World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Masayuki Sato

Case No. D2011-1639

1. The Parties

Complainant is LEGO Juris A/S, Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.

Respondent is Masayuki Sato, Osaka, Japan.

2. The Domain Name and Registrar

The disputed domain name <lego-fan.net> ("Disputed Domain Name") is registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2011. On September 27, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the Disputed Domain Name. On September 28, 2011, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 31, 2011.

The Center appointed Andrea Mondini as the sole panelist in this matter on November 11, 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

Complainant is the owner of the trademark LEGO, which is registered in more than 50 countries, including Japan, and used in connection with Lego brands of construction toys and other Lego branded products. Complainant also owns more than 1000 domain names containing the term “lego”. The LEGO products are sold in more than 130 countries throughout the world, including Japan.

Respondent has registered the Disputed Domain Name with Melbourne IT Ltd. on November 15, 2010 and sells Complainant's products on the website connected to the Disputed Domain Name. Respondent has no license or authorization to use the trademark LEGO.

Complainant tried to contact Respondent on December 8, 2010 through a cease and desist letter by email and requested a voluntary transfer of the Disputed Domain Name. Complainant did not receive any reply and therefore sent a first reminder on February 10, 2011 and a second reminder on February 21, 2011. Respondent did not reply to these reminders.

5. Parties’ Contentions

A. Complainant

Complainant is the owner of the trademark LEGO and asserts that LEGO is among the best known trademarks in the world. Complainant asserts that the Disputed Domain Name <lego-fan.net> is confusingly similar to the trademark LEGO since the suffix "-fan" does not detract from the overall impression.

Complainant contends that Respondent has no license or any authorization to use the trademark LEGO and that Respondent is not using the Disputed Domain Name in a bona fide offering of goods or services since Respondent purports on its website to have a copyright of its own in the words "Lego fan". Complainant argues that this could be seen as Respondent's claim to have rights in the trademark LEGO and that this misleads Internet users.

Complainant argues that Respondent is using the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its website. Furthermore, Complainant points to the fact that Respondent has failed to respond to Complainant's cease and desist letter and the several reminders thereof. Complainant consequently argues that such behavior constitutes bad faith registration and bad faith use of the Disputed Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The dominant part of the Disputed Domain Name <lego-fan.net> is the word “lego”, which is identical to the trademark LEGO which has been registered by Complainant as a trademark and as domain names in numerous countries all over the world.

The fame of the trademark LEGO has been confirmed in numerous previous UDRP decisions e.g. Juris A/S v. Level 5 Corp, WIPO Case No. D2008-1692 and Juris A/S v. Michael Longo, WIPO Case No. D2008-1715. The present Panel agrees with said previous panels' assessments. Given the dominance of the famous trademark LEGO, the addition of the generic word "-fan" as a suffix is not sufficient to avoid a confusing similarity. Furthermore, Complainant alleges that it has a close relationship to its fans and has a specific grouping for its fans named LEGO Club. Respondent has not denied these allegations. The suffix is therefore rather fitted to strengthen the impression that the Disputed Domain Name <lego-fan.net> belongs to, or is affiliated with Complainant.

Consequently the Disputed Domain Name is confusingly similar to Complainant's trademark.

B. Rights or Legitimate Interests

Complainant contends that it has not given Respondent a license nor any other authorization to use the trademark LEGO and that Respondent is not an authorized dealer of Complainant's products and has no business relationship with Complainant. These allegations have not been disputed by Respondent.

Respondent is not using the Disputed Domain Name with a bona fide offering of goods either. To qualify for a bona fide offering of goods, the user of the trademark must, in accordance with the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, actually offer goods at issue, use the website to sell only the trademarked goods, accurately and prominently disclose the registrant's relationship with the trademark holder and must not try to "corner the market".

Respondent does not accurately disclose its non-existing relationship with the trademark owner. On the contrary, Respondent prominently placed a disclaimer stating "LEGOFAN All Rights Reserved" on its website. This disclaimer could rather be seen as Respondent's claim to have rights in the words "LEGOFAN". By not accurately disclosing the relationship with the trademark owner, Respondent fails to meet the requirements for making a bona fide offering of goods.

Consequently Respondent has no rights or legitimate interest to use the Disputed Domain Name.

C. Registered and Used in Bad Faith

Pursuant to Policy paragraph 4(b)(iv) respondent's use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or a product on the website is evidence of a registration and use in bad faith. The Disputed Domain Name is confusingly similar to Complainant's mark and is connected to a shopping site where Complainant's products are sold. Respondent's use of the notice "LEGOFAN All Rights Reserved" qualifies as use of the Disputed Domain Name in bad faith because it creates a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website. Pursuant to Policy paragraph 4(b)(iv), a strong evidence of a registration and use in bad faith

Moreover, Complainant has contacted and advised Respondent on the unauthorized use of Complainant's trademark several times. Respondent did not reply to such correspondence. Panels in earlier disputes have found the failure to respond to a cease and desist letter as evidence of bad faith (News Group Newspaper Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623 and Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598).

Consequently, Respondent has registered and used the Disputed 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, <lego-fan.net> be transferred to Complainant.

Andrea Mondini
Sole Panelist
Dated: December 6, 2011

 

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