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WIPO Arbitration and Mediation Center


LEGO Juris A/S v. Justyna Niedzielska, PHU C.N.O. JUSTYNA NIEDZIELSKA

Case No. DEUL2020-0004

1. The Parties

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

The Respondent is Justyna Niedzielska, PHU C.N.O. JUSTYNA NIEDZIELSKA, Poland, self-represented.

2. The Domain Name, Registry and Registrar

The disputed domain name is <lego-land.eu>.

The Registry of the disputed domain name is the European Registry for Internet Domains (“EURid” or the “Registry”. The Registrar of the disputed domain name is H88 S.A.

3. Procedural History

The Request to Change the Language of the ADR Proceeding (the “Request”) was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) pursuant to the .eu Alternative Dispute Resolution Rules (the “ADR Rules”), Paragraph A(3)(b), on September 30, 2020. On October 2, 2020, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On October 2, 2020, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

In accordance with the ADR Rules, Paragraph A(3)(b)(3), the Center formally notified the Respondent of the Request, and the proceedings commenced on October 16, 2020. In accordance with the ADR Rules, Paragraph A(3)(b)(4), the due date for Response was October 28, 2020. The Respondent submitted informal email communications to the Center on October 21, 2020, and November 2, 2020.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on November 20, 2020 in accordance with the ADR Rules, Paragraph A(3)(b)(4). 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 ADR Rules, Paragraph B(5).

On December 10, 2020, the Panel issued, in Polish and in English, the Procedural Order No. 1 inviting (i) the Complainant to submit the copy of its correspondence with the Respondent referred to in the Request within 2 working days (i.e., December 14, 2020), and (ii) granting the Respondent the opportunity to comment on the submitted evidence (if any) within 2 working days (i.e., December 16, 2020). The Complainant submitted additional documents on December 10, 2020. On the same day, the Respondent submitted an informal e-mail communication.

4. Factual Background

The Complainant in this administrative proceeding is a limited company incorporated in Denmark.

The Respondent is located in Wrocław, Poland.

The disputed domain name was registered on May 28, 2020. The language of the registration agreement is Polish.

On July 1, 2020, the Complainant sent a cease-and-desist letter to the Respondent. On the same day, the Respondent replied in English, explaining that he planned to open an online store in Poland and was unaware of the inferring nature of the disputed domain name. Then, on July 2, 2020, the Respondent offered the disputed domain name for sale for EUR 1,500 and <lego-land.pl> – for EUR 700.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the language of the registration agreement for the disputed domain name is Polish. The Complainant requests that the language of the ADR Proceeding be English. As set forth by Paragraph A(3)(b)(1)(iii) of the ADR Rules, the Complainant specifies, inter alia, the following circumstances to justify a change of language of this ADR Proceeding to English:

- The Complainant is unable to communicate in Polish and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings;

- Such additional delay, considering the abusive nature of the disputed domain name (it is identical to Complainant’s LEGOLAND trademark), poses continuing risk to the Complainant and unsuspecting consumers seeking the Complainant or its products;

- The Complainant previously sent a cease-and-desist letter to the Respondent who replied to the Complainant in English, thus proving they are able to communicate in this language.

- In light of the Respondent’s use of the disputed domain name and the Respondent’s decision to register a domain name that misappropriates the famous LEGOLAND mark and brand, it would unduly burden the Complainant to have to arrange and pay for translation.

B. Respondent

The Respondent requested Polish to be the language of the proceedings and stated “Pleas use polisy language”. When the Respondent received the bilingual Procedural Order No. 1, the Respondent still claimed that she did not understand it.

6. Discussion and Findings

In accordance with Paragraph A(3)(a) of the ADR Rules, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the ADR Proceeding shall be the language of the Registration Agreement for the disputed domain name. In the absence of an agreement between the Parties, the Panel may in its sole discretion, having regard to the circumstances of the ADR Proceeding, decide on the written request of a Complainant that the language of the ADR Proceeding will be different than the language of the Registration Agreement for the disputed domain name.”

In accordance with the general powers attributed to the Panel under Paragraph B(7)(b) and (c) of the ADR Rules, the Panel shall ensure on the one hand side that the Parties are treated fairly and with equality, and shall ensure, on the other hand, that the ADR Proceeding takes place with due expedition. It is recognized that the ADR Rules are considered a variation of the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), under which the panels recognize that under certain circumstances the language of proceedings may be different from the language of the registration agreement for the disputed domain name. Such circumstances include: (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (iv) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, or (v) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement (e.g., Sphinx Information Technology Consulting and Software Project GmbH v. Sphinx IT SRL, WIPO Case No. DEUL2018-0001; also see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5).

The wording of Paragraph A(3)(a) of the ADR Rules makes it clear that preference is given to the language of the registration agreement as to the language of ADR Proceedings.

However, in this case, the Complainant presented an e-mail communication with the Respondent which confirms that the Respondent can understand English. Moreover, the disputed domain name consists of “lego” and “land” which is an English word.

Therefore, having regard to the above circumstances, the Panel accepts in its sole discretion that the language of the ADR Proceeding will be English and therefore different than the language of the registration agreement for the disputed domain name.

7. Decision

For the foregoing reasons, in accordance with Paragraph A(3)(b)(6) of the ADR Rules, the Panel orders that the language of the ADR proceeding shall be English.

This Panel’s decision shall be final and not subject to appeal.

Piotr Nowaczyk
Sole Panelist
Date: December 18, 2020