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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Whois Privacy Protection Service by VALUE-DOMAIN / Kazuhiko Seki

Case No. D2016-1080

1. The Parties

The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Whois Privacy Protection Service by VALUE-DOMAIN of Osaka, Japan / Kazuhiko Seki of Nagano, Japan.

2. The Domain Name and Registrar

The disputed domain name <lego-happy.com> is registered with GMO Internet, Inc. d/b/a Discount‑Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2016. On June 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 6, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On June 6, 2016, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese. The Complainant filed an amended Complaint on June 9, 2016 and requested for English to be the language of the proceeding. No request was received from the Respondent.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2016.

The Center appointed Keiji Kondo as the sole panelist in this matter on July 19, 2016. 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 the owner of the trademark LEGO, registered as early as 1958, in numerous countries all over the world.

The Complainant also owns numerous domain names containing its LEGO mark registered prior to the registration of the disputed domain name.

The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including Japan.

The disputed domain name was registered on February 15, 2015.

5. Parties’ Contentions

A. Complainant

(1) Identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The dominant part of the disputed domain name comprises the term “lego”, which is identical to the Complainant’s registered trademark LEGO, registered in numerous countries all over the world.

Neither the hyphen nor the suffix “happy” detract from the overall impression.

The addition of the generic Top-Level Domain (“gTLD”) “.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 trademark and the disputed domain name.

Anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant.

Therefore, the disputed domain name is confusingly similar to the Complainant’s LEGO trademark.

(2) No rights or legitimate Interests in respect of the disputed domain name

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” in any other way that would give it any legitimate rights in the name. 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. Nevertheless, there is no disclaimer on the website to explain the lack of relationship to the Complainant.

As no evidence has been found that the Respondent is using the name “lego” as a company name or has any other legal rights in the name, it is quite clear that the Respondent is simply trying to sponge off the Complainant’s world famous trademark.

The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a website that contains links directing Internet users to a commercial website that offers all kinds of products from a wide range of different brands, besides the Complainant.

In the current case, the Respondent is not a reseller.

Referring to the above-mentioned, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

(3) Bad faith registration and use of the disputed domain name

The Respondent registered the disputed domain name on February 15, 2015. This date is subsequent to when the Complainant registered the trademark LEGO in Japan, and elsewhere by several decades. It is obvious that it is the fame of the trademark that has motivated the Respondent to register the disputed domain name. That is, the Respondent cannot claim to have been using the trademark LEGO without being aware of the Complainant’s right to it.

The Complainant first tried to contact the Respondent on February 26, 2015, through a cease-and-desist letter sent by email. The Complainant advised the Respondent of the unauthorized use of the LEGO trademark within the disputed domain name and requested a voluntary transfer of the same. The Complainant also offered compensation for the expenses of registration and transfer fees (not exceeding out-of-pocket expenses). However, despite that reminders were sent, no response was ever received. The Complainant notes that the efforts of trying to solve the matter amicably were unsuccessful, and the disputed domain name was being renewed.

The disputed domain name is connected to a website directing Internet users to a commercial website, namely “www.amazon.co.jp”. The Respondent is acquiring revenue when a visitor clicks through on the links provided.

In order to strengthen the likelihood of confusion the Respondent has chosen to prominently display the Complainant’s LEGO bricks in the background of the website, as well as links to LEGOLAND (another trademark owned by the Complainant).

To summarize, LEGO is a famous trademark worldwide. It is clear that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the disputed domain name the Respondent is not making a legitimate noncommercial or fair use, but is misleadingly diverting consumers for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 11(a) of the Rules, the language of the proceeding shall be the language of the registration agreement, subject to the Panel’s authority to determine otherwise. The Registrar has confirmed the language of the Registration Agreement as Japanese. The Complainant filed its Complaint in English and requests English as the language of the proceeding. The Respondent did not file a request for the language of the proceeding, nor did it reply to the Complaint. Noting further that the Complainant is unable to communicate in Japanese and that the website to which the disputed domain name resolves displays some words in English, the Panel concludes that the language of the proceeding shall be English.

A. Identical or Confusingly Similar

The dominant portion of the disputed domain name, <lego-happy.com>, is “lego”, which is identical to the Complainant’s trademark. Neither the hyphen nor “happy” detracts from the overall impression. LEGO is a widely-known trademark and it has no other meaning than the name of the Complainant. Consumers may mistake the disputed domain name to be associated with the Complainant.

Therefore, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The name of the Respondent, Kazuhiko Seki, is in no way similar to the disputed domain name, and the Respondent, failing to submit a response to the Complaint, has presented no evidence showing that it has been commonly known by the disputed domain name. No evidence shows that the Respondent has any trademark or trade name in connection with the disputed domain name.

The Complainant denies that any license or authorization of any kind has been given by the Complainant to the Respondent to use the trademark LEGO.

The disputed domain name is not used in connection with bona fide offering of goods or services. Rather, the Respondent is using the website under the disputed domain name to display links to the Complainant’s products without authorization from the Complainant to do so.

Additionally, the Respondent’s website displays links to pages on the commercial website “www.amazon.co.jp”, on which the Complainant’s products are ostensibly being offered for sale. Such a use of the disputed domain name cannot be considered a legitimate noncommercial or fair use, as it rather misleadingly diverts consumers in search of the Complainant’s products, first to the Respondent’s website, then to product pages located on Amazon’s website, likely for commercial gain through the Amazon Services LLC Associates Program, discussed below in connection with registration and use in bad faith.

Therefore, the Panel concludes the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant has registered its trademark in Japan under Registration Number 0520470 in 1958. The Complainant’s trademark LEGO had been well known in Japan before the disputed domain name was registered on February 15, 2015.

In consideration of the circumstances, it is inconceivable that the Respondent obtained the registration of the disputed domain name without awareness of the Complainant's trademark LEGO.

The disputed domain name is used to link to pages of another commercial website, “www.amazon.co.jp”, on which the Complainant’s goods are ostensibly being offered for sale. Considering the Amazon Services LLC Associates Program, it is highly probable that the Respondent is using the disputed domain name for commercial gain.

Moreover, the Respondent also displays what appears to be the Complainant’s LEGO bricks in the background of the website header, as well as links referencing another trademark of the Complainant, LEGOLAND. Considering these uses by the Respondent, the Panel finds that the Respondent intentionally attempted to attract users for commercial gain by creating a likelihood of confusion with the Complainant’s mark and the disputed domain name.

Therefore, the Panel concludes that the disputed domain name was registered and is being 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, <lego-happy.com>, be transferred to the Complainant.

Keiji Kondo
Sole Panelist
Date: August 2, 2016

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