WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. NyunHwa Jung
Case No. D2012-1233
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is NyunHwa Jung of WooBang Town, KyungJu, KyungBuk, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <legopark.com> is registered with pair Networks, Inc. d/b/a pairNIC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2012. On June 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 25, 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 June 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2012.
The Center appointed Isabelle Leroux as the sole panelist in this matter on July 19, 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 construction toys designer and manufacturer, making and selling LEGO branded toys all over the world. The LEGO branded products are sold in more than 130 countries, including in the Republic of Korea.
The Complainant is the owner of the well-known trademark LEGO, registered in thousands of countries worldwide and used to identify construction toys.
The Complainant notably owns a Korean trademark on the name “Lego”, registered in 1980 under number 66.677 covering products of class 28.
The Complainant also owns more than 2400 domain names containing the word “Lego”, including a domain name with a ccTLD suffix corresponding to the Republic of Korea, i.e. the domain name <lego.co.kr>.
The Respondent is based in Korea. The disputed domain name <legopark.com> was created on April 8, 2012.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the LEGO mark in which the Complainant has rights.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant submits that the Respondent was not granted any right to use the name “Lego”. The Complainant also contends that the Respondent could not claim any rights established by common usage, having no trademark or trade name corresponding to the disputed domain name.
The Complainant also submits that the Respondent registered the disputed domain name in bad faith, as the trademark LEGO is a worldwide famous trademark, which means that the Respondent knew, or should have known the existence of the Complainant’s rights.
The fact that the Respondent did not even answer to the cease and desist letters sent by the Complainant requesting the transfer of the disputed domain name is another factor analyzed by the Complainant as evidence of the Respondent’s bad faith.
In addition, the Complainant contends that the Respondent is not offering a bone fide offering of goods or services with the disputed domain name, which is directed to a website which says at the same time that it is under construction and that the disputed domain name is for sale and that they are looking for investors in developing their new website available at “www.noori.net”, which is actually a fully developed commercial website, which is a one stop shop for various products. This use of the disputed domain name to attract Internet users to the Respondent’s website in order to generate pay-per-click revenues evidences the Respondent’s registration and use in bad faith.
Finally, the Respondent has already been involved in several UDRP cases, including one concerning the trademark LEGO, reproduced in the domain name <legominifigures.com>, which means that the Respondent was aware of the Complainant’s prior trademarks at the time of the registration of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4 of the Policy, the Complainants must prove each of the following three elements to obtain an order that the disputed domain name be transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark to which it 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.
Paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The Complainant demonstrates that it has rights in many LEGO trademarks and domain names, including Korean trademarks and domain names with a ccTLD suffix corresponding to the Republic of Korea.
As to whether the disputed domain name is identical or confusingly similar to the Complainant’s trademarks, the relevant comparison to be made is with the second-level part of the disputed domain name only “legopark”, as it is well-established that the gTLD suffix (i.e., “.com”) should be disregarded for this purpose.
The disputed domain name comprises the LEGO trademarks, and only differs from the Complainant’s trademarks by the addition of the generic English word “park”.
The Panel finds that this does not eliminate the confusing similarity between the Complainant’s registered trademarks LEGO and the disputed domain name <legopark.com>.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.
The addition of the descriptive term “park” as a suffix to the Complainant’s trademark does not dismiss the likelihood of confusion. It is stated in numerous previous UDRP decisions that confusing similarity is established when well-known trademarks are paired up with different generic terms as prefixes or suffixes.
Moreover, the use in the disputed domain name of the term “park” associated with the Complainant’s prior trademark LEGO could lead the consumer to believe that there is a link between the Respondent and the Complainant’s LEGO theme parks such as “Legoland”.
Therefore, the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
A respondent may have rights or legitimate interests under the Policy in the circumstances set out in paragraph 4(c) of the Policy. The circumstances set out in paragraph 4(c) of the Policy are examples only, however, and are not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown.
While paragraph 4(c) of the Policy states that these are circumstances where a respondent may show rights or legitimate interests, the overall burden of establishing this requirement falls on the complainant. Nonetheless, in view of the difficulty inherent in proving a negative and because the relevant information is often in the possession of the respondent only, it will be sufficient for the complainant to establish a prima facie case which, if not rebutted, will lead to this ground being established: see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Complainant alleges that the Respondent has no registered trademarks or trade names corresponding to the disputed domain name and the Complainant had never given the Respondent any license or permission to use the trademark LEGO.
In the present case, the Panel considers that in the absence of any license or permission from the Complainant to use the Complainant’s well-known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed by the Respondent.
In addition, there is no evidence presented to the Panel that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services at present. Indeed the evidence provided by the Complainant shows that the disputed domain name is used to attract Internet users to the Respondent’s website in order to generate pay-per-click advertising revenues.
Finally, the Respondent did not even answer to the Complainant’s letters trying to solve amicably this matter.
The Panel therefore finds that the Complainant has met the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant persuasively argues that the Respondent has registered and used the disputed domain name <legopark.com> in bad faith.
The Panel is persuaded that the Respondent knew the Complainant’s trademarks, which are famous worldwide, when the Respondent registered the disputed domain name.
Moreover, the Respondent has already been involved in numerous domain names disputes under the UDRP, including a case concerning a domain name already containing the Complainant’s trademark LEGO. The Respondent was therefore fully aware of the prior rights of the Complainant and of the fact that the registration of the disputed domain name was abusive.
The Panel therefore finds that the disputed domain name was registered in bad faith.
According to paragraph 4(b)(iv) of the Policy, bad faith is established if it is evidenced that the disputed domain name is used to intentionally attempt to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or a product or service on the registrant’s website or location.
In the present case, the disputed domain name is for sale and promotes a website “www.noori.net” which is an online shopping site, where unrelated Lego products are sold. This use of the disputed domain name is made to attract Internet users to the Respondent’s website in order to generate pay-per-click advertising revenues. This use of a confusingly similar domain name and the resulting confusion will inevitably give rise to diversion of Internet traffic from the Complainants’ site to the Respondent’s commercial website. The Panel infers that the Respondent takes advantage of the Complainants’ popularity by redirecting traffic from Internet users looking for the Complainant and benefits from this confusion and diversion by receiving “click-through” commissions.
Accordingly, the Panel finds that the disputed domain name is used in bad faith and that the Complainant has met the requirement of paragraph 4(a)(iii) of the Policy.
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 <legopark.com> be transferred to the Complainant.
Date: August 7, 2012