The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Park HyungJin of Gimhae-si, Gyeongsangnam-do, Republic of Korea. 2. The Domain Name And Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2012. On February 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 16, 2012, 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.
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 February 16, 2012, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On February 20, 2012, the Complainant confirmed its request in the Complaint that English be the language of the proceeding. The Respondent did not submit any request for the language of the proceeding.
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 proceedings commenced on February 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2012.
The Center appointed Jung Wook Cho as the sole panelist in this matter on April 2, 2012. 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 a company domiciled in Billund, Denmark and is the owner of the trademark LEGO and several other trademarks used in connection with the LEGO brands. The Complainant and its licensees, through their predecessors, commenced use of the LEGO trademark in the United States of America during 1953, to identify construction toys made and sold by them. Furthermore, the Complainant is the owner of more than 1,700 domain names containing the term “lego”.
The Respondent is the registered owner of the Disputed Domain Name . According to the Registrar’s verification response, the Disputed Domain Name was created on June 5, 2011. The Disputed Domain Name is currently connected to a website (“Respondent’s Website”) that displays a logo containing the Complainant’s trademark LEGO and the gTLD suffix “club”. The Respondent’s Website contains sponsored links to various web pages for commercial third parties. The Respondent’s Website also contains recommended links, many of which contain the Complainant’s trademark LEGO. These recommended links are connected to web pages similar in appearance to the Respondent’s Website but now containing sponsored links to online shops selling LEGO branded products of the Complainant.
In an email communication dated December 9, 2011, the Complainant requested the Respondent to voluntarily transfer the Disputed Domain Name to the Complainant and offered compensation for the expenses of registration and transfer fees. In his email communication dated December 13, 2011, the Respondent stated that he was looking for an agreement. On the same day, the Complainant in its email communication instructed the Respondent on how to transfer the Disputed Domain Name, with which the Respondent did not comply despite the Complainant’s several reminders afterwards. Instead, the Respondent, in his email dated February 8, 2012, reiterated that he was looking for an agreement. On the next day, the Complainant sent an email communication to the Respondent, again requesting transfer of the Disputed Domain Name and confirming that it would not reimburse any amount exceeding the registration cost. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark because the Disputed Domain Name contains the word “lego”. In the eyes of the Complainant, the addition of the generic term, “club” to “lego” does not have any impact on the perception of identity or confusing similarity since the trademark LEGO as the dominant part of the Disputed Domain Name is instantly recognizable. Therefore, the Complainant is of the opinion that an Internet user is bound to mistake the Respondent’s Website as relating to the Complainant.
Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant adduces that the Respondent has no license or authorization of any other kind that would allow it to use the trademark LEGO. Due to the fame of the trademark, it is very unlikely that the Respondent was unaware of the Complainant’s legal rights in the trademark LEGO at the time of the registration of the Disputed Domain Name.
Finally, the Complainant contends that the Respondent registered and uses the Disputed Domain Name in bad faith. By referring to the fame of the trademark LEGO and the communications due to which the Complainant amicably requested the transfer of the Disputed Domain Name, the Complainant argues that the Respondent knew of the Complainant’s rights in the trademark LEGO. Furthermore, the Complainant argues that the links to the various commercial web pages on the Respondent’s Website have the purpose of generating revenue through redirecting the Internet user to the respective commercial web page. B. Respondent
The Respondent did not reply to the Complainant’s contentions. Accordingly, and based on paragraph 14(b) of the Rules, the Panel shall draw such inferences from this default of the Respondent as it considers appropriate. 6. Discussion and Findings 6.1 Language of the Proceedings
In accordance with paragraph 11(a) of the Rules, the Panel has the authority to determine a different language other than the one in the registration agreement, having regard to the circumstances of the administrative proceeding. 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 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.
In this case, the language of the Registration Agreement is Korean, and both the Respondent and the Registrar are located in Republic of Korea. However, when the Complainant sent the cease and desist letter in English, the Respondent replied in English. Also, all subsequent communications between the Complainant and the Respondent were conducted in English, and the Respondent did not request that the dialogue be held in any other language. This implies that the Respondent understood the communications with the Complainant in relation to the Disputed Domain Name.
Furthermore, the Complainant in its Complaint formally requested that the language of the proceeding be English, to which the Respondent failed to comment on or object despite the Center’s invitation to do so. In light of above circumstances, and considering the expenses to be incurred and possibility of delay in the proceeding in the event translations are required, the Panel hereby determines under paragraph 11(a) of the Rules that the appropriate language of the proceeding is English. 6.2 Analysis of the Complaint
According to paragraph 4(a) of the Policy, the Complainant must prove 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. A. Identical or Confusingly Similar
The visual analysis of the Disputed Domain Name reveals that Disputed Domain Name encompasses the Complainant’s trademark LEGO in its entirety as well as the additional generic term “club”. Previous UDRP panels have held that identity or confusing similarity is sufficiently established if “a domain name wholly incorporates a complainant’s registered mark” (see Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302 and Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488 with further references). The Panel follows this finding. The Panel is also of the view that that the Complainant’s trademark LEGO forms the dominant part of the Disputed Domain Name. It is therefore probable that Internet users with the intention to find one of the almost 2,400 websites registered by the Complainant which contain the term “lego” are misled into thinking that the Complainant is the registrant of the Disputed Domain Name or otherwise associated therewith.
Furthermore, as the Complainant has demonstrated that it has a fan club named “LEGO Club” with its own homepage, the Panel is of the view that said term rather solidifies the impression that the Disputed Domain Name belongs to, or is affiliated with the Complainant.
Therefore, the Panel has no difficulty in finding that the prerequisite of identity or confusing similarity as a first criterion, as per paragraph 4(a)(i) of the Policy, is established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy illustrates the circumstances which, if proved, establish a respondent’s rights or legitimate interests in a domain name.
A respondent does not have rights or legitimate interests in expressing its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name if the respondent is intentionally misrepresenting itself as being (or as in some way associated with) that individual or entity, or seeks to derive commercial advantage from its registration and use.
Here, the Respondent failed to establish that he has been authorized to use the trademark LEGO. Furthermore, the Respondent is neither commonly known by the Disputed Domain Name nor presents arguments why he shall have the right or a legitimate interest in the Disputed Domain Name.
In addition, the Respondent does not use and has not made 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. Here, the only relevant contents of the Respondent’s Website are lists of “Sponsored Listings” and “Related Searches” based on the respective IP address of the Internet user that diverts the Internet traffic to web pages related to toys, online games and medical service, among others. Such conduct serves the purpose of generating revenues, e.g., from the advertised pay-per-click products.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Regarding the registration and the use of the Disputed Domain Name in bad faith according to paragraph 4(a)(iii) of the Policy, the Panel considers the following.
LEGO is a world-famous trademark benefitting from a high degree of reputation (see LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840 and LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680). Therefore, it is not likely that the Respondent did not know of the Complainant’s trademark LEGO at the time of the registration of the Disputed Domain Name. After the registration, the Complainant informed the Respondent several times by email and letter that the Disputed Domain Name be transferred to the Complainant. Accordingly, the Panel draws the conclusion that the Respondent knew of the Complainant, its products and its trademarks prior to and after the registration of the Disputed Domain Name, and that the Respondent registered the Disputed Domain Name in bad faith (see Dr. Ing. h.c. F. Porsche AG, supra, where the respective UDRP panel comes to the same conclusion).
The Complainant contends that the Respondent uses the Disputed Domain Name in bad faith because, as suggested by paragraph 4(b)(iv) of the Policy, the Respondent “derives income once a visitor clicks on the link and is redirected to online shopping sites”. By exploiting the fame of the Complainant’s trademark LEGO, the Respondent attempts to attract Internet users with the intention to find the Complainant’s website. Since the Disputed Domain Name leads to a website that merely contains a list of links, the Panel draws the conclusion that the Respondent’s Website has the purpose of generating traffic to other web pages in order to generate income. Furthermore, as already mentioned, the Respondent did not file any Response to the Complaint, failing thereby to demonstrate his good faith in the use of the Disputed Domain Name. Accordingly, the Panel holds that the Respondent uses the Disputed Domain Name in bad faith.
As a result, paragraph 4(a)(iii) of the Policy is satisfied.
In view of the above and for the foregoing reasons, and in consideration of the Complainant’s compliance with the formal requirements for this domain name dispute proceeding, of the Respondent’s default in submitting a response, of the factual evidence and legal contentions that were submitted, of the confirmation of the presence of each of the elements contemplated in paragraphs 4(a)(i), (ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, it is found that:
(1) the Disputed Domain Name is confusingly similar to the Complainant’s trademark; and
(2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) the Disputed Domain Name has been registered and is being used in bad faith by the Respondent. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides that the Disputed Domain Name shall be transferred to the Complainant.
Jung Wook Cho
Sole Panelist
Dated: April 16, 2012
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