LEGO Juris A/S v Asiagroup

WIPO Case No. D2022-2829

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Asiagroup

Case No. D2022-2829

1. The Parties

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

The Respondent is Asiagroup, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <legocom.com> is registered with Megazone Corp., dba HOSTING.KR (the

“Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2022. On August 2, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2022, 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 August 12, 2022, 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 August 15, 2022, the Complainant filed an amended Complaint requesting 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, in English and Korean, and the proceedings commenced on August 18, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2022.

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The Center appointed Kathryn Lee as the sole panelist in this matter on September 21, 2022. 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 an educational toy company located in Denmark and its flagship product called “Lego” is plastic bricks in various colors which interlock to create objects such as buildings and vehicles. The Complainant is the owner of LEGO trademarks in a number of jurisdictions around the world, and the following in the Republic of Korea: LEGO registered in Korean Class 28 on January 21, 1980 (Korean Trademark Registration Number 4000666770000) and LEGO registered in Nice Classes 16 and 27 on May 9, 1985 (Korean Trademark Registration Number 4001123270000). The Complainant has subsidiaries and branches worldwide and Lego products are sold in more than 130 countries, including in the Republic of Korea. Over the years, the use of the LEGO trademark has expanded to other areas, such as computer hardware and software, books, theme parks, and videos. The LEGO trademark was listed as the number 1 Consumer Superbrand by Superbrands UK in 2019, and the Lego Group was named number 1 on the list of the world’s Top 10 Most Reputable Global Companies of 2020 by the Reputation Institute. TIME Magazine announced Lego to be the Most Influential Toy of All Time in 2014. The Complainant’s official website is at domain name <lego.com> which was registered on August 22, 1995.

The Respondent appears to be an entity with an address in the Republic of Korea.

The disputed domain name was registered on July 18, 2018, and is currently not connected to any website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the LEGO trademark in which it has rights. The disputed domain name incorporates the LEGO trademark in its entirety, and the other term “com” is a generic term which does nothing to obviate confusion.

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. The Complainant asserts that the disputed domain name at one time resolved to a parking site with

pay-per-click links to third party websites that referenced the Complainant and its business such as “Lego Adult Sets”, “Lego Building Sets”, and “Lego Store.” The Complainant asserts that such use is not a bona fide offering of goods or services as allowed under paragraph 4(c)(i) of the Policy, nor legitimate

noncommercial or fair use as allowed under paragraph 4(c)(iii) of the Policy, and that it is clear that the also contends that the Respondent is offering to sell the disputed domain name which is further evidence of the Respondent’s lack of rights and legitimate interests.

Finally, the Complainant contends that the disputed domain name was registered and is used in bad faith. The Complainant asserts that LEGO is a famous and reputable trademark with substantial goodwill associated with it, and it is surely the fame of the trademark which motivated the Respondent to register the disputed domain name. The Complainant points out that the disputed domain name was registered many years after the Complainant registered the LEGO trademark in the Republic of Korea and in other countries, and that the Respondent cannot have been unaware of the LEGO trademark at the time of registration. Further, the Complainant asserts that the disputed domain name is not being used, and that passive holding can constitute a factor in finding bad faith registration and use. In addition, the Complainant adds that the Respondent’s previous offer to sell the disputed domain name and failure to respond to cease and desist

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letters sent to the Respondent are further evidence of the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

A. Language of Proceedings

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 in either Korean or English. The Respondent subsequently chose not to submit any response.

Given the fact that the Complainant is based in Denmark and the Respondent is based in the Republic of Korea, English would appear to be the fairest neutral language for rendering this decision. Further, the disputed domain name is composed of Latin characters, and at one time resolved to a website with advertising links in English. Besides, both parties were given the opportunity to submit arguments in the language of their preference, and the language in which to render the decision is reserved for the Panel. The Panel would have considered a Response in Korean, but no response was submitted. Accordingly, the Panel determines that rendering the decision in English is fair and procedurally efficient given the circumstances of this case.

B. Identical or Confusingly Similar

The Complainant has demonstrated with supporting evidence that it has rights to the trademark LEGO in numerous jurisdictions around the world including in the Republic of Korea, which were all registered well before the registration of the disputed domain name. According to WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, a domain name is considered confusingly similar to a trademark if it “incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name.” In this regard, the LEGO mark is
incorporated in the disputed domain name in full, and is readily recognizable within the disputed domain
name. The additional term “com” does not prevent a finding of confusing similarity (see WIPO Overview 3.0,

section 1.8).

For the reason 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 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.

A respondent’s use of a domain name is not considered “fair” if it falsely suggests affiliation with the trademark owner. See WIPO Overview 3.0, section 2.5.1. Here, the disputed domain name contains the Complainant’s trademark LEGO in its entirety, and as such, the disputed domain name carries a risk of implied affiliation. Further, neither the Respondent’s previous use of the disputed domain name for a parking page with pay-per-click links that referred to the Complainant’s goods and services, nor the current non-use

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of the disputed domain name, represents a bona fide offering of goods or services given that the disputed domain name is confusingly similar to the Complainant’s trademark and such use trades on the reputation and goodwill associated with its trademark. See WIPO Overview 3.0, section 2.9. Similarly, the disputed domain name was also offered for sale on a third-party market place, reinforcing the Panel’s view on the Respondent’s intent on commercial gain through the confusingly similar disputed domain name.

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 is sufficient evidence to find bad faith in this case.

Considering the fame of the Complainant and the Complainant’s mark and products, it is highly unlikely for the Respondent to have not known about the Complainant prior to registering the disputed domain name. Rather, especially with no response to claim otherwise, 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, especially

given the additional term “com” in the disputed domain name which is likely to confuse Internet users looking
for the Complainant’s services and mislead them as to the source of the disputed domain name. Also, by
previously linking the disputed domain name with a parking page displaying pay-per-click links that referred
to the Complainant’s goods and services, the Respondent created a likelihood of confusion and benefited
commercially from the confusion of Internet users that visited the site by mistake as per paragraph 4(b)(iv) of
the Policy. Given the fame of the Complainant’s mark, the prior use and for-sale nature of the disputed
domain name, and the Respondent’s failure to participate, the current non-use of the disputed domain name
does not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0,
section 3.3. Indeed, there does not seem to be any plausible non-infringing explanation for the registration
of the disputed domain name.

For the reasons given above, the Panel finds that the third and final element has been sufficiently established.

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, <legocom.com>, be transferred to the Complainant.

/Kathryn Lee/ Kathryn Lee Sole Panelist Date: October 5, 2022