LEGO Juris A/S v joo byung jin

WIPO Case No. D2023-0712

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. joo byung jin

Case No. D2023-0712

1. The Parties

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

Sweden.

The Respondent is joo byung jin, Republic of Korea.

2. The Domain Names and Registrar

The disputed domain names <legoedu.xyz>, <legoking.xyz>, <legoman.xyz>, and <legotown.xyz> are 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 February 16, 2023. On February 16, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 17, 2023, the Registrar transmitted by email to the Center its verification response disclosing additional registrant and contact information for the disputed domain names. The Center sent an email communication to the Complainant on February 20, 2023, providing the additional registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 21, 2023.

On February 20, 2023, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain names is Korean. On February 21, 2023, 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 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 both English and Korean, and the proceedings commenced on March 2, 2023. In accordance

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with the Rules, paragraph 5, the due date for Response was March 22, 2023. The Respondent did not

submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2023.

The Center appointed Kathryn Lee as the sole panelist in this matter on April 2, 2023. 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 February 10, 2010 (Korean Trademark Registration Number 4000666770000) and LEGO registered in Nice Classes 16 and 27 on June 10, 2005 (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 individual with an address in the Republic of Korea.

The disputed domain names were registered as follows: <legoedu.xyz> on July 3, 2022, <legoking.xyz> on domain names do not resolve to any website with actual content.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the LEGO trademark in which it has rights. The disputed domain names each incorporates the LEGO trademark in its entirety, and the other terms “edu”, “king”, “man”, and “town” are generic terms which do not detract from the overall similar impression.

The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain names and confirms that it has not authorized or licensed rights to the Respondent in any respect. The Complainant also states that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, but that panels have confirmed that passive holding of a domain name which contains a complainant’s trademark while making no demonstrable preparation to use such domain name in connection with either a non-commercial, fair use or a bona fide offering of goods and services, does not confer a right or legitimate interest in the domain name under the Policy.

Finally, the Complainant contends that the disputed domain names were 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 that the Respondent registered the disputed domain names due to its fame. The Complainant points out that the disputed domain names were 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 names are not being used, and that passive holding can constitute a factor

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in finding bad faith registration and use. In addition, the Complainant adds that the Respondent registered
four domain names containing the LEGO trademark which demonstrates that the Respondent is engaging in

a pattern of cybersquatting, which is evidence of bad faith registration and use.

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 neutral language for rendering this decision. Further, the disputed domain names are composed of Latin characters, and contain actual words in English: “edu”, “king”, “man”,

and “town”. 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. 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 each of the disputed domains names in full, and is readily
recognizable within the disputed domain names. The additional terms “edu”, “king”, “man”, and “town” do 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.

Further, 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 names contain the Complainant’s trademark LEGO in its entirety, and as such, the disputed domain names carry a risk of implied affiliation.

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For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, 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 names. Rather, especially with no

response to claim otherwise, it is more probable that the Respondent registered the disputed domain names with the intention of benefiting from the fame of the mark in some way. Given the fame of the Complainant’s mark, the Respondent’s lack of response to the Complainant’s cease and desist letters, and the

Respondent’s failure to participate in the present proceedings, the non-use of the disputed domain names 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 names.

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 names, <legoedu.xyz>, <legoking.xyz>, <legoman.xyz>, and
<legotown.xyz>, be transferred to the Complainant.

/Kathryn Lee/ Kathryn Lee Sole Panelist Date: April 17, 2023