LEGO Juris A/S v Kim Kiyoung

WIPO Case No. D2023-1749

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Kim Kiyoung

Case No. D2023-1749

1. The Parties

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

Sweden.

The Respondent is Kim Kiyoung, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <레고.net> (<xn--299ao5s.net>) is registered with Whois Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April
20, 2023. On April 20, 2023, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On April 21, 2023, the Registrar 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 (Whois Domain Admin.) and contact information in
the Complaint. The Center sent an email communication to the Complainant on May 1, 2023, providing the
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 in English on May 2, 2023.

On May 1, 2023, 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 May 2, 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 May 9, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2023.

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The Center appointed Ik-Hyun Seo as the sole panelist in this matter on June 22, 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 one of the largest toy companies in the world. It is most famous for its flagship Lego branded products which consists of interlocking plastic bricks, and has expanded the use of the LEGO trademark to other areas, including computer hardware and software, books, videos, and theme parks. Lego has offices throughout the world and consistently ranks among the most powerful brands in the world in consumer polls.

The Complainant owns the LEGO trademarks around the world including:

- Denmark Trademark Registration No. VR 195400604, LEGO, registered on May 1, 1954;

- Republic of Korea Trademark Registration No. 4001036960000, 레고, registered on July 27, 1984.

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

The disputed domain name was registered on September 23, 2022, and redirects to the domain name

<legosport.quv.kr> that resolves to an error page and lacks content.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it owns trademark registrations to LEGO and its Korean transliteration, and that the disputed domain name is comprised of the exact Korean characters that compose the Korean transliteration of LEGO.

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.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant explains that LEGO is among the most famous trademarks in the world and the Respondent could not have been unaware of the Complainant at the time of registration. Rather, it is more likely than not that the Respondent registered the disputed domain name in order to use it in a way which would be detrimental to the Complainant. Further, the Respondent has made no use of the disputed domain name and passively holding a domain name can constitute a factor in finding bad faith registration and use. Lastly, the Respondent used a privacy service to hide its identity which prior UDRP panels have held serves as further 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 the Proceeding

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

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determine otherwise. In this case, the language of the Registration Agreement is Korean, and both Parties in either Korean or English. The Respondent subsequently chose not to submit a Response.

have had an opportunity to argue their positions on this point. The Center issued a notice in Korean and

Given the fact that both Parties were given the opportunity to submit arguments in the language of their preference, and the Respondent neither raised an objection as to the language of the proceeding nor submitted any arguments whatsoever in these proceedings, the Panel finds it proper and fair to render this decision in English.

B. Identical or Confusingly Similar

The Complainant has demonstrated with supporting evidence that it holds trademark registrations for LEGO
in numerous jurisdictions around the world which date back to as early as 1954. And since 1984 in the
Republic of Korea, the Complainant has also owned trademark registrations to the Korean transliteration of

LEGO to which the disputed domain name is identical.

For the reasons 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 substantive 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.
In addition, the Panel notes that the disputed domain name is identical to the Korean transliteration of LEGO,
which carries a high risk of implied affiliation with the Complainant. See WIPO Overview of WIPO Panel
Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1.

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 are sufficient reasons to find bad faith in this case.

First, the term “lego” does not have any special meaning in the Korean language, and registration for a domain name containing the same exact term, in Korean transliteration, as the Complainant’s mark should be viewed as more than mere coincidence. Rather, given the fame of the LEGO mark, 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.

The disputed domain name does not display any content, but from the inception of the UDRP, UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. Considering the distinctiveness and fame of the

LEGO mark, the Respondent’s failure to submit a response or provide any evidence of actual or contemplated good faith use, the Respondent’s use of the privacy service to conceal his identity, and the implausibility of any good faith use to which the identical disputed domain name could be put, the Panel finds that the Respondent’s non-use of the disputed domain name does not prevent a finding of bad faith.

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

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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, <레고.net> (<xn--299ao5s.net>), be transferred to the Complainant.

/Ik-Hyun Seo/ Ik-Hyun Seo Sole Panelist Date: July 6, 2023