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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Miwa Shibata

Case No. D2020-3071

1. The Parties

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

The Respondent is Miwa Shibata, Japan.

2. The Domain Names and Registrar

The disputed domain names <legoland.blog> and <legorand.blog> (the “Domain Names”) are registered with Netowl, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 2, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on December 7, 2020.

On December 2, 2020, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On December 2, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 in English and Japanese of the Complaint, and the proceedings commenced on December 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2021.

The Center appointed Haig Oghigian as the sole panelist in this matter on March 26, 2021. 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 has provided a comprehensive list of registered trademarks as well as the trademark record for LEGO and LEGOLAND in Japan, including the Japanese registration No. 520470 for LEGO registered on May 21, 1958 in classes 20 and 28 and the Japanese registration No. 1155550 for LEGOLAND registered on September 22, 1975 in classes 9, 15 and 28. In addition, the Complainant is the owner of close to 5,000 domain names. The LEGO trademark is equally well know and identifiable.

The Domain Names were registered on June 30, 2020. The Domain Name <legoland.blog> resolves to a commercial website that features images of the Complainant’s LEGO toys and products. The Domain Name <legorand.blog> resolves to an inactive website.

5. Parties’Contentions

The Complainant’s contention is that its well established and on going possession of the trademark LEGO and LEGOLAND provides the owners of such a trademark with the right to prevent and use of that well known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered. The Complainant quotes Article 16.2 and 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) to buttress its contention. The Complainant argues that the Domain Names are identical or confusingly similar to its LEGO and LEGOLAND trademarks, and that the Respondent has no rights or legitimate interests in respect of the Domain Names, and that the Domain Names were registered and are being used in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Preliminary Issue: Language of the Proceeding

The Complainant submitted a vigorous position as to why the Complaint and these proceedings should proceed in the English language in spite of the fact that the registration was made in the Japanese language. Aside from the issue of the delay that would ensue if the proceedings and adjudication would have to be made in both languages or translated, the Domain Names in question are intended to have impact in the English language and do not have any meaning in the Japanese language.

Pursuant to paragraph 11(a) of the Rules, the Panel may determine the language of proceedings having regard to expense, expeditiousness and fairness.

Given all the circumstances, and in particular that the Respondent did not object, the proceedings should be held in the English language.

B. Identical or Confusingly Similar

The Complainant’s assertion is that the dominant parts of the Domain Names in question are essentially identical to the registered trademarks LEGO and LEGOLAND.

Further, the second level domain of the Domain Name <legoland.blog> is identical to the Complainant’s trademark LEGOLAND as per paragraph 4(a)(i) of the Policy.

Further, the Domain Name <legorand.blog> is an intentional misspelling of LEGOLAND and is confusingly similar to the Complainant’s trademark. It is established in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that “…intentional misspelling of a trademark is considered by panels to be confusingly similar…”.

The addition of the Top-Level Domain “.blog” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There appears to be no registered trademarks or trade names owned by the Respondent corresponding to the Domain Names. Nor does it appear that the Respondent has been using the LEGO or LEGOLAND names in any other way which might have rights established by common usage.

The Complainant has not given a license or otherwise authorized the Respondent to us the trademarks LEGO or LEGOLAND. This should be seen as a prima facie evidence that the Respondent has no right or legitimate interest in the Domain Names (Guerlain SA v. Peikang, WIPO Case No. D2000-0055). Nor is the Respondent a dealer or otherwise in a business relationship with the Complainant. (Dr. Ing. h.c. F Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312).

It appears clear that the Respondent is using the Domain Names to “to create an impression of association with the Complainant” (Drexel University v. David Brouda, WIPO Case No. D2001-0067).

For the Domain Name <legoland.blog>, the Respondent has incorporated features images of the Complainant’s LEGO toys and products without consent, in the website in order to create a false link with the Complainant. UDRP panels have viewed this as an indication of bad faith by the Respondent, and that domain names identical to a complainant’s trademark carry a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).

Finally, it appears that as the Respondent is not attempting to make a legitimate use of the Domain Name <legorand.blog> by directing Internet users to a blank page void of content s, it’s not making use a legitimate use of the Domain Names.

The Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Attempts by the Complainant to communicate with the Respondent have met with no response. It also appears that there is no plausible reason for the Respondent to have sought out and registered the Domain Names except to create the impression of an association with the Complainant. As there is no connection between the Complainant and the Respondent, it appears clear that by using the Domain Names, the Respondent is not making a good faith use of the Domain Names. Rather its objective is simply to mislead and divert consumers for commercial gain. The Panel finds that the Respondent registered and is using the Domain Names in bad faith.

The Panel finds that the Complainant has established paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(j) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <legoland.blog> and <legorand.blog> be transferred to the Complainant.

Haig Oghigian
Sole Panelist
Date: April 2, 2021

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