The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Noori net of Gyeongju Si, Gyeongsangbuk-Do, Republic of Korea. 2. The Domain Name and Registrar
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 October 8, 2010. On October 8 and 11, 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 October 11, 2010, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
On October 12, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. The Complainant submitted a request that English be the language of the proceeding on October 13, 2010. The Respondent did not respond to the Center’s Language of Proceeding notification. On October 20, 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 the Respondent of the Complaint, and the proceedings commenced on October 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2010.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on November 18, 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.
Due to unforeseen circumstances, the Panel found it necessary to extend the due date for the decision to at least December 20, 2010, and the parties were so notified. 4. Factual Background
The Complainant, based in Demark, is the producer of LEGO branded construction toys, and has been conducting business since 1953. The Complainant has subsidiaries and branches throughout the world, and its products are sold in more than 130 countries, including the Republic of Korea (“Korea”). The Complaint also holds trademark registrations throughout the world for the mark LEGO, including several registrations in Korea – some of which date back to 1980.
The Respondent appears to be a Korean entity or individual with residence in Korea. The disputed domain name was registered on April 26, 2008. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to marks in which the Complainant has rights. More specifically, the Complainant asserts that it has registrations in various countries throughout the world for the term LEGO, including Korea, and that the disputed domain name is confusingly similar thereto.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name, and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain name was registered and used in bad faith. The Complainant notes that the Respondent has made no bona fide use of the disputed domain name. Rather, the disputed domain name is connected with a domain name parking service and expressly states on its homepage that the disputed domain name is available for sale. Further, the LEGO mark has been recognized as a well-known trademark in prior UDRP decisions as well as by a publication from “The Centre for Brand Analysis,” and so the Respondent must have known of the Complainant and its trademark when the Respondent obtained the disputed domain name. Additionally, the Respondent attempted to sell the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Preliminary Issue: Language of the Proceeding
Paragraph 11 (a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the registration agreement is Korean, and the Complainant submitted arguments as to why English is more appropriate, citing a number of factors.
First, the Panel notes that English does not appear to be the mother language of either party. Given the fact that the Complainant is based in Denmark and the Respondent is based in Korea, English would appear to be the fairest neutral language for rendering this decision. Besides, both parties were given the opportunity to submit arguments in the language of their preference, and the language in which to render the decision is reserved for the Panel in accordance with paragraph 11 of the Rules. Furthermore, the Panel notes that all of the Center’s communications have been transmitted to the parties in both English and Korean. Also given that the Respondent has chosen to not participate in this proceeding, the Panel sees no justification for rendering the decision in Korean in view of the overall circumstances.
Therefore, the Panel finds it proper and fair to render this decision in English. A. Identical or Confusingly Similar
The Complainant has demonstrated with supporting evidence that it holds many trademark registrations throughout the world, including in Korea, that consist solely or primarily of the term LEGO. The disputed domain name entirely incorporates the Complainant’s trademark LEGO and merely adds the term “house”. The addition of such a generic term does not dispel a likelihood of confusion, and it is obvious that the “LEGO” portion is the primary focus and distinctive element of the disputed domain name.
For the reasons mentioned above, the Panel finds that the first element has been established. B. Rights or Legitimate Interests
On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie finding that the Respondent has no rights or legitimate interests in the disputed domain name. Once such a prima facie basis has been established, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. After all, the Respondent is in the best position to offer evidence if it were to exist. However, the Respondent in this case has chosen to file no Response. Accordingly, there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element has been established. C. Registered and Used in Bad Faith
The Panel finds that there are sufficient reasons to find bad faith on the part of the Respondent in this case. First, it is difficult to dispute that the asserted trademark (LEGO) is well-known throughout the world. The LEGO trademark has been used since 1953, and is ranked 8th in the 2009/10 list of the top 500 famous brands as published by “The Centre for Brand Analysis.” Further, the well-known status has been confirmed by prior UDRP panels (for example LEGO Juris A/S v. Level 5 Corp.,WIPO Case No. D2008-1692; LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715; LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680). In light of these facts, it is highly unlikely that the Respondent innocently obtained the disputed domain name in good faith and without knowledge of the Complainant’s rights. Second, the disputed domain name is linked with a domain name parking service which contains pay-per-click links, and there is no evidence of any history of bona fide use or related preparations by the Respondent. Rather, there is a message indicating that the disputed domain name is available for sale. In fact, there was a brief exchange of communications apparently to negotiation the transfer of the disputed domain name. The Respondent showed initial interest in selling the disputed domain name to the Complainant, but fell silent once the Complainant made it clear that the amount would not exceed out of pocket expenses. Third, there is a history of prior bad faith findings against the Respondent. The Respondent was found to have acted in bad faith in at least two recent UDRP decisions: Banco Bradesco S.A. v. Noori net,WIPO Case No. D2010-1553; Credit Industriel et Commercial S.A. v. Noori net,WIPO Case No. D2010-0729. The Respondent appears to also use another identity – namely, “Nurinet”. Based on a check of available details, it is fairly certain that it is the same Respondent. In this regard, there are an additional four UDRP decisions against the Respondent concluding that it had registered and used domain names in bad faith: Missoni S.p.A. v. Nurinet,WIPO Case No. D2010-1068; Kshocolat Limited v. Nurinet,WIPO Case No. D2010-0577; L’AIR LIQUIDE Société anonyme pour l’Etude et l’Exploitation des Procédés Georges Claude v. NURINET,WIPO Case No. D2010-0122; Repsol Butano, SA v. NURINET,WIPO Case No. D2009-1636. Given these circumstances, there is little doubt that the Respondent acted in bad faith here as well.
For the reasons given above, the Panel finds that the third and final element has been sufficiently established. 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 disputed domain name be transferred to the Complainant.
Ik-Hyun Seo
Sole Panelist
Dated: December 20, 2010
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