The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Naohiro Tabata of Sendai-shi, Miyagi, Japan. 2. The Domain Name and Registrar
The disputed domain name (the “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 September 15, 2011. On September 15, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 16, 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 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2011.
The Center appointed Douglas Clark as the sole panelist in this matter on October 21, 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.
Language of the Proceedings
The Registration Agreement of the Domain Name being in Japanese, pursuant to Rules, paragraph 11, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement, i.e. the default language of the proceedings shall be Japanese. However, the Complainant submitted a request for English to be the language of the proceedings in the following grounds:
“The Complainant has sent the cease and desist letter in English, and the Respondent replied in English, demonstrating not only that he understood the content of the letter, but also that he is able to communicate in English. It would be cumbersome and to the Complainant’s disadvantage to be forced to translate the entire Complaint into Japanese.”
Pursuant to paragraph 11 of the Rules, the Panel is granted the power to determine the language of proceedings, having regard to the circumstances of the case. This Panel stated in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191 that
“[o]ne important consideration of this issue is the fairness to both parties in their abilities to prepare the necessary documents and protect their own interests”.
The reasons given by the Complainant requesting the language of proceedings are not in themselves satisfactory to deprive the Respondent of the right to have the proceedings conducted in the language of the Registration Agreement. The reply of the Respondent in English was very short and written in ungrammatical English. It did, however, show that the Respondent understood the content of the communication from the Complainant and more importantly, did state “I ‘domain name LEGO-’ discard immediately. This will be my answer.”
Further, the Center has provided both parties with an opportunity to comment on the language of the proceedings by sending both parties a consolidated Language of Proceeding notification. The Complainant has provided submissions in its Complaint regarding the proper language of proceedings, while the Respondent did not raise any objection or reply thereto. This Panel concluded in Z, Inc. v. Zufu aka Huahaotrad cited above:
“A Respondent’s failure to respond to these notices should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint [. . .] a clear default by a Respondent who has been informed in their own language of the proceedings, and of the preliminary acceptance of the Complaint in a particular language, would certainly be a strong factor in support of a Panel subsequently determining that there should be consistency between the language of the Complaint as originally accepted and the language of proceedings as ultimately determined by the Panel [. . .] a default by the Respondent after having been notified of the proceedings and being requested to comment or object to the language request should be a strong factor for the Panel to proceed in line with the Center’s decision on language.”
Considering that both parties have been given fair opportunities to present their cases and the Respondent has been given an opportunity to object to the proceedings being conducted in English but has not responded, the Panel finds that in the circumstances of this case, and in particular because the Respondent in the communication it did send to the Complainant categorically stated that he would “discard” the domain, it would be unfair on the Complainant to translate the Complaint into Japanese that the language or proceedings will be English. As the only pleading before the Panel is in English, the Panel will issue its decision in English. 4. Factual Background
The Complainant, based in Denmark is the owner of LEGO, and other trademarks used in connection with the famous LEGO brands of construction toys 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. Over the years, the business of making and selling LEGO branded toys has grown remarkably. By way of example, 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 Complainant is also the owner of more than 1,000 domain names containing the term LEGO.
The Respondent registered the Domain Name in June 2011. The Domain Name resolves to a parking page, which provides links to various products, including sponsored links. 5. Parties’ Contentions A. Complainant
Identical or confusingly similar
The dominant part of the Domain Name comprises the word “lego”, which is identical to the registered trademark LEGO, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world, including in Japan.
The Complainant is the owner of the trademark LEGO. The Domain Name in question is clearly confusingly similar to the Complainant’s registered trademark LEGO. The suffix “rag” does not detract from the overall impression and the Domain Name must therefore be considered to be confusingly similar with the Complainant’s trademark.
No rights or legitimate interests
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Complainant has also not found anything that would suggest that the Respondent has been using “lego” 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.
No license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, the panel stated that, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. This was stated by the panel as a factor in the finding of non-legitimate interests with the Respondent in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312.
Registered and used in bad faith
The trademark LEGO in respect of toys belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world.
There are sponsored links displayed on the website connected to the Domain Name from which the Respondent most likely derives income once a visitor click on the links and is redirected to different online shops. Consequently, the Respondent is using the 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 its website.
The Complainant cited the following cases to support this contention: The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057 where the Panel stated “The record further reflects the Respondent’s use of the disputed Domain Names to attract Internet users to the Respondent’s website in order to generate pay-per-click advertising revenues. The Panel concludes for the foregoing reasons that the Respondent registered and is using the disputed Domain Names in bad faith.”; and Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946 where the Panel stated “It follows from what has been said about legitimacy that the Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internauts to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint.
Under paragraph 4(a) of the Policy, the Complainant must prove the following three elements in order to make out a successful case:
(i) The Domain Name is 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 Name; and
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has registered trademark rights in the trademark LEGO.
The Respondent has registered the Domain Name , which merely adds the word “rag” to the trademark LEGO. The addition of the words “rag”, which does not appear to have any particularly meaning and as such does not detract from the similarity of the Domain Name to the Complainant’s registered trademark.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s registered mark LEGO.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Respondent registered the Domain Name in 2011, after the Complainant registered its trademarks. The Respondent is not known by the Domain Name and has never been authorized by the Complainant to use the registered marks.
The Respondent has not provided evidence of the type specified in paragraph 4(c) of the Policy giving rise to rights or legitimate interests in the Domain Name. Indeed in response to a cease and desist letter from the Complainant the Respondent said that it would give up the Domain Name.
The Panel is satisfied from the evidence filed that the use made by the Respondent of the Domain Name is not bona fide, and cannot give rise to rights or legitimate interests on the part of the Respondents under paragraph 4(a) of the Policy.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Domain Name was registered long after the Complainant registered its trademarks and commenced use of the trademark LEGO worldwide, including Japan. The use made by the Respondent of the Domain Name so that it resolves to a parking page is as set out in the decisions cited by the Complainant bad faith use.
The Panel accordingly finds that the Domain Name was registered in and is being used in bad faith.
Accordingly, the Complainant has satisfied the third element under paragraph 4(a) of the Policy. 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 Domain Name, be transferred to the Complainant.
Douglas Clark
Sole Panelist
Dated: 28 October 2011
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