WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Danaka Tarou

Case No. D2015-0315

1. The Parties

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

The Respondent is Danaka Tarou of Tokyo, Republic of Korea.¹

2. The Domain Name and Registrar

The disputed domain name ("Disputed Domain Name") <lego-tv.com> is registered with Whois Networks Co., Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 25, 2015. On February 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 27, 2015, 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.

On March 2, 2015, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the Disputed Domain Name was Korean. On March 3, 2015, the Complainant requested for English to be the language of the proceeding, to which the Respondent has not replied.

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 in both English and Korean, and the proceeding commenced on March 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 2, 2015.

The Center appointed Andrew J. Park as the sole panelist in this matter on April 16, 2015. 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 LEGO and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products.

The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including the Republic of Korea, where the Respondent appears to be domiciled. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in the Republic of Korea, and elsewhere.

The Complainant is the owner of approximately 4,300 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. Recently, TIME announced LEGO to be the "Most Influential Toy of All Time".

The Respondent registered the Disputed Domain Name <lego-tv.com> on October 12, 2014.

5. Parties' Contentions

A. Complainant

The Complainant argues (1) that the Disputed Domain Name is identical or confusingly similar to the Complainant's LEGO trademark, (2) that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and (3) that the Respondent registered and used the disputed the Disputed Domain Name in bad faith.

First, the Complainant argues that the Disputed Domain Name is identical or confusingly similar to the Complainant's LEGO trademark. Specifically, the dominant part of the Disputed Domain Name comprises the word "lego", which is identical to the Complainant's registered trademark LEGO. The fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions, e.g., LEGO Juris A/S v. Level 5 Corp. WIPO Case No. D2008-1692. The addition of the suffix "tv" to the trademark LEGO does not preclude confusing similarity nor detract from the overall impression of the Disputed Domain Name. 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 or identity between the trademark and the Disputed Domain Name. Finally, by using the LEGO trademark as a dominant part of the Disputed Domain Name, the Respondent is exploiting the goodwill and the image of the LEGO trademark, which may result in dilution and other damage for the Complainant.

Second, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Specifically, no license or authorization of any other kind has been given by the Complainant to the Respondent. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods and 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 by displaying sponsored links, not related to the Complainant in any way. Finally, there is no evidence that the Respondent is using the name "Lego" as a company name or has any other legal rights in the name.

Third, the Complainant argues that the Disputed Domain Name was registered and is being used in bad faith. Specifically, the Respondent is using the Disputed Domain Name to intentionally attempt to attract Internet users to its website 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. The Disputed Domain Name was registered decades after the Complainant registered the trademark LEGO in the Republic of Korea; therefore, it is highly unlikely that the Respondent would not have known of the Complainant's legal rights in the name "Lego" at the time of the registration. The Respondent ignored a cease and desist letter that was sent to him on November 13, 2014, as well as several reminders, whereby the Complainant requested a voluntary transfer of the Disputed Domain Name and even offered compensation for the expenses of registration and transfer fees (not exceeding out-of-pocket expenses).

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the Disputed Domain Name to the Complainant. Those requirements are that: (i) the Disputed 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 Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.<

A. Language of the Proceedings

Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceedings under paragraph 11 of the Rules. In coming to this decision, the Panel has taken the following into account:

1) The Complaint has already been submitted in English and the Panel is fully capable of dealing with the Complaint in English;

2) The Respondent has not indicated any language preference; and

3) Since no response has been filed, there does not appear to be any procedural benefit that may be achieved by insisting on the default language of the proceedings and it is likely that delay to the proceeding would result should the Complainant be required to re-submit the Complaint in Korean.

B. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.

The Complainant has sufficiently established trademark rights in the term "lego". It is clear to the Panel that the Disputed Domain Name, consisting of the Complainant's trademark with the addition of a hyphen and the generic suffix "tv", is confusingly similar to the Complainant's trademark. See, e.g., F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0694 ("confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant's mark and only adds a generic word along with, in this case, the number '1'").

The addition of a gTLD such as ".com" after a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark.

C. Rights or Legitimate Interests

Under the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Nonetheless, there is no evidence in the record that the Respondent is in any way associated with the Complainant.

The Respondent registered the Disputed Domain Name on October 12, 2014 — long after the LEGO trademark had become famous and distinctive. The Complainant has not authorized, licensed or otherwise permitted the Respondent to use its LEGO trademark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name to create a false impression that the Respondent is affiliated with the trademark owner. Indeed, the Complainant's LEGO logo is displayed on the Respondent's website without consent. See, e.g., Kyocera Mita Corporation and Kyocera Mita America, Inc. v. Office Land, WIPO Case No. D2000-0385 ("The panel finds that the use of the domain name was so closely associated with this improper use of the logotype that the respondent's use of the domain name in connection with its offering of goods and services was not bona fide.")

Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainant has established that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.

D. Registered and Used in Bad Faith

The Panel will deal with the issue of bad faith registration and bad faith use separately below.

First, the Panel finds that the Respondent has registered the Disputed Domain Name in bad faith.

The registration of a domain name that is similar to a distinctive trademark by a respondent, when the respondent has no relationship to that mark may suggest bad faith. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319. Given the undisputed facts, the Panel finds it highly doubtful that the Respondent, which has no relationship to the LEGO trademark, would have registered the Disputed Domain Name without having knowledge of the Complainant or the LEGO trademark. The only reasonable conclusion to draw is that the Respondent deliberately sought to attract some of the Complainant's customers to the Respondent's pay-per-click website, with the hope that at least some of them will click sponsored links for which the Respondent will be paid. This falls square within paragraph 4(b)(iv) of the Policy. See, e.g., Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.

Bad faith can also be inferred based on the fame of the Complainant's marks, such that the Respondent was aware or should have been aware of the Complainant's marks and claims of rights thereto. Indeed, it has been established that the registration of a domain name incorporating a well-known trademark can itself constitute registration in bad faith, since it is unlikely that the registrant was unaware of the established rights in the mark at the time the domain name was registered. See, e.g., Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (finding bad faith since it was unlikely that the registrant of <nike-shoes.com> was unaware of complainant's well-known NIKE trademark when registering the domain name).

Several prior UDRP decisions have held that the LEGO mark is well-known, including LEGO Juris A/S v. Reginald Hastings Jr., WIPO Case No. D2009-0680 ("The LEGO mark is well-known worldwide"); LEGO Juris A/S v. Level 5 Corp., supra ("The Panel finds that the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive"); and LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715 ("The Complainant has asserted that LEGO is a famous trademark worldwide").

Given the notoriety of the LEGO trademark, the Panel finds that it is implausible that the Respondent was unaware of the Complainant's trademark rights when registering the Disputed Domain Name. Consequently, the Panel finds that the Respondent has registered the Disputed Domain Name in bad faith.

Second, the Panel finds that the Respondent has used the Disputed Domain Name in bad faith.

The Panel finds that the only credible explanation for the use of the Disputed Domain Name is to take advantage of the similarity between them and the Complainant's distinctive and well-known LEGO trademarks, for commercial advantage (e.g., pay-per-click revenue). As mentioned above, the Respondent has no connection whatsoever to the LEGO trademark. Thus, it is the Panel's opinion that the Respondent must have been aware of the LEGO trademark and intentionally attempted to use it for commercial gain.

The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith pursuant to the Policy, 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 Disputed Domain Name <lego-tv.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: April 28, 2015

¹ As far as the Panel is aware there does not appear to be any such location as "Tokyo, Republic of Korea". The Panel also notes, however, that this is the Registrant's apparent address, as confirmed by the Registrar.