The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Yoon Chang-Keun of Chuncheon, Republic of Korea. 2. The Domain Names and Registrars
The disputed domain names , , and are registered with Inames Co., Ltd. The disputed domain names and are registered with Gabia, Inc. Inames Co., Ltd. and Gabia, Inc. are together referred to as the "Registrars." 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 28, 2015. On July 29, 2015, the Center transmitted to the Registrars a request for registrar verification in connection with the disputed domain names. On July 30, 2015, the Registrars transmitted to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
On July 30, 2015, the Center transmitted to the parties, in both English and Korean, a Language of Proceedings notification, which informed that the Complaint was submitted in English, and that according to the Registrars, the language of the Registration Agreements for the disputed domain names was Korean. In the same transmission, the Center instructed the Complainant to provide, by August 2, 2015:
"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 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 August 4, 2015". The Center also advised 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.
Please note that if we do not hear from you by [August 4, 2015], we will proceed on the basis that you have no objection to the Complainant's request that English be the language of proceedings."
On July 30, 2015, the Complainant responded to the Center's notification, requesting that English be the language of the proceeding and referring to the supporting arguments in the Complaint.
On August 10, 2015, the Respondent replied to the Complainant's message of July 30, 2015, copied to the Center. The body of the Respondent's message states in full:
"How are you doing?
We came back from Summer Holiday.
As I told you before, I cannot understand what you want.
I cannot understand the [E]nglish contents of yours exactly.
I cannot understand the Korean also, as I don'[t] know about the law.
I am asking you that please do not disturb me from now on with these domain matter.
I am very busy to so my own work. As I told you before these domain is belong to me. So what do you want from me?
Have a nice day.
If any disturb me, I cannot make time to wright [sic] to you.
Bye."
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, in both English and Korean, and the proceeding commenced on August 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 30, 2015. 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 response, on August 10, 2015, the Respondent transmitted a message to the Center, in Korean, in part inquiring about what the Complainant desires and how the Respondent should proceed. On the same date, the Center, in both Korean and English, acknowledged receipt, and reminded the Respondent of the due date for the Response. Later on the same date, the Respondent sent another message to the Center, stating in part that the Complainant is attempting to take away the Respondent's property rights, and again asking how the Respondent should proceed. Again, the Center acknowledged receipt, in Korean and English, referring the Respondent to its rights and obligations under the Policy, and reminding the Respondent of the Response due date.
The Respondent did not submit a formal Response.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on September 9, 2015. 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 makes and sells construction toys using its LEGO mark, and operates theme parks under its LEGOLAND mark. The Complainant has obtained numerous registrations for LEGO and LEGOLAND in several countries, including Denmark, Japan, and the United States of America. According to documents submitted by the Complainant, in the Republic of Korea, the Complainant registered the LEGO mark on January 21, 1980, and LEGOLAND on July 31, 1980.
The Respondent registered the following disputed domain names (on the dates indicated): (October 30, 2013), (August 30, 2011), (March 11, 2015), (March 11, 2015), and (November 19, 2013). 5. Parties' Contentions A. Complainant
The Complainant contends principally that: (i) the disputed domain names are identical or confusingly similar to marks in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. In addition, the Complaint states, inter alia, that "no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO or LEGOLAND." B. Respondent
As noted above, although the Respondent transmitted messages to the Center, the Respondent did not submit a formal Response. Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. Pursuant to paragraph 14(b), the Panel may draw appropriate inferences from the Respondent's failure to submit a formal Response. 6. Discussion and Findings A. Preliminary Matter: Language of Proceedings
Under paragraph 11(a) of the Rules, unless otherwise agreed by the parties, the language of the registration agreement is the language of the administrative proceeding, "subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding." Here, the language of the Registration Agreement is Korean. Nevertheless, the Complainant requests that the language of the proceeding be English.
After receiving the Complaint submitted in English, the Center sent a notice to the parties, in both Korean and English, regarding the language of the proceeding. After the Complainant requested that English be the language of the proceeding, the Respondent replied six days after the deadline given by the Center, stating in part, "I cannot understand the [E]nglish contents of yours exactly. I cannot understand the Korean also, as I don'[t] know about the law." The Center then informed the parties, again in Korean and English, of the commencement of the proceeding, with the due date for the Response. The Respondent was specifically informed that the Center will accept a Response in English or Korean. The Respondent sent informal communications to the Center in Korean. In acknowledgment, the Center instructed the Respondent to submit its arguments and evidence in a Response, and reminded the Respondent of the due date for the Response. The Respondent failed to submit a Response. The Panel has taken into consideration all of the submissions that the Respondent has made, in both languages.
Under the circumstances, the Panel determines that English is 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. B. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in its marks LEGO and LEGOLAND. The Panel determines that each disputed domain name – , , , , – is identical or confusingly similar to the Complainant's marks. The widely recognized LEGO and LEGOLAND marks have a predominant presence in the disputed domain names. The addition of a geographic location or the letters "cc" does not defeat confusing similarity. The generic Top-Level Domain (here, ".com" or ".xyz") is generally disregarded for the purpose of comparison under the first element.
The first element of paragraph 4(a) is satisfied. C. 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 names. The burden thus shifts to the Respondent to demonstrate any such rights or legitimate interests. Other than the Respondent's bald assertion that it has a property right in the disputed domain names, the Respondent has not offered any information in this regard. The Panel is unable to ascertain any evidence that would indicate rights or legitimate interests that the Respondent has in the disputed domain names, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is also demonstrated. D. Registered and Used in Bad Faith
It appears to the Panel that the Respondent registered the disputed domain names with the Complainant in mind, in an effort to capitalize on the Complainant's widely-known marks, LEGO and LEGOLAND. If there is any evidence to the contrary, the Respondent had ample opportunity to submit it, but failed to do so.
As of this decision, none of the disputed domain names resolve to an active website. Nevertheless, "the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name[s] without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview 2.0"), paragraph 3.2. As stated in the WIPO Overview 2.0, paragraph 3.2, "Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity." The Panel determines that the Complainant's LEGO and LEGOLAND marks are internationally well-known; the Respondent failed to submit a Response after proper notice and multiple reminders. Under the circumstances, the Panel cannot conceive of any good faith use the Respondent could make with respect to the disputed domain names.
The third element, relating to bad faith registration and use of the disputed domain names, is present. 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 names , , , , and be transferred to the Complainant.
Ilhyung Lee
Sole Panelist
Date: September 21, 2015
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