WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Dios Oft
Case No. D2014-0726
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Dios Oft of Ansan, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <banklego.com> is registered with Dotname Korea Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2014. On May 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Thereafter, the Center sent numerous reminders to the Registrar. On June 6, 11 and 12, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.
On June 12, 2014, 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 day, the Complainant requested for English to be the language of the proceeding. On June 16, 2014, the Respondent requested Korean to be the language of the proceeding as well as provided arguments to the Complainant’s contentions.
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, in English and Korean, the Respondent of the Complaint, and the proceedings commenced on June 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2014. The Respondent did not submit any formal response.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on July 23, 2014. 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
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 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. Furthermore, the prefix “bank” does not detract from the overall impression created.
By using the LEGO trademark as the 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 to the Complainant’s trademark.
According to the Complainant, 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 rise to any rights or legitimate interests in the name. Consequently, the Respondent may not claim any rights or legitimate interests established by common usage.
It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in LEGO at the time of the disputed domain name registration.
The Respondent is 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 a website offering financial services.
The Respondent did not provide a formal response, but addressed the Complainant’s contentions by claiming that (a) the Respondent is a provider of financial data, not a retailer of blocks and (b) the Respondent is willing to change its domain name if sufficiently compensated.
Further, in a prior communication between the Parties, the Respondent has indicated that (a) the disputed domain name was used for a commercial purpose other than the sale of toys, and that (b) the disputed domain name was based on the allegedly common Korean first names “Le” and “Go”.
In a late submission on July 24, 2014, the Respondent indicated that the disputed domain name was no longer in use.
6. Discussion and Findings
The Complaint was filed in English. 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 language, the expenses to be incurred and the possibility of delay in the proceeding 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. The Complainant has requested the language of the proceeding as English. The Respondent has requested the language of the proceeding as Korean.
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 proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation. Furthermore, as evidenced by the Parties’ prior email exchange, the Parties are able to communicate in English. 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 complete Response to the Complaint in accordance with all the requirements of the Rules does not relieve the Complainant of the burden of proving its case. Under paragraph 10 of the Rules, the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules. Further, under paragraph 14(b), the Panel shall “draw such inferences therefrom as it considers appropriate” in the event that a Party does not comply with a provision or requirement of the Rules.
For the reasons stated below, the disputed domain name <banklego.com> should be transferred to the Complainant.
C. Identical or Confusingly Similar
The Complainant has registered the LEGO mark in various countries in connection with numerous classes of goods and services. The disputed domain name wholly incorporates the Complainant’s famous trademark and a descriptive term that does not in this case sufficiently differentiate the trademark from the disputed domain name and as such creates sufficient similarity to be confusingly similar (see paragraph 4(a) of the Policy).
The Panel finds that the first part of the disputed domain name, “bank”, does not sufficiently distinguish the disputed domain name from the Complainant’s LEGO trademark. 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, mere addition of a generic or descriptive term does not exclude the likelihood of confusion; see also PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189. Numerous prior 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. Additionally, in LEGO Juris A/S v. Matthew Griffith, Merlix LLC, Domain Administrator, WIPO Case No. D2012-0443 involving the domain name <legobuilder.com>, it was held that the term “builder” should be disregarded for the purpose of this analysis.
Therefore, the Panel finds that the disputed domain name is 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 be taken as true provided that they have not been refuted by the Respondent.
The Respondent’s claims suggest a right or legitimate interest because “Le” and “Go” are common Korean names. Determining this issue involves, firstly, establishing whether it is a common name in fact and if it is, secondly determining whether that fact allows for a right or legitimate interest in the circumstances of this case. See Andreas Stihl AG & Co KG v. Andrew Davis, WIPO Case No. D2014-0576.
No evidence has been adduced with respect to the first issue.
Notwithstanding the answer to this first issue, we may consider the second issue: does the fact that “Le” or “Go” are common names automatically give the Respondent a right or legitimate interest? On balance, the Panel finds that the Respondent does not have such rights or legitimate interests.
According to paragraph 10 of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence. In this case, the evidence presented by the Complainant far outweighs that of Respondent, and finds the Respondent’s contention unpersuasive.
First, previous decisions have consistently found that the Complainant’s LEGO trademark is highly reknowned and carries a significant commercial presence worldwide. The Complainant provided evidence of its extensive portfolio of registered marks and evidence of significant market visibility.
Second, the Respondent’s claim of right or legitimate interest in the disputed domain name is vague. The Respondent refers to using the disputed domain name for the purposes of offering comparisons of financial products. However, no meaningful connection between that purpose and the disputed domain name is presented by the Respondent.
Therefore, the Respondent’s contention that the words “Le” and “Go” are common first names and thus legitimately form a domain name confusingly similar with the Complainant’s LEGO trademark must fail.
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).
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, 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 famous worldwide, it is very likely that the Respondent, at the time of registration of the disputed domain name or thereafter, was aware of the Complainant and its trademarks.
Under the UDRP, bad faith can 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 famous 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. That the disputed domain name was used for purposes other than the sale of toys does not minimize the finding of bad faith in this case.
In the Panel’s opinion, the Respondent’s use of the disputed domain name constitutes an improper use of the Complainant’s mark. The Respondent registered the confusingly similar disputed domain name and takes 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).
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, <banklego.com>, be transferred to the Complainant.
Thomas P. Pinansky
Date: July 28, 2014