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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Chris Jones

Case No. D2009-1326

1. The Parties

The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.

The Respondent is Chris Jones of Arizona, United States of America.

2. The Domain Names and Registrar

The disputed domain names <leg-go.com> and <legostarwarsdiscount.com> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2009. On October 8, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On October 13, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. 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 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on November 5, 2009.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on November 13, 2009. 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 a Danish company that makes and sells the famous Lego brand of construction toys and other Lego branded products.

The Complainant and its associated companies are the owners of many international trademarks for LEGO. In particular, the Complainant is the registered owner of trademark No.1018875 registered with the United States Patent and Trademark Office on August 26, 1975, which together with the Complainant`s many other international trademarks for LEGO are referred to hereafter as "the LEGO mark".

The Complainant and its licensees and predecessors commenced use of the LEGO mark in the United States of America ("the United States") during 1953 and the use of the mark has been extensive, exclusive and continuous since then. Over the years, the Complainant`s business of making and selling LEGO branded toys has grown considerably and it is now the most prominent manufacturer of toys and one of the most prominent brands in the world. In 1980 its revenue was more than US $$1.8 billion. The Complainant`s LEGO products are now sold in more than 130 countries, including in the United States where the Respondent is domiciled.

The Complainant and its associated companies have expanded their use of the LEGO mark to include computer hardware and software, books, videos and computer controlled robotic construction sets.

The Complainant is also the owner of more than 1000 domain names containing the

term LEGO and operates its own website.

Since 1999, the Complainant has had a licence agreement with Lucasfilms Ltd. for the use by the Complainant of the STAR WARS trademark when incorporated into the Lego product line. As a consequence the Complainant has added to its product range a large array of Star Wars characters and objects for which it has achieved renown.

The domain name <leg-go.com> was registered on November 14, 2008 and the domain name <legostarwarsdiscount.com> was registered on February 25, 2009.

5. Parties` Contentions

A. Complainant

The Complainant alleges that the domain names <leg-go.com> and <legostarwarsdiscount.com> should no longer be registered with the Respondent, but that they should be transferred to the Complainant. It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain names are confusingly similar to the Complainant`s registered LEGO mark, that the Respondent has no rights or legitimate interests in the domain names and that the domain names have been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain names to the Complainant.

In support of its case on the first of these three elements, the Complainant relies on the registered LEGO mark to which reference has already been made. It then says that the domain name <leg-go.com> is confusingly similar to the LEGO mark as the domain name incorporates but misspells the LEGO mark and adds a hyphen, neither of which feature detracts from or diminishes the confusing similarity arising from the substance of the LEGO mark being used in the domain name.

The Complainant also contends that the domain name <legostarwarsdiscount.com> is confusingly similar to the LEGO mark as the domain name incorporates the whole of the LEGO mark in the domain name and adds the expression "star wars" and the word "discount", neither of which detracts from or diminishes the confusing similarity arising from the use of the LEGO mark in the domain name, but leaves the overall impression of the domain name as one that in substance refers to the LEGO mark. Moreover, the Complainant contends that the fact that it has a licence agreement with Lucasfilms Ltd. to use the Star Wars mark in connection with its Star Wars products adds to the confusing similarity, for the domain name implies that it will lead to a website endorsed by both the Complainant and Lucasfilms Ltd.

The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in either domain name because he has used the substance of the famous LEGO mark in his domain names, the facts show an obvious intention by the Respondent to benefit from the reputation of the mark in an illegitimate manner and the Respondent has not been authorized to use the mark in a domain name or anywhere else.

The Complainant then contends, to establish the third element, that the domain names have been registered and used in bad faith. In the case of the domain name

<leg-go.com> the Complainant contends that the fact that the Respondent has registered a domain name incorporating the substance of one of the world`s most famous trademarks shows that he registered the domain name in bad faith and, by relying on the principle in Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003 that it also shows the Respondent has used the domain name in bad faith by way of passive holding.

In the case of the domain name <legostarwarsdiscount.com>, it is contended that the facts show that the Respondent registered the domain name primarily to trade off the Complainant`s famous LEGO mark and that the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line 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 the site or location. That is so because, in the case of that domain name the Respondent has linked it to a website that actively promotes the sale of products purporting to be the Complainant`s products inspired by the Star Wars concept. Accordingly, it is submitted that the conduct of the Respondent constitutes bad faith both with respect to the registration and the use of the domain names.

B. Respondent

The Respondent did not reply to the Complainant`s contentions.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is 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 it deems applicable.

In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) The domain names are 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 domain names; and

(iii) The domain names have been registered and are being used in bad faith.

It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Panel accepts the evidence submitted by the Complainant that together with its associated companies it owns the registered LEGO trademarks to which reference has been made and therefore has rights in those marks.

The Panel finds that the domain name <leg-go.com> is confusingly similar to the LEGO mark as the domain name merely misspells the LEGO mark and adds a hyphen, but nevertheless incorporates the substance of the mark in the domain name and then the gTLD suffix ".com". It has been held many times by past UDRP panels that such minor spelling variations from a trademark and the addition of punctuation such as a hyphen do not detract from or diminish confusing similarity which is otherwise present, as it is in the present case, arising from the use of the substance of the LEGO mark in the domain name.

The Panel finds that the domain name <legostarwarsdiscount.com> is confusingly similar to the LEGO mark as the domain name incorporates the whole of the LEGO mark and adds to it the expression "star wars" and the word "discount", which do not diminish the confusing similarity that is present. With respect to the expression "star wars", it is well known that Lego toys have included for some time toys inspired and based on characters and events in the famous Star Wars films. In fact, the evidence is that since 1999, it has had a licence agreement with Lucasfilms Ltd. to use the STAR WARS trademark when incorporated into the Lego product line. The impression is therefore given by the domain name that it relates to Lego toys of the Star Wars genre and also that it relates to a joint undertaking by the Complainant and Lucasfilms Ltd. Accordingly, the domain name indicates that the Star Wars Lego products may be bought via the domain name and that the domain name will lead to an official website approved by the Complainant and Lucasfilms Ltd.

With respect to the addition of the word "discount", that is an ordinary word in common usage and it has long been held that the addition of such a word does not diminish the confusing similarity that is present. In this case it merely indicates that goods made under the trademark may be bought at a discount via the domain name.

Taken as a whole, the meaning of the domain name is that it will lead to information on Lego toys of the Star Wars genre that may be bought at a discount.

It has also long been held that suffixes such as the gTLD suffix ".com" cannot negate confusing similarity where it otherwise exists, as it does in the present case.

The Panel finds that the Complainant has therefore made out the first of the three elements that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain names. But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 trademark or service mark at issue.

Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in either of the domain names, the Complainant will have failed to discharge its onus and the Complaint will fail with respect to that domain name.

The Panel`s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that he had until November 11, 2009 to send in his Response, that he would be in default if he did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.

It is also well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:

"…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP".

The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in either of the domain names.

The prima facie case is based on the facts that:

(i) the LEGO mark is one of the most well-known in the world;

(ii) it indicates one of the most famous manufacturers of construction toys, computer hardware and software, books, videos and computer controlled robotic construction sets in the world including in the United States where the Respondent is domiciled;

(iii) the Respondent chose the substance of this prominent trademark as part of the domain name <leg-go.com> and made only minor alterations to it by changing its spelling slightly and adding a hyphen and in the case of the domain name <legostarwarsdiscount.com> chose the whole of the well-known trademark as the principle feature of the domain name and added only the expression "star wars" and "discount" , several words that emphasised the confusing similarity that automatically arose from using the LEGO mark in the domain name;

(iv) the Respondent then linked the domain name <leg-go.com> to a website that carries a link reading "Buy Star Wars Legos For Sale" and other links referring to specific products purporting to be the Complainant`s Star Wars products and in the case of the domain name <legostarwarsdiscount.com> linked it to a website where products purporting to be many of the Complainant`s Star Wars products are also advertised for sale;

(v) the Respondent has not been authorized by the Complainant to use the LEGO mark or name in a domain name or anywhere else or to sell its products or products purporting to be the Complainant`s products on the internet or in any other way.

The Complainant has thus made out a prima facie case and the burden therefore shifts to the Respondent to rebut it.

As the Respondent has not replied to the Complainant`s submission, he has not attempted to rebut the prima facie case and the Complainant has thus made out the second of the third elements that it must establish.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the domain names were registered in bad faith and that they are being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.D2000-0003.

Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.

The four specified circumstances are:

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

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

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

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent`s website or other on-line 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 the site or location.

In the case of the domain name <leg-go.com> the Complainant contends that the fact that the Respondent has registered a domain name incorporating the substance of one of the world`s most well-known trademarks shows that he registered the domain name in bad faith and, by relying on the principle in Telstra Corporation Limited v. Nuclear Marshmallows (supra) that it also shows the Respondent has used the domain name in bad faith by way of passive holding of the domain name.

In the case of the domain name <legostarwarsdiscount.com> the Complainant relies of paragraphs 4(b) (iv) of the Policy and also on the general notion of bad faith, which it is clearly entitled to do, for there have been many UDRP decisions that have held that bad faith is not limited to the factors set out in paragraph 4(b) of the Policy.

The Panel finds that in the case of the domain name <leg-go.com> the Respondent has registered a domain name incorporating the substance of one of the world`s most famous trademarks without any authority or permission to do so. These facts show that he registered the domain name in bad faith. The Panel also finds that on the facts and by applying the principle in Telstra Corporation Limited v. Nuclear Marshmallows (supra), the Respondent has used the domain name in bad faith by way of passive holding of the domain name.

In addition, however, the Panel has verified by its own observations that this domain name now resolves to a website which, although it is a blank page, carries links to "Buy Star Wars Legos For Sale" which in turn leads to a gallery of other products claimed to be Lego Star Wars products which may be ordered and paid for electronically. That being so, it is apparent that the Respondent has been misleading potential customers and others as to whether those products are genuine Lego products being sold with the knowledge and approval of the Complainant. These facts bring the situation with respect to the domain name <leg-go.com> within the provisions of paragraph 4(b)(iv) of the Policy.

In the case of the domain name <legostarwarsdiscount.com>, the Panel finds on the evidence and submissions that the Complainant has made out a strong case that the domain name was registered and is being used in bad faith. In particular, the facts bring the case squarely within the provisions of paragraph 4(b)(iv) of the Policy. That is so for the following reasons.

The evidence shows that there was incorporated in the domain name <legostarwarsdiscount.com> when it was registered, the Complainant`s famous LEGO trademark with additions suggesting that the domain name relates to the Complainant`s famous toy kits and related products in the Star Wars genre which may be bought at a discount. This raises the preliminary assumption that the domain name was registered and has since been used by the Respondent and used for an illegitimate purpose, for the Respondent had no permission or authority to use the trademark in this or any other manner or to mislead consumers which the terms of the domain name plainly do. It was open to the Respondent to give some explanation for this conduct, but he has not done so. The Panel therefore concludes that the Respondent has acted in bad faith in both registering and using the domain name.

Secondly, the Respondent has used and is currently using the domain name <legostarwarsdiscount.com> to provide links to a website. The website to which the domain name resolves contains unauthorised editorial material on the Complainant`s products and unauthorised advertisements for the sale of many of the Complainant`s toys and related products of the Star Wars genre. The Panel has verified this for itself and noticed that by clicking on particular toys, the user is taken to another site where the toys may be bought and paid for electronically. This enhances the notion that the Respondent is improperly using the well-known LEGO trademark to mislead consumers who might be looking for the Complainant`s official website to obtain information about and to buy the Complainant`s products so that they will believe that they have found an official Lego site and that the products on sale there are genuine Lego products. In effect, the Respondent is acting in bad faith to generate internet traffic created by the confusion with the LEGO mark that he has generated and to make money by that process.

That conclusion makes it clear that the facts of the present case bring it squarely within the provisions of paragraph 4(b)(iv) of the Policy.

Moreover the whole modus operandi of the Respondent in using such a famous trademark without any authority or legitimate purpose in these particular circumstances brings the registration and subsequently the use of both of the domain names within the general notion of bad faith on which the Complainant also relies.

The Panel therefore finds that the Respondent has registered and used the domain names in bad faith.

The Panel finds that the Complainant has thus made out the third of the three elements that it must establish under 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 domain names <leg-go.com> and <legostarwarsdiscount.com> be transferred to the Complainant.

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The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: November 15, 2009