The Complainant is LEGO Juris A/S of Billund, Denmark represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is trollego 0 of Brasilia, Brazil.
The dispute concerns the domain name <trollego.com>. The domain name is registered with GoDaddy.com, LLC (hereinafter "the Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 13, 2012.
On January 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2012, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on January 17, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to verify whether it wished to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 19, 2012 and amended indeed the name of the Respondent.
The Center verified that the Complaint together with the amendment to 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 Paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 23, 2012. In accordance with Paragraph 5(a) of the Rules, the due date for Response was February 12, 2012.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2012.
The Center appointed Michael A.R. Bernasconi as the sole panelist in this matter on March 2, 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 Paragraph 7 of the Rules.
The language of the proceedings is English in accordance with Paragraph 11(a) of the Rules.
The Complainant is a company domiciled in Billund, Denmark and is the owner of the trademark LEGO and several other trademarks used in connection with the LEGO trademark. The Complainant and its licensees, through their predecessors, commenced use of the LEGO trademark in the United States of America during 1953, to identify construction toys made and sold by them. Furthermore, the Complainant is the owner of more than 1,700 domain names containing the term “lego”.
The Respondent is the registered owner of the disputed domain name <trollego.com> (hereinafter: "Disputed Domain Name"). The Disputed Domain Name was registered on September 11, 2011.
With an email dated November 28, 2011, the Complainant requested the Respondent to transfer the Disputed Domain Name to the Complainant. Since the Respondent did not react, the Complainant sent a further email to the Respondent on December 5, 2011, requesting again the Respondent to transfer the Disputed Domain Name. On December 19, 2011, the Complainant sent an email communication containing a "final reminder" to the Respondent, requesting compliance with said attached letter.
On March 7, 2012, the Panel performed an informal check of the Disputed Domain Name from a computer with a Swiss IP address. Amongst others, the web page displayed a logo that contained the Complainant's trademark name LEGO and the prefix "TROL", both separated from each other by a line break. Said logo used a font and colors which were almost identical to the ones used in the Complainant's trademark sign LEGO. Furthermore, the web page contained links to social media platforms such as Facebook, Twitter and Google+. The web page as well displayed the image of several LEGO toy figures and LEGO bricks. Furthermore, it contained a message in Portuguese according to which the Respondent faced problems and complaints regarding the name of the blog "trollego.com" which was integrated in the web page.
The Complainant contends that the Disputed Domain Name is identical or confusingly similar to the Complainant's trademark because the Disputed Domain Name contains the word “lego”. In the eyes of the Complainant, the addition of the prefix "trol" to "lego" does not have any impact on the perception of identity or confusing similarity since the trademark LEGO as the dominant part of the Disputed Domain Name is instantly recognizable. Therefore, the Complainant is of the opinion that an Internet user is bound to mistake the web page to relate to the Complainant.
Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant adduces that the Respondent has no license or authorization of any other kind that would allow it to use the trademark LEGO. Due to the fame of the trademark, it is very unlikely that the Respondent was unaware of the Complainant's legal rights in the trademark LEGO at the point in time of the registration of the Disputed Domain Name.
Finally, the Complainant contends that the Respondent registered and used the Disputed Domain Name in bad faith. By referring to the fame of the trademark LEGO and the communications due to which the Complainant amicably requested the transfer of the Disputed Domain Name, the Complainant argues that the Respondent knew of the Complainant's rights in the trademark LEGO. Furthermore, the Complainant brings forward that the links to the social media platforms on the Respondent's web page have the purpose to generate revenue through redirecting the Internet user to the respective social media platform. In support of its arguments, the Complainant also refers to the displayed message stating that the Respondent faces problems and complaints regarding the name of the blog "trollego.com".
The Respondent did not reply to the Complainant’s contentions. Accordingly, and based on Paragraph 14(b) of the Rules, the Panel shall draw such inferences from this default of the Respondent as it considers appropriate.
According to Paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and that
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and that
(iii) the domain name has been registered and is being used in bad faith.
The visual analysis of the Disputed Domain Name <trollego.com> reveals that Disputed Domain Name encompasses the Complainant's trademark LEGO in its entirety as well as the additional generic prefix "trol". Previous UDRP panels have held that identity or confusing similarity is sufficiently established if "a domain name wholly incorporates a complainant's registered mark" (see Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 and Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 with further references). The Panel follows this finding. Furthermore, neither the prefix "trol" nor the word "trollego" have any specific meaning, neither in Portuguese nor in English. Even though one could isolate the word "troll", i.e. the name of mythical creatures, from the Disputed Domain Name <trollego.com>, the Panel is of the view that the name of the Complainant's trademark LEGO in any case forms the dominant part of the Disputed Domain Name. It is therefore very probable that Internet users with the intention to find one of the almost 1,700 web sites registered by the Complainant which contain the term "lego" are misled into thinking that the Complainant is the registrant of the Disputed Domain Name or otherwise associated therewith.
It is undisputed that the top-level suffix (".com") in the Disputed Domain Name is of no further significance in the present case and therefore does not have any influence on the Panel's conclusion regarding identity or confusing similarity (see also Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).
Consequently, the Panel has no difficulty in finding that the prerequisite of identity or confusing similarity as a first criterion, as per Paragraph 4(a)(i) of the Policy, is established.
Paragraph 4(c) of the Policy defines the circumstances which, if proved, establish a registrant's right or legitimate interests to a disputed domain name.
By providing the relevant evidence, the Complainant convincingly established that the Respondent has not been authorized to use the trademark LEGO. Furthermore, the Respondent is neither commonly known by the Disputed Domain Name nor adduces itself arguments why it shall have the right or a legitimate interest in the Disputed Domain Name.
Moreover, the Respondent did not adduce any arguments affirming that it uses or has made preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. As the informal check conducted by the Panel on March 7, 2012, revealed, the Respondent's web page logo "TROLLEGO" used colors and a font which were almost identical to the Complainant's famous trademark LEGO. Furthermore, the Respondent implemented the image of LEGO toy figures and LEGO bricks into its web page. Considering the Respondent's default on that matter, the Panel draws the conclusion in accordance with Paragraph 14(b) of the Rules that the web page of the Respondent deliberately exploits the fame of the Complainant's trademark in order to attract internet users that then surf the Respondent's web page (see Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 and Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493). The Respondent stated on its web site that it faced problems and complaints regarding the name of its blog "trollego.com". Therefore, the Panel is convinced that the Respondent was aware of its illegitimate use of the Complainant's trademark LEGO. Otherwise, the Respondent would have adduced the relevant arguments in its defense.
For the foregoing reasons, the Panel finds that the Complaint satisfies Paragraph 4(a)(ii) of the Policy.
Regarding the registration and the use of the Disputed Domain Name in bad faith according to Paragraph 4(a)(iii) of the Policy, the Panel considers the following.
LEGO is a world-famous trademark benefitting from a very high degree of reputation (see only LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840 and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680). As convincingly established by the Complainant, the predecessor of LEGO has registered the LEGO trademark in the United States in 1953. In 2011, when the Respondent registered the Disputed Domain Name, the LEGO trademark has been registered in far more than 100 countries. Therefore, it is highly unlikely that the Respondent did not know of the Complainant's trademark LEGO at the time of the registration of the Disputed Domain Name. After the registration, the Complainant informed the Respondent several times by email and letter that the registration and use of the Disputed Domain Name violated the Complainant's trademark rights. Consequently, the Panel draws the conclusion that the Respondent knew of the Complainant, its products and its trademarks prior to and after the registration of the Disputed Domain Name (see Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 where the respective UDRP panel comes to the same conclusion).
The Complainant contends that the Respondent uses the Disputed Domain Name in bad faith because, as suggested by Paragraph 4(b)(iv) of the Policy, the Respondent "derives income once a visitor clicks on the link and is redirected to social media forum". However, the Complainant does not adduce any relevant evidence in support of its argument. In the view of the Panel, it cannot be said that the link on the Respondent's website to social media platforms in any case generates revenue for the Respondent, particularly because the social media links divert the Internet user to the Respondent's own respective Social Media Profile. Even though the Panel considers the possibility that the Respondent does not derive any revenue from its web page at all, the Respondent itself fails to adduce any arguments and evidence that would support its position on that matter. In line with the findings of previous UDRP panels and in application of Paragraph 14(b) of the Rules which empowers the Panel to draw the appropriate conclusion of the Respondent's default, the Panel therefore concludes that the Respondent would have adduced the arguments in its favor if he had had any (Philadelphia Stock Exchange, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2007-0776). Consequently, the Panel holds that the Respondent uses the Disputed Domain Name for commercial gain and therefore in bad faith.
As a result, Paragraph 4(a)(iii) of the Policy is satisfied.
In view of the above and for the foregoing reasons, and in consideration of the Complainant’s compliance with the formal requirements for this domain name dispute proceeding, of the Respondent’s default in submitting a Response, of the factual evidence and legal contentions that were submitted, of the confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i), (ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by Paragraphs 14(a) and (b) and 15(a) of the Rules, it is found:
(1) that the Disputed Domain Name is confusingly similar to the Complainant’s trademark;
(2) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) that the Disputed Domain Name has been registered and is being used in bad faith by the Respondent.
For all 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 <trollego.com> shall be transferred to the Complainant.
Michael A.R. Bernasconi
Sole Panelist
Dated: March 14, 2012