The Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Yang Kyung Won of Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Megazone Corp., doing business as HOSTING.KR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2011. On July 4, 2011, the Center transmitted by email to Megazone Corp., doing business as HOSTING.KR, a request for registrar verification in connection with the disputed domain name. On July 7, 2011, Megazone Corp., doing business as HOSTING.KR, transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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”).
On July 14, 2011, the Center notified the parties, in both English and Korean, of the Center’s procedural rules relevant to the language of the proceedings. The Center informed the parties that according to the Registrar, the language of the registration agreement is Korean, and that the Complaint was submitted in English. In addition, the Center specifically requested the Complainant to provide at least one of the following: “1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into Korean; or . . . 3) submit a request for English to be the language of the administrative proceedings.” To the Respondent, the Center stated, “In all cases, if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by July 19, 2011.” The Center also instructed the Respondent, “Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be [English], and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials . . . as to why the proceedings should not be conducted in English.”
On July 14, 2011, the Complainant responded to the Center, stating that it had already requested in its Complaint that the proceedings be in English. On July 19, 2011, the Respondent responded to the Center, in Korean; he stated that conducting the matter in English would pose a difficulty, and requested that his native Korean be the language of the prodeedings.
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 July 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2011. On August 9, 2011, the Respondent transmitted to the Center an email message in Korean, with attachments. On the same date, the Center responded, acknowledging receipt, and stating, “As the due date for Response is August 9, 2011, unless advised otherwise by you, the Center will now treat the above referenced communication as your Response to the Complaint . . . .” There was no further submission from the Respondent to the Center.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on August 12, 2011. 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.
As discussed herein, the Panel determines that the language of the proceeding is English. 4. Factual Background
The Complainant makes and sells construction toys under the LEGO mark. LEGO products are sold all over the world, including the Republic of Korea (“Korea”). The Complainant has received registrations for the LEGO mark in various countries, including the United States of America in 1975.
The Respondent registered the disputed domain name on December 15, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The Complainant also emphasizes, inter alia, that: it (or its licensees or predecessors) has used the LEGO mark since 1953, the mark “is among the best-known trademarks in the world,” Complaint, at page 8, and it has not given the Respondent any license or authorization to use the mark. B. Respondent
In his Response of August 9, 2011, the Respondent states in Korean that:
“He resides in Korea, operates an Internet business, including work as a website designer;
he has, for a long time, operated a noncommercial, official LEGO website;
he is actively operating a top networking website with online and offline activities, which has become famous, and is a well-known site to anyone with an interest in LEGO.
the domain name is not identical to the Complainant’s mark;
he has been using the domain name actively, for a long time;
he did not take any action to receive any benefit unfairly or unjustly;
the website is the “No. 1” site in Korea for sharing information about LEGO and has online and offline activities;
if the domain name is transferred to the Complainant, it will be difficult to operate the website, and 50,000 members will face hardship;
the Respondent requests a decision confirming that he may keep the domain name.
In the same Response, the Respondent also referred to ICANN and the requirements under the UDRP for transferring the disputed domain name to the Complainant, quoting the purported Korean version of paragraph 4(a) of the Policy. 6. Discussion and Findings
The Panel must initially address the language of the proceeding. Paragraph 11 of the Rules states:
(a) 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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
(b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.
In the present case, the registration agreement is in Korean. The Complainant nevertheless submitted its Complaint in English and requested that the language of the proceeding be English. The Complainant states that in response to its cease and desist letter to the Respondent, dated February 2, 2011, “the Respondent came back with a long reply in English,” indicating familiarity in the language. Complaint, at pages 6-7. Indeed, on February 7, 2011, an email message responding to the Complainant’s letter reads in full:
“Hello,
If you want legal action, That's OK.
You have to pay $ 1,500 USD over to establish administrative pannel [sic].
* There is no guarantee win.
* It takes a lot of time.
* Litigation costs will occur. ( Total : USD 3,000 $ Over )
Normally, winning at the Wipo or UDRP for this law suit is not the end.
We are going to submit my law suit to the court here in Korea regarding the procession right of this domain.
Let's find out who is right and who is wrong at the court here in Korea.
But it would be also hard for me too due to all kind of expenses that would follow to choose an attorney and other expenses require to proceed this law suit.
So, if it is possible, let's try to find an agreement.
So, If you will suggest only $ 1,500 USD (this price was considered including registration fee, escrow fee etc),
We are willing to give up this domain and will transfer it ASAP.
After your consideration, Please give me your resposne [sic].
We will wait for your positive response.
Best regards,
James Boeger
Trademark Worx, LLC”
Complaint, Annex 10 (boldface in original). Although it is not clear who “James Broger” is, the message was sent from the Respondent’s email address.
There is now a significant number of WIPO cases in which the language of the proceeding was at issue, in a situation identical to the present case, i.e., a non-Korean complainant, a Korean respondent, the registration agreement in the Korean language, and the complaint filed in English. See, e.g., Blue Financial Corporation v. Domain CA (Whois Protect Service), Mediablue,WIPO Case No. D2010-0537.
As the late Panelist Boh Young Hwang wrote, “The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort[] with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.” Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679. Likewise, Panelist Andrew J. Park stated, “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.” NH Hoteles, S.A. v. Will Eom,WIPO Case No. D2010-0227.
Taking into account the circumstances of the case, the Panel determines that English is the language of the proceeding. The Panel has authority to do so under paragraph 11(a) of the Policy.
At this point, little is to be gained in requiring the Complainant to submit its papers translated into Korean; rather, undue and unnecessary delay and expense would result. The Response (in Korean) indicates the Respondent’s knowledge of the requirements under the UDRP. Moreover, there is no prejudice to the Respondent as a result of the Complainant's submissions in English, or this decision being issued in English. Although the Complainant formally requested that English be the language of the proceeding, and the Respondent requested Korean, the Center has allowed the parties to submit their respective submissions in the language of their preference. Importantly, the Panel will give full consideration to the parties’ respective arguments – those of the Complainant in English, and those of the Respondent in Korean.
The Panel turns to the merits. In order to prevail, the Complainant must demonstrate the presence of each of the three elements under paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has rights in the LEGO mark, which it has used for many years, and for which it has received trademark registrations in numerous jurisdictions. Although the disputed domain name is not “identical” to the Complainant’s mark, LEGO, the Panel determines that it is confusingly similar. The “lego” prasing is the predominant portion of the disputed domain name. The “” appendage is not sufficient to defeat the requisite confusing similarity.
The first element is demonstrated. B. Rights or Legitimate Interests
The Complainant has met its initial burden of making a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The burden thus shifts to the Respondent to demonstrate any such rights or legitimate interests. The Respondent asserts that the website associated with the disputed domain name is a networking site (in Korean, “카페,” the phonetic transliteration of the English “cafe”), and therefore, he has a right or legitimate interest regarding the disputed domain name. The problem with this approach is that the purported networking site (or “cafe”) was not created until after the Complaint was filed.
As of June 29, 2011 (five days before the Complainant filed its Complaint), Internet users who resorted to the disputed domain name were transferred to a website for fans of AUDI cars. Complaint, at pages 10-11 and Annex 9. The website apparently contained advertisements relating to the sale and purchase of cars and automobile accessories. Sometime after the Complaint was filed and presumably before the Respondent’s Response of August 9, 2011, the website associated with the disputed domain name was changed. The new website features at the top, Korean transliterations of “LEGO” and “cafe,” and “Brick Nara” in English (“Nara” is Korean for “country or nation”), superimposed over a pictorial display of what appears to be LEGO products. Except for the “Brick Nara” notation, virtually all of the text on the website is in Korean. On the left side of the screen appears text contained in a rectangle, which provides information about the site. The text indicates that the network has over 50,000 members; in addition, next to the Korean transliteration for “profile” appears the phrase: “since 2005.04.25.”
Paragraph 4(c) of the Policy provides illustrative examples of how the Respondent may demonstrate rights or legitimate interests in the disputed domain name. When used to divert Internet users to a site for AUDI cars, the Respondent was not: (i) using the disputed domain name for “a bona fide offering of goods or services”; (ii) “commonly known by the domain name”; or (iii) making a “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.” Moreoever, the Panel is not able to discern any other circumstances that would demonstrate the Respondent’s right or legitimate interest based on the initial use of the disputed domain name.
The content of the website for the disputed domain name was changed sometime after the Complaint was filed and the Respondent urges that the disputed domain name is being used for a noncommercial networking site (“cafe”) that allows and encourages members – users of LEGO products - to participate in online and offline activities. This statement, if made in good faith and supported by the case record, is essentially tantamount to the argument that the disputed domain name is being used for something akin to a “fan site.” Some panelists in WIPO decisions have held that a respondent whose domain name is for a clearly noncommercial fan site, for followers of the complainant, has a right or legitimate interest in such domain name. But different views also exist. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ¶ 2.5.
The Panel has serious doubts that the Respondent’s revised website indicates a truly (a) legitimate, (b) noncommercial use of the disputed domain name. The content of the website associated with the disputed domain name was changed after the Complaint was filed (on July 4, 2011), yet the purported networking site (“cafe”) that now appears indicates that it has been in operation since 2005. In addition, the Panel is unconvinced that a site that claims over 50,000 members would receive no commercial benefit from the use of the domain name, either from advertising revenue or other sources.
The Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The second element is present. C. Registered and Used in Bad Faith
The Complainant must also show that the disputed domain name “has been registered and is being used in bad faith,” as set forth in paragraph 4(a)(iii) of the Policy. Paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of bad faith in the registration and use of a domain name. Here, the Respondent has used the disputed domain name to divert Internet users to a site for AUDI cars, and later, after the Complaint was filed to a site featuring LEGO products, in the matter described herein. In doing so, it is the Panel’s view that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website . . ., by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the Respondent’s website, under paragraph 4(b)(iv) of the Policy.
The third element is established.
The Panel notes that the conclusions regarding the three requisite elements in paragraph 4(a) and the ultimate decision herein are consistent with Panelist Young Kim’s decision in Zippo Manufacturing Company & Zippmark, Inc. v. Kim Yong Chul,WIPO Case No. D2002-0397, where the Korean respondent urged that the domain name was used for a fan site, for the products of the complainant, based in the United States. There too, the panelist rejected the respondent’s arguments, and transferred the domain name to the complainant. 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 be transferred to the Complainant.
Ilhyung Lee
Sole Panelist
Dated: August 26, 2011
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