The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Beats of Daegu, Republic of Korea, self-represented. 2. The Domain Name and Registrar
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 January 3, 2019. On January 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2019, 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 January 9, 2019, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On the same day, the Complainant requested that English be the language of the proceeding. On January 10, 2019, the Respondent requested that Korean be the language of the proceeding.
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 and 4, the Center formally notified the Respondent in English and Korean of the Complaint, and the proceedings commenced on January 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2019. The Respondent did not submit any formal response. On February 1, 2019, the Center notified the Parties that it would proceed to panel appointment.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on February 11, 2019. 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 following factual information is derived from the Complaint and supporting materials submitted by the Complainant:
The Complainant LEGO Juris A/S 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 (e.g., Danish Registration No. VR 1954 00604, registered on May 1, 1954). The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the Republic of Korea. Moreover, the Complainant is the owner of over to 5,000 domain names containing the term LEGO. It is the strict policy of the Complainant that all domain names containing the term LEGO should be owned by the Complainant. The LEGO Group also maintains an extensive website under the domain name . The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the Republic of Korea and elsewhere.
The disputed domain name was registered on December 23, 2015, and resolved to a website offering pay-per-click (“PPC”) links and stating that the disputed domain name may be for sale. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
It further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because i) the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks; ii) there is no evidence of the Respondent’s use of, or demonstrable 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; iii) there is no evidence which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or is commonly known by the disputed domain name or the name “Lego”.
The Complainant also contends that the Respondent registered and is using the disputed domain name in bad faith because the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on its website or location. The Complainant argues that the Respondent must have been aware of the Complainant’s trademark when it registered the disputed domain name, and the registration must have been targeted at the Complainant’s trademark LEGO. B. Respondent
The Respondent submitted a request for Korean to be the language of the proceeding but did not submit a formal Response. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules provides, “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”. The Registrar confirmed that the language of the registration agreement for the disputed domain name is Korean. However, notwithstanding the actual language of the registration agreement, the Complainant requested that English be the language of the proceeding. Accordingly, the Complainant was requested 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, which includes arguments and supporting material (to the extent not already provided in the Complaint) as to why the proceedings should be conducted in English, noting among others that, the disputed domain name is composed of Latin characters and that the website at the disputed domain name includes links to third party websites in English.
The Respondent requested Korean to be the language of the proceeding mainly because his English is basic, translating with a software is time consuming and due to the context and persuasiveness.
The Panel notes that the Complainant is unable to communicate in Korean and having to arrange and pay for the translation may unduly burden the Complainant and unnecessarily delay the proceedings. The Panel also notes the Complainant’s contentions and the nature of the disputed domain name including the English word “love”. Given that the Respondent has been notified of this proceeding in both languages, the Panel considers that the Respondent had ample opportunities to respond to the Complainant and the Center, it could have responded even in Korean, but failed to do so, allowing the Respondent to dictate the course of the proceedings in view of the circumstances would unfairly prejudice the Complainant.
In these circumstances, the Panel finds that English will be the language of the proceeding. B. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant’s trademark LEGO in its entirety. In cases where a domain name incorporates the entirety of a trademark, it is the view of UDRP panels that the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also, Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615, “When a domain name wholly incorporates a complainant’s registered mark, which is sufficient to establish confusing similarity for purposes of the Policy”. Moreover, the generic Top-Level Domain, such as “.com”, is normally disregarded during the first element confusing similarity test. See section 1.11 of WIPO Overview 3.0. Therefore, the confusing similarity is given where a trademark is recognizable as such within the domain name.
In this case, in the disputed domain name, suffix “love” is attached to the Complainant’s trademark LEGO. However, given that the term “love” is a merely descriptive term, it does not eliminate the similarity between the Complainant’s trademark and the disputed domain name. See section 1.8 of WIPO Overview 3.0; see also, JanSport Apparel Corp v. Feng Qi,WIPO Case No. D2017-1486 (“the mere addition of the descriptive terms to the Complainant’s EASTPAK registered trademark does not eliminate the confusing similarity between the Complainant’s registered trademark EASTPAK and the disputed domain names”). Moreover, it is highly likely that the Internet users will clearly recognize the LEGO marks and come to the conclusion that the Respondent’s website is connected with the Complainant.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. C. Rights or Legitimate Interests
Section 2.1 of WIPO Overview 3.0 provides that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
After reviewing the assertions made in the Complaint and the supporting materials thereto, it appears that the Complainant never gave the right to use its trademark to the Respondent. No license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO. The Panel thus finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name which wholly incorporates the Complainant’s mark. F. Hoffmann-La Roche AG v. Fred,WIPO Case No. D2006-0246.
Furthermore, the Panel agrees that there is no evidence of the Respondent’s use of, or demonstrable 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. In addition, it is clear that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. In fact, the domain name was offered for sale and had numerous sponsored ads selling unauthorized LEGO merchandise. It is also clear that the Respondent is not commonly known by the disputed domain name or the name “Lego”.
Thus, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
By failing to respond to the Complainant’s position, the Respondent failed to prove any of the circumstances provided in paragraph 4(c) of the Policy.
In light of the above analysis, along with the inferences available to be made in case of the absence of a timely response by the Respondent, the Panel finds that the Respondent lacks any rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides that bad faith is found when there are circumstances indicating that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
It is generally accepted under the Policy that, for a bad faith registration, (i) the Respondent must have been aware of the Complainant or its trademarks when it registered the disputed domain Name, and (ii) the registration must in some way have been targeted at the Complainant or its trademark, for example by seeking to capitalize on it. See The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743 and Mediaset S.p.A. v. Didier Madiba, Fenicius LLC,WIPO Case No. D2011-1954.
Given that LEGO is a famous trademark worldwide, it is highly likely the Respondent was aware of the rights the Complainant has in the trademark, and the value of said trademark, at the point of the registration. The fact that the website offered the disputed domain name for a sale and had numerous sponsored ads linked to websites selling unauthorized LEGO merchandise is a clear indication of the Respondent’s prior knowledge and therefore its bad faith.
Thus, the Panel finds that the Respondent registered and used the disputed domain name in bad faith. 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
Date: March 4, 2019
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