WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lego Juris A/S v. Kang Seung Hui (강승희)

Case No. D2021-0914

1. The Parties

The Complainant is Lego Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Kang Seung Hui (강승희), Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <레고.shop> [xn--299ao5s.shop] is registered with Gabia, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2021. On March 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2021, 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. The Center sent an email communication to the Complainant on April 1, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 3, 2021.

On April 1, 2021, 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 April 3, 2021, the Complainant requested for English to be the language of the proceeding. The Respondent did not comment on 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 formally notified the Respondent of the Complaint, and the proceedings commenced on April 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2021.

The Center appointed Andrew J. Park as the sole panelist in this matter on May 14, 2021. 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, Lego Juris A/S, based in Denmark, was founded in 1932 by Ole Kirk Kristiansen, and based on the iconic Lego brick, it is one of the world’s leading manufacturers of play materials. The Complainant is the owner of the LEGO trademark (including trademark registrations in the Republic of Korea for 레고, which transliterates to “Lego” in English), and all other trademarks used in connection with the famous Lego brand of construction toys and other Lego branded products. It 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 almost 5000 domain names containing the term “lego” and the Lego group also maintains an extensive website under the domain name <lego.com>.

The disputed domain name <레고.shop> [xn--299ao5s.shop] was registered by the Respondent on November 5, 2020.

5. Parties’ Contentions

A. Complainant

1. The Complainant, following the filing of the Complaint with the Center, requested that the language of proceeding be in English, providing three main reasons.

(a) The Complainant is unable to communicate in Korean and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter.

(b) The Respondent has registered the disputed domain name which is confusingly similar to the Complainant’s trademark in an attempt to pass off as Complainant and misappropriate the famous LEGO mark. Therefore, such additional delay due to translation of the Complaint into Korean will pose continuing risk to the Complainant and unsuspecting consumers seeking the Complainant or it products.

(c) Also, it would unduly burden the Complainant to have to arrange and pay for translation where the Respondent has demonstrated behavior that disrupts the Complainant’s business and has already required the Complainant to devote significant time and resources to addressing this instance of abuse.

2. The Complainant contends that the disputed domain name should be transferred to the Complainant because:

(a) the disputed domain name <레고.shop> [xn--299ao5s.shop] is identical and confusingly similar to the Complainant’s trademark in which the Complainant has rights. The term “레고”, which is the dominant portion of the disputed domain name, transliterates to “lego” in English and does not carry any specific meaning in the Korean language. The Top Level Domain (“TLD”) “.shop” is an English word and carries no meaning in the Korean language. However, it can be viewed as if the website to which the disputed domain name resolved is an online shop that the Complainant operates because the Respondent actually is using the website at the disputed domain name to imitate the Complainant’s online shop on “www.lego.com/ko-kr”, which clearly suggests that the Respondent intended the disputed domain name to be confusingly similar to the Complainant’s trademark as a means of furthering consumer confusion. Also, [xn--299ao5s.shop] is a punycode translation of the disputed domain name and is equivalent for purposes of determining confusing similarity, and therefore may be disregarded when assessing whether a domain name is identical or confusingly similar to the trademarks.

(b) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent lacks any rights or legitimate interests in the disputed domain name because first, the Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, and no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the LEGO trademark. Further, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. Second, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent is intentionally using the LEGO trademark in order to mislead Internet users to its commercial website which is attempting to pass off as the Complainant’s official Korean website.

(c) the disputed domain name was registered and is being used in bad faith. The Complainant claims that the Respondent has registered the disputed domain name in bad faith. The Complainant’s trademark LEGO is one of the most well-known and reputable trademarks in respect of toys with substantial and widespread goodwill throughout the world. The Respondent registered the disputed domain name on November 5, 2020 which is subsequent to the date the Complainant registered the trademarks LEGO and 레고 in the Republic of Korea. It is clear that the Respondent knew or should have known of the registration and use of the Complainant’s trademark prior to the registration of the disputed domain name. This, the Complainant argues, demonstrates that the Respondent registered the disputed domain name in bad faith.

(d) also, the Complainant contends that the Respondent intentionally attempts to attract Internet users who are searching for the Complainant’s products by using the disputed domain name, and that such intentional effort is for commercial gain. The disputed domain name is currently connected to a website where the Respondent is attempting to pass off as the Complainant’s website by copying the entire website contents of the Complainant’s official Korean website. The Respondent is using the disputed domain name in bad faith.

(e) further, the Respondent currently holds registrations for several other internationalized domain names that when translated, misappropriate the trademarks of well-known brands and businesses. This demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is clear evidence of bad faith registration and use of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceeding

The Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the Registration Agreement, i.e., Korean, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraphs 10 and 11(a) of the Rules. In coming to this decision, the Panel has taken the following into account:

(1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;

(2) The Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and giving full consideration to the Parties’ respective arguments; and

(3) The Complainant and the Respondent use different languages, and neither of them likely understands the language of the other party. The Complainant is located in Denmark while the Respondent is from the Republic of Korea. Therefore, English would be a fair language for both Parties.

In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English and the Respondent’s communications in Korean; (2) consider any relevant materials in Korean; and (3) issue a decision in English.

B. Identical or Confusingly Similar

This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established registered rights in the trademarks LEGO and 레고 and that the disputed domain name is confusingly similar to the Complainant’s trademarks. The disputed domain name incorporates the Complainant’s trademark in its entirety, and includes certain characters that rely on information exchange coding systems for electronic communications, such that computers translate the disputed domain name to be the equivalent of <레고.shop> which reads <lego.shop> in English.

The disputed domain name includes characters that make use of “Punycode”, which is an ASCII-compatible encoding standard designed for use with internationalized domain names (“IDN”) containing non-Latin (and non-ASCII) characters. To display those characters, each component of the domain name that is not in ASCII characters is encoded by a system such as Punycode. ASCII stands for the American Standard Code for Information Interchange, which is a character encoding standard for electronic communications. ASCII codes represent text in computers, telecommunications equipment, and other devices. The current Internet configuration does not recognize non-ASCII characters; thus, a system such as Punycode translates non-ASCII characters into their equivalent “ASCII transliteration”. (See Dr. Ing, h.c. F. Porsche AG, v. Moniker Privacy Services / Sergey Korshunov, WIPO Case No. D2011-0100).

The Panel agrees with the Complainant’s assertion that this use of Punycode to create the disputed domain name is irrelevant in countering the identity between the Complainant’s renowned LEGO or 레고 trademarks and the disputed domain name. (See also Société Air France v. Domain Administrator, China Capital, WIPO Case No. D2018-1220). The Panel also considers that the TLD “.shop” shall be disregarded as it is viewed as a standard registration requirement. (WIPO Overview 3.0, section 1.11)

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical to the Complainant’s trademarks.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case. The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name.

The Respondent registered the disputed domain name, created a website using the disputed domain name to purportedly offer the sale of good and services which are exactly identical to the Complainant’s Lego products, used not only the Complainant’s LEGO trademark and product images but also the copyrights related thereto, and did not prominently include accurate information about its (lack of) relationship with the Complainant or the identity of the provider of on the website, all in an effort to confuse Internet users or consumers about the relationship between the Respondent and the Complainant, and all without the Complainant’s permission or authorization, which demonstrates that the Respondent never had an intention to use the disputed domain name in connection with a bona fide offering of goods or services.

The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name. Further, the Panel finds that the Respondent is improperly using the disputed domain name to create a false impression that the Respondent is affiliated with the Complainant.

The Panel is unable to find any reasonable basis upon which the Respondent could be said to have any rights or legitimate interests in respect of the disputed domain name, and the Respondent has not filed a formal Response.

Moreover, the nature of the disputed domain name carries a high risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1).

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain

name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv) by registering the disputed domain name in order to attempt to attract, for commercial gain, Internet users to the Respondent’s website which the disputed domain name resolves to, by creating a likelihood of confusion with the Complainant’s trademark.

As already mentioned, the Respondent did not file any formal response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name. Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The Panel finds the Respondent intentionally registered the disputed domain name – which is identical to the Complainant’s LEGO trademark – in bad faith. First, the Complainant’s commencement of its business in 1932, its use of the domain name <lego.com> for the Complainant’s official website, and its registration of the LEGO trademark all far pre-date the registration date of the disputed domain name by the Respondent. Second, the website which the disputed domain name resolves to contains products that all belong to the Complainant. In short, the Respondent copied the entire contents of one of the Complainant’s official websites “www.lego.com/ko-kr” and moved them to its website to which the disputed domain name resolves.

The Respondent registered the disputed domain name that is identical to the Complainant’s trademark LEGO with the knowledge of the Complainant’s world famous brand and its business, and the Respondent knew of and had sought to take unfair advantage of the identity between the disputed domain name and the Complainant’s trademarks when it registered the disputed domain name, and is using the disputed domain name to attract Internet users to the Respondent’s website for commercial gain.

Accordingly, all of the foregoing facts show that the Respondent had knowledge of the Complainant’s trademark and business when it registered the disputed domain name and that it pretends that there is a business relationship between the Respondent and the Complainant. Thus, it is clear that the Respondent registered and is using the disputed domain name in bad faith.

As the conduct described above falls squarely within paragraph 4(b)(iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

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 <레고.shop> [xn--299ao5s.shop] be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: May 31, 2021