name or trade mark, followed by an assessment of whether the name or trademark and the domain name are identical or confusingly similar.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is prima facie evidence of trade mark rights for the purposes of the Policy. The Complainant has trade mark rights in LEGO acquired through registration.2 In addition, for the purposes of the Policy, the Panel finds that the Complainant has unregistered rights in the trade mark acquired through use and reputation.3
The remaining question is whether the disputed domain names are confusingly similar to the Complainant’s trade mark. For the purposes of testing confusing similarity, the generic ccTLD “.” can be ignored.4 Five of the disputed domain names then differ from the trade mark simply by the addition of the words “buy” or “shop” and/or other non-distinctive matter such as the definite article “the”, or the country name “Australia”, being the Respondent’s location.
The Complainant asserts that “the dominant part is identical to the registered trademark LEGO, which has been registered by the Complainant as a trademark”. The Panel agrees that the trade mark is the distinctive and “dominant” element of the disputed domain names , , , and . Countless earlier decisions under this Policy have held that the addition of a non-distinctive integer such as “the” or “shop” or “buy” to a trade mark does little, if anything, to avoid confusion.
The Panel finds the disputed domain names , , , and to be confusingly similar to the Complainant’s trade mark.
The outstanding disputed domain name is . As a general observation, the Panel finds the Complaint to be loosely assembled and poorly reasoned. The submissions in relation to are an example, there being no cohesive argument about the identity or confusing similarity of that disputed domain name with the trade mark. The Complainant submits at one point that “the suffixe (sic) ‘starwars’ is not relevant and will not have any impact on the overall impression of the dominant part of the name LEGO”. The Panel has serious reservations about that proposition. Nevertheless, the Complainant explains elsewhere that:
“Since 1999, the LEGO Group has a license agreement with Lucasfilm Ltd concerning the use of the trademark Star Wars incorporated in the LEGO product line. Star Wars was the first licensed property produced by the LEGO Group and the license was originally slated to last from 1999-2007. However, due to its extreme popularity, Lucasfilm Ltd. and the LEGO Group reached an agreement in early 2006 to extend the license to 2011.”
No conclusions are drawn by the Complainant in consequence of that statement and the Panel is left to assume that, in addition to its registered rights in LEGO, the Complainant believes it has enforceable rights in the words Star Wars under this Policy by virtue of the licence agreement with Lucasfilm Ltd.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition5 asks at paragraph 1.8: Can a trademark licensee or a related company to a trademark holder have rights in a trademark for the purpose of filing a UDRP case? In its answer to that question it notes that “in most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable. Although not a requirement, panels have on occasion found it helpful, where a complaint relies on a common source of trademark rights, for all relevant rights holders to be included as co-complainants”.
Annexure 10 to the Complaint is said to support the existence of this license. It is not a copy of the license agreement. Instead, it is a simple letter on the Complainant’s own notepaper signed by a Mette Anderson whose title is given as “Director, General Counsel”. It states that:
“This is to confirm that that the LEGO Group has a license with Lucasfilms Ltd regarding the development, manufacturing and sale of LEGO Star Wars products.”
In other circumstances the Panel would regard this letter as inadequate proof of the claimed arrangements between the commercial parties. The document is not the primary license or a redacted version of its contents. There is no information regarding provisions concerning the enforceability of rights and by whom. The secondary document is not from the licensor, but the licensee. It is unsworn.
Given only that there has been no contest from the Respondent, the Panel is prepared to accept, on the slimmest of margins, that on the balance of probability it is more likely than not that the claimed trade mark license in respect of the STAR WARS trade mark in favour of the Complainant exists, is subsisting and grants some degree of trade mark rights to the Complainant. It then follows that the disputed domain name is legally identical to trade marks in which the Complainant on balance has rights6.
The Panel finds that the Complainant has established the first element of the Policy in respect of all six disputed domain names. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain names. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The WhoIs data does not support any conclusion that the Respondent might be commonly known by the disputed domain names. There is no evidence that the Respondent has trade mark rights in the disputed domain names, registered or not.
The Complainant has stated that the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
The Respondent has not provided any evidence that it used the disputed domain names in connection with a bona fide offering of goods or services prior to notice of the dispute. Counter indications arise from the evidence provided by the Complainant that most of the disputed domain names resolve to websites with sponsored links to sites unconnected with the Complainant’s business in any way.
The Complainant goes on to state that “consequently, the Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites”, quoting the language of paragraph 4(b)(iv) of the Policy prematurely and out of context.
Nevertheless, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. There is no evidence of a bona fide offering of goods or services of any kind and since the Respondent failed to reply to the Complaint in any substantive manner, it also failed to discharge the onus of rebuttal which fell to long standing panel consensus and so the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant has satisfied the second element of the Policy. C. Registered or Subsequently Used in Bad Faith
The Complainant’s “bad faith” arguments are disorganized and difficult to follow. It is far from clear whether the Complainant appreciates that the auDRP differs from the UDRP in that it merely requires proof that the disputed domain names were either registered in bad faith or subsequently used in bad faith. At various points it appears that the Complainant assumes that it must prove both.
However, it would appear that the Complainant also relies upon paragraph 4(b)(iv) of the Policy since it adopts it language in other sections of the Complaint. In this instance the Panel finds that the Respondent’s actions fall squarely under paragraph 4(b)(iv) of the Policy in that the Respondent (either directly or through the action of others for whom it is vicariously responsible) has intentionally used the disputed domain names to attract, for commercial gain, Internet users to a website or online location, by creating the requisite likelihood of confusion with the Complainant’s trade mark.
The Panel finds that the Complainant has satisfied the third and final element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, , , , , and , be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Dated: July 8, 2011
1 The disputed domain name was first registered on June 29, 2009 and so its renewal date would in fact be on the anniversary of that date.
2 Amongst others, the Complainant is the owner of Australian trade mark registration 129258 from September 17, 1956. See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. FA705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. FA174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
3 It is alleged (and not contested) that the trade mark has been used continuously since 1953. Its construction toys bearing the trade mark LEGO are sold in more than 130 countries, including Australia. The Complaint includes evidence demonstrating that the LEGO trade mark is recognized in prominent publications which list the world’s beat known trade marks. The Complaint also references numerous prior UDRP disputes where the renown of the LEGO trade mark has been acknowledged.
4 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. FA153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
5
6 In any event, the disputed domain name is confusingly similar to the Complainant’s well-known LEGO trade mark and the present decision is without prejudice to trade mark rights of a third party, whether the licensor or otherwise, of STAR WARS.
7 See, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828; AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200.
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