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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION RELATED TO THE REQUEST TO CHANGE THE LANGUAGE OF THE ADR PROCEEDING

LEGO Juris A/S v. Leonid Žitnikov

Case No. DEUL2021-0002

1. The Parties

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

The Respondent is Leonid Žitnikov, Estonia.

2. The Domain Name Registry and Registrar

The disputed domain name is <legobricks.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 Zone Media OÜ.

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 June 30, 2021. On June 30, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On July 2, 2021, the Registry 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 Request. The Center sent an email communication to the Complainant on July 9, 2021 providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Request. The Complainant filed an amended Request on July 9, 2021.

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 July 13, 2021. In accordance with the ADR Rules, Paragraph A(3)(b)(4), the due date for Response was July 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2021.

The Center appointed Indrek Eelmets as the sole panelist in this matter on July 29, 2021 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).

4. Factual Background

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

The Respondent is located in Tallinn, Estonia.

The disputed domain name was registered on December 8, 2020. The language of the registration agreement is Estonian. The disputed domain name currently resolves to an inactive site and is not being used. Pursuant to the Request, the Respondent was previously using the disputed domain name to resolve to the website in English of “Magento”, an online grocery store, and the Complainant has sent three cease-and-desist letters to the Respondent. The Respondent neither issued a request to communicate in Estonian nor responded to the Complainant.

5. Parties’ Contentions

A. Complainant

The language of the registration agreement for the disputed domain name is Estonian. 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 Estonian and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings;

- Such additional delay, considering the obviously abusive nature of the disputed domain name (Respondent has registered a confusingly similar domain name and was previously using it to resolve to content unrelated to Complainant), poses continuing risk to the Complainant and unsuspecting consumers seeking the Complainant or its products;

- The disputed domain name incorporates the English term “bricks” and the website previously found at the disputed domain name was entirely in English;

- Neither the trademark LEGO, which is the dominant portion of the disputed domain name, nor the descriptive English term “bricks” carry any specific meaning in the Estonian language;

- The Complainant previously sent three cease-and-desist letters to the Respondent and the Respondent had ample time and opportunity to respond to such letter and request that communications continue in Estonian. The Respondent neither issued such a request nor responded to Complainant in any matter whatsoever. To allow the Respondent to dictate the course of this matter and further burden Complainant at this juncture would contravene the spirit of the ADR proceeding and disadvantage the Complainant; and

- 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 LEGO mark and brand, it would unduly burden the Complainant to have to arrange and pay for translation.

B. Respondent

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

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.”

The Panel has not been made aware of any agreement between the parties pertaining to the language of the proceedings. Furthermore, it is undisputed in the case at hand that the language of the registration agreement is Estonian.

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 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 (“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) any content on the webpage under the disputed domain name;
(iv) prior cases involving the respondent in a particular language;
(v) prior correspondence between the parties;
(vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint;
(vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language;
(viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names;
(ix) currencies accepted on the webpage under the disputed domain name; or
(x) 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., Chevron Corporation, Chevron Intellectual Property LLC, and Chevron Belgium BV v. Kristiina Loodus, AS QLS, WIPO Case No. DEUL2020-0005; Sky scanner Limited v. Bolognesi Damiano, Aim S.r.l, WIPO Case No. DEUL2020-0001; Sphinx Information Technology Consulting and Software Project GmbH v. Sphinx IT SRL Verfahrensnr., WIPO Case No. DEUL2018-0001).

In the present case, the Respondent has not submitted any response or communication with the Center claiming that English is a language beyond its comprehension.

The Panel further notes that the disputed domain name is a combination of the Complainant’s trademark LEGO and the English word “bricks”. Both words have no meaning in Estonian. Further, pursuant to the Complainant, the website previously found at the disputed domain name was entirely in English. These arguments support the Complainant’s claim that the Respondent has competence in the English language.

In light of the indicated circumstances, the Panel is satisfied that the Respondent has more than an adequate knowledge of the English language so that proceeding in English is fair and equal.

In addition, the Panel notes that requesting a translation of the Complaint will cause undue delay of these proceedings and therefore be inequitable for both parties and contrary to the obligation to proceed with these ADR Proceedings with due expedition.

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 from 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 and any future submission by the Parties (including the submission of a new Complaint) regarding the disputed domain name <legobricks.eu> shall be made in the language of the ADR Proceeding in accordance with paragraph A(3)(c) of the ADR Rules.

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

Indrek Eelmets
Sole Panelist
Date: August 10, 2021

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