The complainant is LEGO Juris A/S, a limited company incorporated in Denmark, with its principal place of business in Billund, Denmark ("Complainant"), represented by Melbourne IT Digital Brand Services AB, Sweden.
The respondent is Teruhisa Kimura ("Respondent"), with its address in Osaka-shi, 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 12, 2012, indicating Whois Privacy Protection Service by MuuMuuDomain as respondent. On September 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 14, 2012, the Registrar transmitted by email to the Center its verification response indicating that the registrant of the Domain Name has been identified as being different from the entity named in the Complaint as respondent. On September 17, 2012, the Center transmitted by email to the Complainant the registrant information received from the Registrar. On September 17, 2012, the Complainant submitted an amendment to the Complaint, reflecting the change in the registrant information.
On September 17, 2012, the Center transmitted an email communication to the parties in both English and Japanese regarding the language of the proceeding. On September 17, 2012, the Complainant confirmed that it has nothing further to add to its request for the proceedings to be held in English. The Respondent did not comment on the language of the proceeding by the specified due date, September 22, 2012.
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 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 14, 2012. On September 24, 2012, the Respondent transmitted by email to the Center a general inquiry on the proceedings. On September 27, 2012, the Respondent indicated his interest in transferring the Domain Name to the Complainant. Further to the Complainant's request on September 27, 2012, the Center suspended the administrative proceedings until October 26, 2012. However, the Respondent failed to make any apparent efforts after the notification of suspension was notified. Upon the Complainant's request, the Center reinstituted the proceedings on October 29, 2012 and set November 11, 2012 as the due date for submission of the Respondent's response. The Respondent did not submit a response. Accordingly, the Center notified the parties on November 13, 2012 that it would proceed to appoint the Administrative Panel.
The Center appointed Haig Oghigian as the sole panelist in this matter on November 29, 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
As there is no formal submission from the Respondent, the facts are taken from the Complaint and generally are accepted as true.
The Complainant is the owner of LEGO, and all other trademarks used in connection with the LEGO brands of construction toys and other LEGO branded products. The Complainant and its licensees (collectively, the "Lego Group"), through their predecessors, commenced use of the LEGO mark in the United States of America during 1953, to identify their construction toys. The Complainant has subsidiaries and branches throughout the world, and Lego products are sold in more than 130 countries, including Japan, where the Respondent resides. The Complainant established LEGO in Japan in 1992. The Complainant is also the owner of more than 2,400 domain names containing the term “Lego”.
The trademark LEGO is among the best known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising and promotional materials. 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 web site under the domain name . 5. Parties’ Contentions A. Complainant
The Complainant requests that the Domain Name be transferred from the Respondent to the Complainant.
The Complainant argues that the dominant part of the Domain Name comprises the word “Lego”, which is identical or confusingly similar to the Complainant's registered trademark, LEGO, and the domain names registered by the Complainant. The addition of the suffix added to the Domain Name, “rare”, is not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO. Likewise, the addition of the top-level domain (tld) "com" does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine the confusing similarity between the trademark and the Domain Name.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has not found that the Respondent has 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. No license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO. The Domain Name currently displays an online shopping site where Lego products are sold, from which the Respondent derives income once a visitor makes a purchase. However, the Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant. Further, the Complainant asserts that the Respondent could not claim to have been using LEGO without being aware of the Complainant's rights to it, which, among other facts, proves that the Respondent's interests could not have been legitimate. The Complainant contends that the Respondent is not using the Domain Name for a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain.
The Complainant also notes that the Respondent failed to respond to the cease and desist letter sent by the Complainant to the Respondent on June 7, 2012, and subsequent reminders sent on June 25, 2012 and July 4, 2012.
Consequently, the Complainant claims that the Domain Name was registered and is being used by the Respondent in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:
(i) The domain name is identical or confusingly similar to the trademark; 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. Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
It is noted that the language of the Registration Agreement is Japanese and the default language of the proceedings would have been Japanese. The Complainant asserts that English should be the language of the proceedings and the Respondent would not be prejudiced if the English be the language of the proceedings.
On September 17, 2012, the Center notified the parties in both English and Japanese that the Complaint has been submitted in English, that the language of the Registration Agreement for the Domain Name was Japanese, and provided the parties with detailed information concerning the language of proceedings. The Respondent was therefore aware of the language matters in the case and had an opportunity to make any comments or submissions if so wished. While the Respondent communicated with the Center in Japanese to indicate its interest in transferring the Domain Name with the Center on September 24, 2012, and the website subject to this dispute is in Japanese, the Respondent has not objected to the language of the proceedings at all by the due date. Moreover, the Respondent did not reply to the cease and desist letter (dated June 7, 2012) sent by the Complainant in English, neither to reply to the issues raised in the letter, not to state that it does not understand the content.
Paragraph 11(a) of the Rules reserves the Panel the authority to determine the proper language of the proceeding. In view of all the above circumstances and the Complainant's request, the Panel finds that there is no prejudice caused to the Respondent if the proceedings are conducted in English. The selection of the Japanese language as the language of the proceedings in the present case would be a burden to the Complainant, and would also cause undue delay to the proceedings.
The Panel is therefore satisfied that English should be selected as the language of the administrative proceedings of this case, and shall therefore render the decision in English in accordance with paragraph 11 of the Rules. B. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such provision, the complainant must prove that it enjoys the trademark right, and that the domain name is identical with or confusingly similar to its trademark or service mark.
It is established that the addition of generic or dictionary words, letters or numbers to a mark used in a domain name does not typically alter the fact that the domain name is confusingly similar to the mark. See America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004. Thus, the Panel finds that the addition of the suffix added to the Domain Name, "rare", does not prevent a likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent’s website associated with the Domain Name.
It is clear on the given evidence that the Complainant owns trademark rights in the LEGO mark.
Therefore, the Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s name and mark. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:
- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
- legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
Since the Complainant’s adoption and extensive use of the LEGO mark predates the registration of the Domain Name, and has otherwise asserted a prima facie case, the burden of production is on the Respondent to establish its rights or legitimate interests in the Domain Name. See, PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cyberson,WIPO Case No. D2003-0174. The Panel finds that there is no evidence that suggests that the Respondent has rights or legitimate interests in the Domain Name.
There is no evidence to suggest that the Respondent has been or is commonly known by the Domain Name.
In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name, the LEGO mark, or any mark confusingly similar thereto, as a domain name or for any other purpose. Further, the Respondent’s use of a copyright notice at the bottom of the website may serve to impermissibly imply such a relationship.
Further, in the Panel’s opinion, a third party has no right to use another’s trademark, in a domain name or indeed for any other commercial purpose, without express authorization from the owner of the trademark. See, C. Crane Company Inc. v. Robbie Crossley,WIPO Case No. D2009-0815; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3. There is no evidence that suggests that the Respondent was given any authorization or permission to register or use the Domain Name.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name. D. Registered and Used in Bad Faith
Given that the Respondent has never been authorized by the Complainant to use the LEGO mark in a domain name, and sell Lego products on its website which is likely to create confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement, the very fact that the Respondent has registered the Domain Name establishes bad faith use and registration to this Panel. See, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. In addition, the fact that the Respondent failed to respond to the referenced cease and desist letter also suggests that the Respondent was aware that it has no rights or legitimate interests in the Domain Name, and the Domain Name was registered and is being used in bad faith. Indeed, the Respondent’s email communication consenting to the transfer of the disputed domain name confirms this view to the Panel. See, America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460. The Panel has little hesitation in finding that the Domain Name was registered and is being used in bad faith.
Therefore, the Panel is satisfied that the Complainant has established bad faith as required by paragraph 4(a)(iii). 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.
Haig Oghigian
Sole Panelist
Date: December 27, 2012
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