Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
Respondent is J.h.Ryu of Gwangju, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”] is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2010. On July 14, 2010, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the Disputed Domain Name. On July 15, 2010, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details.
On July 19, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. Complainant submitted a request that English be the language of the proceeding on July 19, 2010. Respondent indicated an objection to Complainant’s request on July 21, 2010. On July 23, 2010, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that the Panel has the authority to determine the language of the proceeding.
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 proceeding commenced on July 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 13, 2010.
The Center appointed Andrew J. Park as the sole panelist in this matter on August 19, 2010. 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 owns worldwide trademark rights to and goodwill associated with the world-famous LEGO trademark for construction toys and other products, including computer hardware and software, books, videos, and computer controlled robotic construction sets. Complainant has subsidiaries and branches located throughout the world, and its LEGO products are sold in more than 130 countries, including in the Republic of Korea. LEGO Korea was established as early as 1984, and the Republic of Korea is one of Complainant’s 10 best markets. The revenues for Complainant and its licensees in 2008 exceeded USD 1.8 billion. In addition, Complainant is the owner of more than 1,000 domain name registrations containing the term LEGO. 5. Parties’ Contentions A. Complainant
Complainant argues that: (i) the Disputed Domain Name is identical or confusingly similar to a mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith. Regarding the first element, Complainant contends that the Disputed Domain Name incorporates Complainant’s LEGO trademark in its entirety, together with the non-dominant word “space” and the generic top-level domain suffix “.com.” Complainant argues that the non-dominant word “space” and the generic top-level domain suffix “.com” do not affect the overall impression of the dominant portion of the Disputed Domain Name and is therefore irrelevant in determining whether the domain name is confusingly similar or identical to its LEGO trademark. Thus, Complainant contends that the Disputed Domain Name is confusingly similar to its LEGO trademark.
Regarding the second element, Complainant contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Specifically, Complainant contends that Respondent is not related in any way to Complainant’s business, is not one of Complainant’s licensees nor dealers, and has never had a business relationship with Respondent. Complainant also states that Respondent has not registered any trademarks or trade names corresponding to the Disputed Domain Name nor been using the LEGO name in any other way that would give them legitimate rights to the name.
Complainant also contends that Respondent would have known of Complainant’s legal rights in the LEGO name at the time he registered the Disputed Domain Name. Complainant argues that Respondent was motivated to register the Disputed Domain Name based on the fame of the LEGO trademark. Finally, Complainant contends that Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Instead, Complainant argues that Respondent intentionally chose a domain name based on a registered trademark in order to generate traffic and income through sponsored links, and, ultimately to use the LEGO trademark to mislead Internet users, all of which tarnishes the LEGO trademark. Thus, Complainant contends that Respondent has no rights or legitimate interest in respect of the Disputed Domain Name.
Regarding the third element, Complainant submits that Respondent offered to sell the Disputed Domain Name to it for USD 3,000. Complainant thus claims that the Disputed Domain Name was registered or acquired by Respondent primarily for the purpose of transferring the domain name registration to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Disputed Domain Name.
As further evidence of bad faith, Complainant states that its LEGO trademark is a very well-known mark throughout the world, and relies on the strength of its reputation for the presumption that Respondent registered the Disputed Domain Name to attract, for commercial gain, Internet users to the website to which this domain name resolves. Complainant submits that Respondent’s use of the website corresponding to the Disputed Domain Name creates a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his website. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The registration agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, 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, i.e., Korean. However, as noted above, Complainant upon receiving the Language of Proceeding notification from the Center submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432. Based on the pre-Complaint cease and desist letter Complainant sent to Respondent in English, and Respondent’s multi-point reply in well-written English, it does not appear as though Respondent has any difficulty comprehending and communicating in English. Respondent also chose not to participate or submit any reply to this proceeding in English or Korean. In light of these circumstances, the Panel concludes that it will 1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English; and 2) issue a decision in English. 6.2 Analysis of the Complaint
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of Respondent’s Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that Respondent’s Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made by a complainant, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
As Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from Respondent’s default. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. A. Identical or Confusingly Similar
The case record contains ample evidence to demonstrate Complainant’s rights in the registered LEGO trademark. Indeed, prior UDRP panels have noted Complainant’s worldwide reputation for the LEGO mark. See LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715 (“The Panel finds, as numerous panels have found before, that the Complainant has established that LEGO is a well-known trademark and that the trademark is distinctive and famous.”).
The Panel also determines that the Disputed Domain Name is confusingly similar to Complainant’s LEGO mark. The test for determining confusing similarity involves a direct comparison of a complainant’s trademark and the textual string which comprises the domain name. In this case, the addition of the word “space” does not diminish the confusingly similar nature of the Disputed Domain Name. See, Credit Industriel et Commercial S.A. v. Demand Domains, Inc.,WIPO Case No. D2009-1184 (“The suggestion that the term “escic” might be read by an Internet user as the Complainant’s mark combined with the country [sic] code for Spain does not strike the Panel as inherently improbable or fanciful.”). Additionally, the Panel notes that it is well-established that the top-level domain name suffix (e.g., “.com”) is not generally taken into consideration when assessing identical or confusing similarity. Accordingly, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if Respondent has not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by Complainant of an absence of rights or legitimate interests on the part of Respondent, the evidentiary burden shifts to Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
Complainant has not authorized Respondent to use its LEGO trademark in any respect. There is also no evidence that Respondent is commonly known by the Disputed Domain Name. Further, Respondent’s use of the Disputed Domain Name to sponsor links to paid advertising is not use of the Disputed Domain Name in connection with a bona fide offering of goods or services. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946; E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319; Trade Me Limited v. Vertical Axis Inc,WIPO Case No. D2009-0093. Finally, there is no evidence that Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Name. Based on the un-refuted evidence submitted by Complainant, the Panel finds that Respondent is not making fair use of Complainant’s trademark, but is using the mark to attract Internet users to Respondent’s website and then providing links to other sites having little or nothing to do with Complainant.
This combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to Respondent to prove that it has some rights or legitimate interests in respect of the Disputed Domain Name. Respondent has not filed a Response and has therefore failed to satisfy its burden. Having searched the record, the Panel finds no circumstances that would indicate such rights or interests, as described in paragraph 4(c) of the Policy, or otherwise. Complainant has therefore prevailed on this part of its Complaint. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that a registrant registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
Complainant has submitted evidence that Respondent registered the Disputed Domain Name to sell, rent or otherwise transfer it to Complainant. Paragraph 4(b)(i) of the Policy. Respondent is also presumably deriving a financial benefit from web traffic diverted through the Disputed Domain Name to linked websites on the website to which the Disputed Domain Name resolves. The Panel therefore also accepts that Respondent has intentionally attracted Internet users to its website for commercial gain through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy. See Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462. Respondent, by use of the Disputed Domain Name, is also drawing Internet users away from Complainant’s websites to its own website and thus damages Complainant’s business. Accordingly, the Panel finds that Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor or for attracting Internet users to another site by creating confusion and this is evidence of bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. For the foregoing reasons, the Panel finds that Complainant has satisfied the third element of the Policy 7. Decision
For all 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 Complainant.
Andrew J. Park
Sole Panelist
Dated: September 2, 2010
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