In LEGO Juris A/S v. Ma Ying Jo / PrivacyProtect.org the Complainant, Lego Juris A/S (“Lego) brought a UDRP action seeking transfer of the domain legostarwars3theclonewars.com.
The facts were pretty straightforward: Respondent had no rights to any of the marks in the domain, had a parking page up at the site with links related to “lego” and “star wars”, and there were un-rebutted allegations that Respondent was redirecting traffic to other sites and getting click-through fees from that traffic. Here is an image of the website at the domain as of this writing.
The interesting aspect of the decision is the panel’s discussion concerning “similarity” and how to determine this when there are multiple (different) trademarks in a domain name. In this case there were three (3) different marks in the subject domain:”lego”, “star wars”, and “the clone wars” (you could argue that there are only 2 marks if you combine “star wars” and “the clone wars”). So how do you determine similarity – which mark do you apply? Lego argued that the LEGO mark was the dominant mark in the domain, and that it had licensed the STAR WARS mark for a number of years and used it in conjunction with Lego products that had sold over a $1 billion of merchandise since 1999.
The panel agreed and cited to a previous Lego UDRP, stating that “[c]omplainant cites the reasoning of the decision of LEGO Juris A/S v. school, regarding the domain name <legostarwarsets.com>: ‘[t]he disputed domain name consists of the Complainant’s trade mark in its entirety, together with a mark under which an extremely successful product line has been sold for over a decade. Far from resolving any confusion caused by the use of the term ‘lego’, the addition of the term ‘Starwarsets’ actually exacerbates it.”
The decision does not expand on the terms of the license between Lego and Lucasfilm, Ltd., or on how the outcome jibes with UDRP Policy Sec. 4(a)(i) which requires that the “… domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights…” To justify the decision, and provide guidance to future panels who may deal with this issue, the Panel should have explained whether simply having rights in the LEGO mark was sufficient for UDRP purposes, and why it was not necessary for Lucasfilm to be a party to the action even though it is the entity which holds rights in the STAR WARS and THE CLONE WARS marks.
Other cases have discussed these issues in a slightly different context. In Compañía de Radiocomunicaciones Móviles S.A. and BellSouth Corporation v. Argentina Web Design, the Respondent had registered the domain name www.movicombellsouth.com. CRM and BellSouth brought a joint UDRP because CRM owned rights to the MOVICOM mark and BellSouth held rights in the BELLSOUTH mark. The panel noted that even though there was no registered trademark for the combined terms, because: (i) MOVICOM and BELLSOUTH were used in conjunction with one another via a trademark license and co-branding arrangement; and (ii) both owners were party to the UDRP action, there was sufficient basis for finding that the domain name was similar to the parties marks’, individually and as a whole.
Using the BellSouth case as a guide, it seems clear that there must be a basis for finding that the Complainant has rights in every mark which appears in a domain name. Although Lego likely had a sound basis for asserting rights in the Lucasfilm marks due to its long-standing and uber successful relationship with Lucasfilm (and thereby had the right to stand in its shoes), the process followed by the Complainants in the BellSouth case is much safer in terms of ensuring compliance with Sec. 4(a) of the Policy.