The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Manami Inomata of Yokohama-shi, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2011. On August 26, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2011, the Registrar transmitted by email to the Center its verification response 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 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 September 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2011.
On September 1, 2011, the Center issued a Language of Proceedings notification, inviting comments from the parties and notifying the Respondent of the fact that in case the Center does not hear from the Respondent by September 6, 2011, the Center would proceed on the basis that the Respondent does not object as such to the Complainant’s request that English be the language of proceedings. The Complainant submitted a request that English be the language of the proceedings on September 5, 2011 by referring to the Complainant’s previously submitted request (including arguments and supporting material) in its Complaint. The Respondent did not submit any objection to the Complainant's request that English be the language of proceedings.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on October 5, 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 Complainant is a company based in Denmark conducting manufacture and distribution of construction toys in connection with the LEGO brands and other LEGO-branded products. The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the United States of America (“United States”) during 1953, to identify construction toys made and sold by them. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Japan. The Complainant is the owner of LEGO, and all other trademarks used in connection with the LEGO brands of construction toys around the world. The Complainant’s representative registered trademarks inter alia are as follows: United States
Trademark: LEGO
Class of Goods and Services: 28; toy building blocks and connecting links for the same, sold separately and as kits for construction of toy houses, buildings, etc.
First use: January 1934
First use in commerce: June 4, 1953
Serial Number: 73032295
Filing Date: September 17, 1974
Registration Number: 1018875
Registration Date: August 26, 1975 Japan
Trademark: LEGO
Classes of goods and services: 20, 28
Registration number: 520470
Registration date: May 21, 1958
The Respondent is an individual person in Japan. The disputed domain name was registered on May 7, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends in the Complaint that:
The disputed domain name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights;
The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
The disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings
The Complaint was filed in the English language. It is noted that the language of the registration agreement for the disputed domain name is Japanese. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors. In the present case, the registration agreement for the disputed domain name was made in the Japanese language.
The Complainant has submitted a request that English be the language of proceeding in which it has advanced a number of arguments including that, according to the Complainant, the Respondent has ability understanding the English language from the fact that the Respondent has never taken the trouble to answer, neither to reply to the issues raised in the cease-and-desist letter in English, nor to state that it does not understand the content.
The Respondent did not submit any objection to the Complainant’s request that English be the language of proceeding. On the other hand, it is apparent from the written communications in English exchanged between the Respondent and the Center (copied to the Complainant) that the Respondent has sufficient ability communicating in the English language. It is also noteworthy that the Center in initially deciding to proceed with acceptance of the Complaint in English indicated that it would accept a Response in either English or Japanese and also indicated it would (and has) appointed a Panelist familiar with both English and Japanese.
In any event, the Respondent failed to submit a Response in either language and declined to participate in the proceeding. On the other hand, the Complainant is not able to communicate in Japanese and therefore, if the Complainant were to submit all documents in Japanese, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation.
Therefore, in consideration of all of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of proceeding in this case. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679. B. The Respondent’s default
The Respondent appears to have the ability to communicate in English as discussed above, and the Center gave it the opportunity to file the Response even in Japanese by notifying it of the Center’s preliminary decision to accept a Response in either Japanese or English and appoint a panel familiar with both languages. However, the Respondent did not submit any Response by the due date. C. Requirements under paragraph 4(a) of the Policy
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the disputed domain name registered by the Respondent 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 D. Identical or Confusingly Similar
The suffix in this case, “-creative-block” in the disputed domain name is two words often seen together with the trademark LEGO. The whole LEGO concept is built out of creativity and creative play, and “block” is one of the basic products within the LEGO selection. As such, the suffix “-creative-block” in the disputed domain name is considered as being descriptive in relation to the goods “toy blocks” and thus not regarded as being a prominent part in determining the confusing similarity to the mark. See Louis Vuitton Malletier v. Enrico Villa, WIPO Case No. D2000-0721; National Collegiate Athletic Association and March Madness Athletic Association, LLC v. Cyberoad Corporation, WIPO Case No. D2000-1378; and Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434.
The addition of the top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the Complainant’s trademark and the disputed domain name as well. Therefore, the Panels has found that the disputed domain name is confusingly similar to the Complainant’s trademark “LEGO”. E. Rights or Legitimate Interests
As it is virtually impossible for a complainant to prove the negative fact that a respondent has no rights or legitimate interests in the disputed domain name, it is well accepted that a complainant must only show a prima facie case that there are no rights or legitimate interests on the part of the respondent. The burden of proof production will then shift to the respondent. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Respondent is not affiliated with the Complainant in any way. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO mark in any other way that would give them any legitimate rights in the name. Consequently the Respondent may not claim any rights established by common usage. It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
Under the circumstance that the Respondent did not reply, the Panel finds that the Complainant has proven a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. See De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005; See also Accor v. Eren Atesmen, WIPO Case No. D2009-0701. The Panel concludes that the Respondent does not have rights or legitimate interests in the disputed domain name. F. Registered and Used in Bad Faith
The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown remarkably. The revenue for the LEGO Group in 2009, was more than $2,8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Japan. The Panels has recognized that the Complainant’s trademark LEGO is among the best-known trademarks in the world, due to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. The Panel’s view is also supported by the list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world. As such, it is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. See The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; See also Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.
The disputed domain name was connected to a shopping site where LEGO products are offered. Consequently, the Respondent has been using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website. The Panel’s visit to the website to which the disputed domain name has been resolved has revealed that the website remains inactive. However, such a change does not affect the constitution of a bad faith use.
The Respondent’s selection of a well-known trademark with the knowledge of its fame, coupled with its use of the disputed domain name to resolve to connect to a shopping site where LEGO products are offered leads the Panel to infer that the Respondent registered and used the disputed domain name for the purpose of commercial gain by way of trading off the goodwill of the Complainant’s mark. The Respondent did not use the disputed domain name in connection with a bona fide offering of goods or services but instead to divert Internet users searching for the Complainant and its products to its own website. Internet users searching for information regarding the Complainant or its products may mistakenly believe the disputed domain name to be held by the Complainant, leading to consumer confusion or frustration. See Daniel C. Marino, Jr. v. Video Images Productions, et al.,WIPO Case No. D2000-0598; HBP, Inc. v. Front and Center Tickets, Inc.,WIPO Case No. D2002-0802; and Pfizer Inc v. Van Robichaux,WIPO Case No. D2003-0399. Although the Internet users would at the end realize that the website they visited is not the one of the Complainant, it is likely to cause initial interest of confusion from which the Respondent definitely gets more visitors to its website.
As such, the Panel concludes that the disputed domain name was registered and used in bad faith. 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.
Ho-Hyun Nahm
Sole Panelist
Dated: October 18, 2011
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