The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Linecom of Gyeongju-si, Republic of Korea (“Korea”).
The disputed domain name <mindstormslego.com> is registered with Gabia, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2012. On October 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2012, 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.
On November 2, 2012, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On the same date, the Complainant sent an email requesting English to be the language of the proceedings. The Respondent did not submit any reply related to the language of the proceedings.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2012.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on December 13, 2012. 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.
The Complainant is a company based in Denmark conducting manufacture and distribution of construction toys in connection with the LEGO brands and other LEGO-branded products. The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the United States of America (“United States”) during 1953, to identify construction toys made and sold by them. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Korea. The Complainant is the owner of the LEGO mark, and all other trademarks used in connection with the LEGO brands of construction toys around the world. The LEGO mark has been present in Korea for more than 15 years. The Korean trademark registration dates back to 1980 and has the registration number 66677. The Complainant’s registered trademark inter alia is as follows:
Korea
Trademark: LEGO
Class of goods and services: 28
Registration number: 66677
Registration date: January 21, 1980
The disputed domain name was registered on June 13, 2012.
The Complainant contends in the Complaint that:
(i) The disputed domain name is confusingly similar to the registered trademark LEGO in which the Complainant has rights;
(ii) The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name;
(iii) The disputed domain name should be considered as having been registered and used in bad faith by the Respondent; and
(iv) The Complainant requests the transfer of the disputed domain name to itself.
The Respondent did not reply to the Complainant’s contentions.
The Complaint was filed in the English language. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors. In the present case, the Registration Agreement for the disputed domain name was made in the Korean language.
The Complainant has submitted a request that English be the language of proceeding in which it has advanced a number of arguments including that, according to the Complainant, the Respondent has ability understanding the English language from the fact that the prefix, “mindstorms” is a English word, and the content of the website connected to the disputed domain name is also in English.
Further, the Respondent did not submit any objection to the Complainant’s request that English be the language of proceeding. It is also noteworthy that the Center in initially deciding to proceed with acceptance of the Complaint in English indicated that it would accept a Response in either English or Korean and also indicated it would (and has) appoint(ed) a panel familiar with both English and Korean.
In any event, the Respondent failed to submit a Response in either language and declined to participate in the proceeding. On the other hand, the Complainant is not able to communicate in Korean and therefore, if the Complainant were to submit all documents in Korean, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation.
Therefore, in consideration of all of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of proceeding in this case. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.
The Respondent appears to have the ability to communicate in English as discussed above, and the Center gave it the opportunity to file the Response even in Korean by notifying it of the Center’s preliminary decision to accept a Response in either Korean or English and appoint a panel familiar with both languages. However, the Respondent did not submit any Response by the due date.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(1) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith
The prefix “mindstorms” in the disputed domain name is a name of the product line of the Complainant. As such, the Panel finds that the addition of the prefix “mindstorms” in the disputed domain name does not lessen the confusing similarity between the disputed domain name and the Complainant’s mark. See Louis Vuitton Malletier v. Enrico Villa, WIPO Case No. D2000-0721; National Collegiate Athletic Association and March Madness Athletic Association, LLC v. Cyberoad Corporation, WIPO Case No. D2000-1378; and Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434.
The addition of the generic Top-Level Domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the Complainant’s trademark and the disputed domain name as well. Therefore, the Panel has found that the disputed domain name is confusingly similar to the Complainant’s trademark LEGO.
As it is virtually impossible for a complainant to prove the negative fact that a respondent has no rights or legitimate interests in the disputed domain name, it is well accepted that a complainant must only show a prima facie case that there are no rights or legitimate interests on the part of the respondent. The burden of proof production will then shift to the respondent. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Respondent is not affiliated with the Complainant in any way. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO mark in any other way that would give them any legitimate rights in the name. Consequently the Respondent under the circumstances may not appear to claim any rights established by common usage. It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
Under the circumstance that the Respondent did not reply, the Panel finds that the Complainant has proven a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. See De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005; See also Accor v. Eren Atesmen, WIPO Case No. D2009-0701. The Panel concludes that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown remarkably. The revenue for the LEGO Group in 2009, was more than USD 2.8 billion. 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 resides. The Panel has recognized that the Complainant’s trademark LEGO is among the best-known trademarks in the world, due to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. The Panel’s view is also supported by the list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world. As such, it is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. See The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; See also Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.
The disputed domain name is currently connected to a construction page which lists the disputed domain name for sale. Paragraph 4(b) of the Policy sets forth examples of behavior that constitutes bad faith, while clearly indicating that other circumstances may also act as evidence of bad faith. One of the enumerated circumstances includes the registration of the domain name primarily for the purpose of selling it to the owner of the mark or to a competitor for valuable consideration in excess of registration costs. See Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 (finding that the respondent did in fact register and use the disputed domain name in bad faith as it has made no use of the domain name other than to offer it for sale at a price that is likely to substantially exceed its out-of-pocket costs of registration); See VENTURUM GmbH v. Coventry Investments Ltd., DomainCollection Inc., WIPO Case No. D2003-0405 (finding that offering the disputed domain name for sale to the complainant, any of the complainant’s competitors, and others fall within the exemplification of registration and use of a domain name in bad faith pursuant to paragraph 4(b)(i) of the Policy); See PRIMEDIA Magazine Finance, Inc. v. Richard Manzo, WIPO Case No. D2001-1258 (finding that the respondent clearly offered the domain name for sale to anyone, suggested a price that is considerably in excess of registration costs, and has indicated a willingness to sell “at the right price” which behavior constitutes bad faith).
Furthermore, the Respondent is in default as it did not respond to these proceedings and therefore failed to invoke any element or circumstance which could indicate the good faith nature of its registration and use of the disputed domain name. As a consequence, the Respondent has failed to demonstrate any bona fide use of the disputed domain name.
Given the circumstances above, the Panel concludes that the Respondent registered and uses the disputed domain name in bad faith, and the third element of the Policy has been 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 <mindstormslego.com> be transferred to the Complainant.
Ho-Hyun Nahm
Sole Panelist
Date: December 27, 2012