WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Gang Jeung Tack (강정택)
Case No. D2021-1795
1. The Parties
The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Gang Jeung Tack (강정택), Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <레고.com> [xn--299ao5s.com] is registered with Gabia, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2021. On June 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2021, the Center sent a reminder request to the Registrar. On June 21, 2021, 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 for the disputed domain name.
On June 22, 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 June 23, 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 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 July 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2021.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on August 30, 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 is one of the largest toy companies in the world. It is most famous for its flagship Lego branded products which consist of interlocking plastic bricks, and has expanded the use of the LEGO trademark to other areas, including computer hardware and software, books, videos, and theme parks. Lego has offices throughout the world and consistently ranks among the most powerful brands in the world in consumer polls.
The Respondent appears to be an individual with an address in the Republic of Korea.
The disputed domain name was registered on January 1, 2021, and resolves to a registrar holding page.
5. Parties’ Contentions
The Complainant contends that it owns trademark registrations to LEGO and its Korean transliteration, and that the disputed domain name is comprised of the exact Korean characters that compose the Korean transliteration of LEGO.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name, and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain name was registered and used in bad faith. The Complainant explains that LEGO is among the most famous trademarks in the world and the Respondent could not have been unaware of the Complainant at the time of registration. Rather, it is more likely that the Respondent registered the disputed domain name in order to use it in a way which would be detrimental to the Complainant. Further, the Respondent has made no use of the disputed domain name and even if there were use, it should be considered to have been in bad faith considering the overall circumstances.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and both parties have had an opportunity to argue their positions on this point. The Center issued a notice in Korean and English stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English. The Respondent subsequently chose not to submit a Response.
Given the fact that both parties were given the opportunity to submit arguments in the language of their preference, and the Respondent neither raised an objection as to the language of proceeding nor submitted any arguments whatsoever in these proceedings, the Panel finds it proper and fair to render this decision in English.
B. Identical or Confusingly Similar
The Complainant has demonstrated with supporting evidence that it holds trademark registrations for LEGO in numerous jurisdictions around the world which date back to as early as 1954. And since 1984 in the Republic of Korea, the Complainant has also owned trademark registrations to the Korean transliteration of LEGO to which the disputed domain name is identical.
For the reasons mentioned above, the Panel finds that the first element has been established.
C. Rights or Legitimate Interests
On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once such a prima facie basis has been established, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. However, the Respondent in this case has chosen to file no substantive Response to these assertions by the Complainant, and there is no evidence or allegation in the records that would warrant a finding in favor of the Respondent on this point. In addition, the Panel notes that the disputed domain name is identical to the Korean transliteration of LEGO, which carries a high risk of implied affiliation with the Complainant.
For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element has been established.
D. Registered and Used in Bad Faith
The Panel finds that there are sufficient reasons to find bad faith in this case.
First, the term “lego” does not have any special meaning in the Korean language, and registration for a domain name containing the same exact term as the Complainant’s mark should be viewed as more than mere coincidence. Rather, given the fame of the LEGO mark, it is more probable that the Respondent registered the disputed domain name with the intention of benefiting from the fame of the mark in some way.
In addition, the disputed domain name resolves to a registrar holding page which does not constitute bona fide use. Further, there is no evidence of any history of bona fide use of the disputed domain name or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
For the reasons given above, the Panel finds that the third and final element has been sufficiently 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, <레고.com> [xn--299ao5s.com], be transferred to the Complainant.
Date: September 28, 2021