The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Linecom of Gyeongju-si, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Gabia, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2012. On September 7, 2012, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2012, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On September 13, 2012, the Center notified the parties – in both English and Korean – that the language of the Registration Agreement in this case is Korean. Furthermore, the Center instructed the Complainant to provide by September 16, 2012:
“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 informed, that “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 September 18, 2012.”
The Center also advised the following:
“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.
Please note that if we do not hear from you by this date, we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”
On September 13, 2012, the Complainant’s authorized representative replied to the Center indicating that it had already filed a request for English to be language of the proceeding (in its Complaint) and that it had nothing further to add. The Respondent did not provide any response to the Center’s transmission.
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, again in both English and Korean, the Respondent of the Complaint, and the proceedings commenced on September 27, 2012. Regarding the language of the proceeding, the Center stated:
“The Complainant has submitted a request that English be the language of the proceedings, to which the Respondent has not replied.
Given the provided submissions and circumstances of this case, the Center has decided to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Korean;
3) appoint a Panel familiar with both languages mentioned above, if available.
In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. Having provided both parties with an opportunity to comment, any subsequent communications received by the Center from the parties regarding the language issue will be a matter for consideration at the discretion of the Panel (on appointment). . . .”
In accordance with the Rules, paragraph 5(a), the due date for the Response was October 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default in both English and Korean on October 18, 2012.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on November 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.
As explained herein, English is the language of this proceeding. 4. Factual Background
The Complainant produces and sells construction toys. It has used the LEGO mark for decades, and received trademark registration in various countries. The Complainant has also registered a large number of domain names containing the LEGO term.
The disputed domain name was registered on April 14, 2012. 5. Parties’ Contentions A. Complainant
The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; (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. In addition, the Complainant states that LEGO is a “famous mark,” indeed, “[a]mong the best-known trademarks in the world,” and refers to a report of a survey in which LEGO “came in as the eighth most powerful brand in a list of 1,400,” and “the top toy brand.” The Complainant urges that it did not give any license or authorization to the Respondent to use the LEGO mark. “The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. 6. Discussion and Findings
The Panel must initially address the language of the proceeding. Although paragraph 11(a) of the Rules provides that the language of the administrative proceeding is the language of the Registration Agreement, unless otherwise agreed by the parties, the rule also states that the determination of the language is “subject to the authority of the Panel . . ., having regard to the circumstances of the administrative proceeding.” Here, Korean is the language of the Registration Agreement. Nevertheless, the Complainant requests that English be the language of the proceeding. The Panel agrees.
After receiving the Complaint submitted in English, the Center notified the parties, in both Korean and English, of the Center's procedural rules regarding the language of the proceeding. The Center informed the Respondent that it may object timely to a proceeding in English. The Respondent did not respond to the Center’s notification, and then defaulted. With the Respondent declining to take part, and only the Complainant remaining, the Panel determines that English will be the language of the proceeding.
Turning 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 Panel determines that the disputed domain name is confusingly similar to a mark in which the Complainant has rights (LEGO). This position is in line with a series of UDRP decisions in which the panel concluded that LEGO is the predominant portion of the domain name, and that the addition and attachment of a generic term to the mark does not defeat confusing similarity. See, e.g., LEGO Juris A/S v. softwareegypt,WIPO Case No. D2012-1238 (); LEGO Juris A/S v. NyunHwa Jung,WIPO Case No. D2012-1233 (); LEGO Juris A/S v. Guo Rong,WIPO Case No. D2012-0953 ().
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 has defaulted. The Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is established. C. Registered and Used in Bad Faith
The Respondent has declined to participate in this proceeding. Paragraph 14(b) of the Rules permits the Panel to draw appropriate inferences from the Respondent’s default.
LEGO is a distinctive mark that is known worldwide, including Korea. The Panel determines that in registering the disputed domain name, the Respondent knowingly selected the Complainant’s mark LEGO and attached to it the generic term “trains.” (Toy trains are one of many things that LEGO products can be used to construct). The website that appears when Internet users resort to the disputed domain name includes text that identifies the Respondent, indicates that the site is under construction, and states, “This Domain is for Sale” and “you can buy the domain showing this webpage if your price is ok.” It therefore appears to the Panel that the Respondent registered and used the disputed domain name in order to sell it to the Complainant or its representative, for a price. The Panel doubts that the Respondent intended to sell the disputed domain name merely for “out-of-pocket costs directly related to the domain name.” (Paragraph 4(b)(i) of Policy.)
In the Panel’s view, consideration of the totality of the circumstances indicates the Respondent’s bad faith.
The third requisite element under paragraph 4(a) of the Policy is demonstrated. 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
Date: November 16, 2012
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