The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Satoru Nakamura of Kyoto, 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. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2012. On March 30, 2012, the Center transmitted by email to GMO Internet, Inc. d/b/a Discount-D and O a request for registrar verification in connection with the Domain Name. On April 2, 2012, GMO Internet, Inc. d/b/a Discount-D and O transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 5, 2012, the Center transmitted an email to the parties in both Japanese and English language regarding the Language of Proceedings. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the Proceedings by the specified due date.
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 April 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2012.
The Center appointed Gabriela Paiva Hantke as the sole panelist in this matter on May 8, 2012. 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 LEGO Juris A/S, a company based in Denmark is the owner of the LEGO mark and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products. Among such brands it is included a Japanese trademark registration number 520,470, according to list provided by the Complainant. The Complainant is also the owner of more than 2,400 domain names containing the mark LEGO. The Complainant has a group of licensees authorized to exploit the Complainant’s intellectual property rights, including its trademark rights in Japan and elsewhere. This group does not include the Respondent.
The use of the LEGO mark by the Complainant commenced in the year 1953 to identify construction toys. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Japan. The Complainant established LEGO in Japan in 1992.
The LEGO brand has been recognized as being well-known; for instance, it was included in a 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.
The LEGO group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO group also maintains an extensive website under the domain name .
The Respondent did not provide any answer to the cease and desist letter and the reminders of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant is requesting the Domain Name to be transferred to the Complainant in view of the ownership of the famous and well-known LEGO trademark, registered in multiple countries including Japan. Also the Complainant is basing the Complaint on the extended use of the LEGO trademark in the world, the ownership of around 2,400 domain names with the word “lego” and the net of licensees in the world authorized to exploit their intellectual property and their trademarks which does not include the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceedings
According to Paragraph 11 (a) of the Rules for Uniform Domain Name Dispute Resolution Policy the Panel has the authority to determine a different language other than the one of the registration agreement, having regard to the circumstances of the administrative proceeding. In this particular case, the Respondent, as well as the concerned Registrar, is located in Japan. The Complainant has sent the cease and desist letter in English. The Respondent never replied, neither to reply to the issues raised in the letter, nor to state that he does not understand the content. If it had not understood the content of the cease and desist letter, the Panel assumes the Respondent would have sent a short email stating that it did not understand the content of the letter. Such conduct would likely beexpected of any person that does not understand an email in connection to a domain name he has filed for and is using. In view of the described facts, the Panel accepts the language of the proceeding to been English, following what has been ruled in other UDRP decisions such as Mammut Sports Group AG v. Deminzheng, WIPO Case No. D2011-0475 B. Identical or Confusingly Similar
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 used in domain names in numerous countries all over the world. As previously summarized, LEGO is a mark enjoying high reputation as construction toys popular with children. The fame of the trademark has been confirmed in numerous previous UDRP decisions; LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840; “LEGO is clearly a well-known mark”, considerable risk that the trade public will perceive the Domain Name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s well-known trademark LEGO. The suffix “kaitori”, which means “purchase” in Japanese according to the Complaint, is not relevant because in the view of the Panel, the fame of trademark LEGO, it is instantly recognizable and will be associated with the Complainant. More over the trademark LEGO is in the first part of the Domain Name so the suffix “Kaitori” is less prominent and visible to consumers. C. Rights or Legitimate Interests
The Complainant has asserted that the Respondent does not have any registered trademarks or trade names corresponding to the Domain Name. The Respondent has not provided either any evidence of any type of ownership or right, having the opportunity to do it. Also the Complainant has showed that the Respondent does not own any type of license or authorization to use or exploit the LEGO trademark.
The Complainant has showed ownership of a trademark registration in Japan and also operations in such country in the year 1992, almost 20 years already, which in the Panel’s view makes rather impossible for the Respondent not to know about the well-known trademark LEGO.
In view of the above, the Panel finds the Respondent not to have rights or legitimate interests in the Domain Name. D. Registered and Used in Bad Faith
As explained by the Complainant, the Respondent is today not using the Domain Name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen Domain Name based on a registered trademark in order to generate traffic to a Japanese shopping site where the Complainant’s products are sold. To the Complainant’s understanding from the information given under the “About Us” tab, the company behind the shopping site is named “Web About(株)”. The website displayed a copyright text at the bottom of the website which rather gave the impression that the Respondent would have rights in the trademark and products displayed on the website.
In addition to these facts, the Respondent displayed the well-know logo of the Complainant at the top of the website connected to the Domain Name, and there was also another homemade and thus false logotype incorporating the Complainant’s name and trademark. This use is likely to confuse a visitor into believing that the Domain Name is connected or authorized by the Complainant, which is not the case, as it has been ruled in other UDRP cases. It would be normal and in good faith for the Respondent to use its own business name for its website, instead of using a well-known trademark to draw traffic to the company Web About
(株)’s online shop. By not doing so, it means that 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. Finally, the Respondent’s knowledge of the Complainant and the Complainant’s LEGO Marks is strong evidence of bad faith.
In conclusion the Panel finds the Respondent has registered and uses the Domain Name 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 Domain Name be transferred to the Complainant.
Gabriela Paiva Hantke
Sole Panelist
Dated: May, 22, 2012
Full & Egal Universal Law Academy