Lego Juris A/S v Yeon o Jung

WIPO Case No. D2022-1295

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Lego Juris A/S v. Yeon o Jung

Case No. D2022-1295

1. The Parties

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

Sweden.

The Respondent is Yeon o Jung, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <legoedu.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 April 11, 2022. On April 11, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 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 April 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 April 12, 2022, the Complainant requested for English to be the language of the proceeding. On April 13, 2022, the Respondent requested for Korean to be the language of the proceeding.

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 and 4, the Center formally notified the Respondent of the with the Rules, paragraph 5, the due date for Response was May 10, 2022. The Respondent did not submit

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any response. The Center informed the Parties of the Commencement of Panel Appointment Process on

May 12, 2022.

The Center appointed Kathryn Lee as the sole panelist in this matter on May 30, 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 February 5, 1991 (Korean Trademark Registration Number 4000666770000) and LEGO registered in Nice Classes 16 and 27 on July 20, 1996 (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 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 Respondent appears to be an individual with an address in the Republic of Korea.

The disputed domain name was registered on October 7, 2015, and resolves to a “for sale” page on

Dan.com, a domain name marketplace.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the LEGO trademark in which the Complainant has rights. The disputed domain name incorporates the LEGO trademark in its entirety, and the other term “edu” 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 resolves users to a domain name trading site

Dan.com where the disputed domain name is listed for sale for USD 5,000, and that the Respondent has made no attempt to make legitimate use of the disputed domain name.

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 in 2015, which is decades 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 only offered for sale, and that passive holding can constitute a factor in finding bad faith registration and use. In addition, the Complainant adds that it sent several cease and desist letters to the Respondent offering compensation for the expenses of registration and transfer fees but failed to receive any response. Not only that, the Respondent owns a number of other domain names incorporating famous marks (i.e. “dior”, “disney”, etc.) and was the respondent in a domain name proceeding in which the panel found bad faith on

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part of the respondent and ordered the transfer of the domain name to the complainant. The Complainant
asserts that this is all evidence of the Respondent’s pattern of cybersquatting and 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 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 a substantive Response.

The Panel notes that the Complainant is based in Denmark and the Respondent is based in the Republic of Korea. 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. The website at the disputed domain name is in 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.

The disputed domain name contains the LEGO trademark in its entirety along with the term “edu”. The term, “edu”, does not prevent a finding of confusing similarity, and “lego” is the dominant element of the disputed domain name. And as this dominant element corresponds to the Complainant’s trademark in its entirety, the disputed domain name is confusingly similar to the Complainant’s trademark. 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 where it “incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name.”

For the reasons mentioned above, te 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.

Besides, 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. Here, the dominant element of the disputed domain name corresponds exactly to the Complainant’s mark supported by the additional term “edu” which

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correlates to the Complainant’s business and, as such, the disputed domain name carries a risk of implied
affiliation.

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 registration and use 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.

With respect to the use, the disputed domain name resolves to trading site Dan.com where the disputed domain name is listed for sale for USD 5,000, which is evidence of bad faith.

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

/Kathryn Lee/ Kathryn Lee Sole Panelist Date: June 13, 2022