The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Dugilcommerce of Siheung-si, Republic of Korea (“Korea”). 2. The Domain Name and Registrar
The disputed domain name is registered with Inames Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2012. On October 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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. On October 9, 2012, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On the same date, the Complainant sent an email requesting English to be the language of the proceedings. The Respondent did not submit any reply related to the language of the proceedings. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 16, 2012.
The Center verified that the Complaint together with the amendment to 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 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2012.
On October 16, 2012, the Center received an email communication from the Respondent, indicating its willingness to give up the disputed domain name. The Complainant filed a request for suspension of the proceedings on October 19, 2012, and on the same date, the Center confirmed that the proceedings would be suspended until November 18, 2012 to explore a possible settlement between the parties. Upon request by the Complainant of November 17, 2012, the proceedings were reinstituted on November 19, 2012, and the date for Response was extended to December 5, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 6, 2012.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on December 13, 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, based in Denmark, is the owner of LEGO and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products.
The Complainant has subsidiaries and branches throughout the world, and its licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in Korea, where the Respondent is domiciled, and elsewhere.
LEGO Korea was established as early as 1984.
The Complainant is also the owner of more than 1,000 domain names containing the term “lego”.
The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. 5. Parties’ Contentions A. Complainant
The dominant part of the disputed domain name comprises the word “lego”, which is identical to the Complainant’s registered trademark LEGO.
The fame of the LEGO trademark has been confirmed in numerous pervious UDRP decisions.
The addition of the generic Top-Level Domain (gTLD) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity or identity between the trademark and the disputed domain name.
By using the LEGO trademark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark.
No license or authorization of any other kind has been given by the Complainant to the Respondent. The Complainant has also not found anything that would suggest that the Respondent has been using the name “Lego” in any other way that would give it any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by common usage.
It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name “Lego” at the time of the registration.
The Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services, but rather to generate traffic and income through an online shop of products produced by the Complainant and other unrelated products and to misleadingly divert consumers for its own commercial gain. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings
The Complaint was filed in the English language. It is noted that the language of the Registration Agreement for the disputed domain name is Korean.
According to paragraph 11 of the Rules, the language of the administrative proceedings shall be the language of the registration agreement unless the panel decides otherwise. 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 lane, the expenses to be incurred and the possibility of delay in the proceedings in the event translations are required and other relevant factors.
In the present case, it is noteworthy that the Center in preliminarily deciding to proceed with the acceptance of the Complaint in English nevertheless communicated with the parties in both English and Korean, indicated that it would accept a Response in either English or Korean, and that it would appoint a panelist familiar with both English and Korean. The Respondent did not submit any Response.
In addition, the Complainant does not appear to be able to communicate in Korean, and therefore, if the Complainant was required to have the documents submitted translated into Korean, the administrative proceedings would be unduly delayed, and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of the proceedings in this case. See Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679. B. Substantive Elements of the Policy
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark or service mark;
(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.
The fact that the Respondent has not formally provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint.” Under paragraph 14(a) of the Rules, in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint,” and under paragraph 14(b), the Panel shall “draw such inferences therefrom as it considers appropriate.” Consequently, the Panel must proceed with an assessment of the Complaint on its merits. C. Identical or Confusingly Similar
The trademark LEGO of the Complainant has been registered in various jurisdictions around the world including in Korea (see Annex 6 of the Complaint). The suffix “zon”, added to the disputed domain name, appears to be a deliberate misspelling of the word “zone” in view of the Respondent’s use of the word in the main logo of the website (see Annex 11 of the Complaint), the Korean pronunciation of the word, and the Respondent’s use of the website as an online shop of products produced by the Complainant and other similar products. Such addition of a generic term to the disputed domain name has little, if any, effect on a determination of confusing similarity or identity between the disputed domain name and the mark. See Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253; furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion. See PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189. Numerous WIPO UDRP decisions have recognized that adding a generic word is insufficient to give any distinctiveness to the domain name in dispute. See PepsiCo, Inc. v. Kieran McGarry,WIPO Case No. D2005-0629.
The disputed domain name wholly incorporates the Complainant’s distinctive trademark and in the Panel’s view creates sufficient similarity to be seemed identical to or confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i). D. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of proof, several UDRP decisions have held that “once a complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production of this factor shifts to the Respondent to rebut the showing” (see, among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; see also International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the disputed domain name; the Panel further notes that the Respondent has not, and has never been, commonly known by the disputed domain name. The Panel’s view is that these facts must be taken as proven provided that they have not been denied by the Respondent.
The Respondent has not submitted a proper response. Therefore, it has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in respect of the disputed domain name under paragraph 4(c) of the Policy.
Accordingly the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to the Policy, paragraph 4(a)(ii) of the Policy. E. Registered and Used in Bad Faith
Both under past UDRP decisions (see, for instance, Nike, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806) and under the Policy (see paragraph 2), a well-established principle is that when someone registers a domain name, he or she represents and warrants to the registrar that, to his or her knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s trademarks are well-known worldwide, it is very likely that the Respondent, at the time of registration of the disputed domain name or thereafter, was aware that it was infringing the Complainant’s trademarks.
Under the UDRP, bad faith registration can in certain circumstances be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices in various jurisdictions would have made the Complainant’s registration known to the Respondent.
In addition, according to paragraph 4(b)(iv) of the Policy, the following circumstance shall be evidence of bad faith registration and use: using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or a product or service on the registrant’s website or location.
The Complainant provided evidence showing that the Respondent’s website did not merely contain products of the Complainant but also items that resemble products sold by the Complainant. In the Panel’s opinion, this constitutes an improper use of the Complainant’s mark by the Respondent who appears to have registered the confusingly similar domain name with the intention of taking advantage of the well-known status of the goodwill and fame established by the Complainant in the trademark for commercial gain. See Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774. The Panel finds that such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the policy.
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes on the record before it that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii) of the Policy. 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.
Thomas P. Pinansky
Sole Panelist
Dated: December 21, 2012
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