screen-shot-2013-05-21-at-12.04.09-pm-150x122The well-known toy company LEGO Juris A/S filed a UDRP complaint on March 7, 2013 with the World Intellectual Property Organization (“WIPO”) against the holders of the domain name <legostarwars21.com>. The domain was registered to Respondent Mr. Miguel Angel Villen. The arbitration panelist ruled in favor of LEGO and, most importantly, explained in detail that taking another company’s brand or mark and adding third party marks will not reduce or eliminate confusion. It is also timely because it addresses questions that we raised in this blog almost a year ago when we reported on an NAF UDRP decision involving the LEGO and STAR WARS marks and the domain <legostarwars3theclonewars.com>.

Background:

The Denmark-based LEGO has maintained its trademark since 1953 and is registered in numerous countries. LEGO also has a license agreement with Lucasfilm Ltd., enabling it to sell LEGO-Star Wars products. According to Complainant, it owns about 2,400 domain names with its trademark including the following: <lego-star-wars-battle-endor.info>, <lego-star-wars-games.com>, and <lego-star-wars-store.com>, and many more.

Respondent registered the domain name <legostarwars21.com>. It was not affiliated with or authorized by Complainant, but it used the site to display LEGO Star Wars ships, figures, accessories and games, along with the LEGO and STAR WARS marks emblazoned on the site masthead. Links on the site directed customers to Amazon.com to purchase these items – which appear to be genuine LEGO products.

Respondent did not file a response to the UDRP complaint and as such the Panel used the following procedural protocol: the Panel shall decide this administrative action based on the Complainant’s undisputed representations, and may accept all reasonable and supported allegations and inferences made in the Complaint as true.

Analysis:

The Panel considered the three elements a complainant must prove in order to have a disputed domain name transferred to its authority: (1) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and (3) The disputed domain name has been registered and is being used in bad faith.

On the first element, the Panel easily found the domain names to be confusingly similar. The decision stated:

If a domain name incorporates a distinctive mark, such as the Complainant’s, in its entirety, UDRP panels have previously found “it is confusingly similar to that mark despite the addition of other words” or, in this case, of other distinctive trademarks, owned by third parties.

In this case, the Panel acknowledged that Lucasfilm Ltd. owned the third party rights to the “addition of other words” (starwars) that Respondent used after “LEGO.”  The takeaway is that if an entire trademark is used in a domain name, even if the disputed domain name contains additional words, the Panel will find it confusingly similar.  In this case, Respondent’s usage of “starwars” is even more egregious because the additional words were clearly trademarked and used by LEGO to sell its products via a license agreement.

UDRP panels put the burden of proof on the Complainant to prove the second element: that Respondent had no rights or legitimate interests in the domain name.  Once met, the burden then shifts to Respondent.  In this case, there was only Complainant’s allegations to analyze since Respondent failed to answer.  In plain English, the test the Panel used for this element was did the respondent use the domain name for a bona fide offering? Was his business known in any way by the trademark used? And finally, is he using the mark for a ‘fair use’ purpose – or is he diverting customers and damaging the trademark.

The Panel relied on prior UDRP decisions to establish that domains which simply “re-route” users from a trademark holders website was not a bona fide offering of goods or services. Thus, because Respondent was clearly trying to steer people away from Complainant’s site with by using its mark in combination with teh STAR WARS mark, it found there was no “bona fide” offering or legitimate non-commercial use by the Respondent.

Lastly, in regards to the third element that must be satisfied in a UDRP case for Complainant to prevail, the Panel found that Respondent registered and used the disputed domain name in bad faith because it was aware of the LEGO trademark and yet registered its domain name and utilized that trademark to sell products on its site.  The Panel relied upon on the 2001 WIPO decision in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, as supporting authority. That decision stated, “when a domain name is obviously connected with a Complainant and its products, its very use by a Registrant with no connection to the Complainant suggests ‘opportunistic bad faith.’”

Thus, because Respondent was intentionally attempting to use Complainant’s well-known trademark (as well as LucasFilm Ltd.’s trademark) to attract users to its website for financial gain and furthermore did not respond to Complainant’s cease and desist letter, the Panel found the Respondent to have registered and used the disputed domain name in bad faith.

Takeaway:

Including multiple trademark names in a domain name will not work to prevent a mark owner from winning a UDRP, particularly where the marks are regularly used together, or associated with each other via joint product or service development. Although the panel could have done some more to discuss this point and note that the decisions it cited did not specifically deal with this issue, the conclusion itself by the arbitration panelist seems clear on this issue.

Further, as a matter of course, large and small business owners that hold registered trademarks should regularly do searches on variations of their names and trademarks to ensure that these illegitimate sites are brought down, and do not damage their sales or pollute their good names with unlicensed usage of their trademarks. The UDRP process is very straightforward, especially in those cases where the Respondent does not reply to the complaint.  Protection against these bad faith users can be simple and effective so business owners must remain vigilant and ready to file complaints for any illegitimate domain names.

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