WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. TheChakan
Case No. D2018-1030
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is TheChakan of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <legohouse1914.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 10, 2018. On May 11, 2018, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2018, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
On May 18, 2018, the Center notified the Parties, in both English and Korean, that the Complaint was submitted in English, and that according to the Registrar, the language of the Registration Agreement is Korean. In the same notification, the Center instructed the Complainant to provide, by May 21, 2018:
“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 May 23, 2018.” 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 [May 23, 2018], we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”
On May 21, 2018, the Complainant submitted an amended Complaint, which includes the Complainant’s request that English be the language of the proceeding. The Respondent did not submit any comment regarding the language of the proceeding.
The Center verified that the Complaint together with the amended 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, in both Korean and English, formally notified the Respondent of the Complaint, and the proceeding commenced on May 28, 2018. In accordance with the Rules, paragraph 5, the due date for the Response was June 17, 2018. On June 11, 2018, the Respondent transmitted to the Center its Response. On June 18, 2018, the Complainant transmitted to the Center a message regarding contents of the Response. On June 19, 2018, the Center acknowledged receipt of the Complainant’s message and informed the parties of the Rules relating to supplemental filings.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on July 10, 2018. 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, a company based in Denmark, makes and sells construction toys using the LEGO mark. The Complainant has registered marks containing LEGO in a large number of countries all over the world, including the Republic of Korea.
The Complainant has also registered many domain names that include LEGO, including <legohouse.com>, which it registered on April 26, 2008.
The Respondent registered the disputed domain name <legohouse1914.com> on December 11, 2017.
5. Parties’ Contentions
The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; (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. In addition, the amended Complaint states:
“The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Korea, where the Respondent is located.”
“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. Indeed, the LEGO trademark and brand have been recognized as being famous.”
“Anyone who sees the Disputed Domain Name is bound to mistake it for a name related to the Complainant.”
“[N]o license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademarks LEGO.”
“[T]he Respondent is not an authorized dealer of the Complainant’s products and has never had any business relationship with the Complainant.”
“LEGO is a famous trademark worldwide.”
“[The] Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through a commercial website offering a product that takes advantage of the fame of Complainant’s brand and trademark.”
The Response (in Korean) is in the form of an email message sent to the Center, with attachments. In relevant part, it states: the Respondent is in the construction business; the disputed domain name was registered for the benefit of customers; the Respondent supplies materials for all kinds of buildings; “Lego House” is the business name of the Respondent; and the disputed domain name was arrived at by combining this business name with the last four digits of the Respondent’s cell phone number.
6. Discussion and Findings
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the registration agreement is the language of the administrative proceeding, unless otherwise agreed by the parties or specified in the registration agreement. The rule also states that the determination of the language is “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 English be the language of the proceeding.
The Panel notes that the Respondent’s multiple responses - in English - to the Complainant’s cease and desist letters demonstrate a proficiency in the Complainant’s requested language.1 In all events, the Panel will consider all of the arguments raised in the parties’ submissions, in both languages. For convenience of both parties, this decision is in English.
On the merits, in order to prevail, the Complainant must satisfy each of the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
There are two components to this element: the Complainant must have rights in a mark; and the disputed domain name must be identical or confusingly similar to that mark. It is not disputed that the Complainant has rights in LEGO, a well-known mark worldwide. The Panel determines that the disputed domain name <legohouse1914.com> is identical or confusingly similar to the Complainant’s mark. LEGO is the most prominent part of the disputed domain name. The addition of the generic term “house” preceding the number “1914” does not defeat confusing similarity. The addition of the generic Top-Level Domain, “.com” is a technical requirement for every domain name.
The first element is established.
B. Rights or Legitimate Interests
The Complainant states that it has not authorized the Respondent to use the Complainant’s protected mark, and has met its initial burden of making a prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden shifts to the Respondent to demonstrate any such rights or legitimate interests. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may demonstrate the Respondent’s rights or legitimate interests in the disputed domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent appears to rely principally on the second example, in urging that “Lego House” is merely the Respondent’s business name. In this regard, the Respondent submitted a copy of a business registration (in Korean text) that confirms the registration of a company with the name “레고 하우스”, the transliteration of “Lego House.” Yet the same document notes a beginning date of operations as January 1, 2018 – or approximately three weeks after the Respondent registered the disputed domain name, and years after the Complainant registered its LEGO mark in the Republic of Korea and began operations there.
In brief, the Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is demonstrated.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(b) provides a non-exhaustive list of circumstances that are “evidence of the registration and use of a domain name in bad faith”.
The Respondent urges that “Lego” “mean[s] ‘Let’s go home.’” Presumably, with the addition of “house”, a term that relates to the Respondent’s stated construction business, and the more individualized “1914”, indicating the last four digits of its cell phone number, the Respondent arrived at the disputed domain name <legohouse1914.com>. Nevertheless, it is difficult for the Panel to believe that the Respondent was not aware of “LEGO”, the Complainant, when it registered the disputed domain name. If the Respondent had attempted to register <legohouse.com>, it would have found that the domain name was already taken, and registered by the Complainant.
In this case, the Panel can only conclude that the bad faith requirement is met. Internet users who resort to the disputed domain name are taken to a website with content almost all in Korean (except for “LEGO HOUSE” under “레고 하우스”), and which includes links that provide information about a company that provides construction and consulting services. The Panel determines that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website … by creating a likelihood of confusion with the [C]omplainant’s mark,” as set forth in paragraph 4(b)(iv) of the Policy.
The third element is established.
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 <legohouse1914.com> be transferred to the Complainant.
Date: July 24, 2018
1 The Respondent stated, inter alia: “Clearly, we have nothing to do with your brand.” “Our company started using Lego, which mean ‘Let’s go home.’” “My company has already moved to www.LegoHouse1914.com[.]”