Apr 29, 2019

LEGO awarded infringing domains following UDRP complaint

LEGO has succeeded in a Uniform Domain-Name Dispute-Resolution Policy ("UDRP") complaint to the World Intellectual Property Organization ("WIPO"). WIPO's UDRP complaint procedure is a streamlined and efficient way for rights-holders to prevent infringement in domain names. The upsides of the procedure over traditional litigation are quite simple: it is cheaper, quicker, and one of the remedies available is transfer of the domain about which complaint is made.

LEGO's complaints were made against the domains www.thelegostore.com and www.lego-caizhuang.com on the basis that they both contained the entirety of the trademarked word "LEGO" with the addition of generic terms that do not alter the similarity with the mark.

In this case the process was even quicker for LEGO: the respondents to the complaints did not enter any evidence in response, and so the panellist considered the merits of the case without hearing from the accused infringers.

Her determination was that the LEGO trademark was well-established and had a global reputation, and neither infringing domain could be argued to fall under the non-commercial or fair use exceptions. She ordered transfer of each domain to LEGO.

While it is unlikely that LEGO would ever want to actually use the domains, it is not unheard of for rights-holders that have acquired domains in these circumstances to post a brief news article highlighting the case and providing a link to the genuine website. In this case LEGO has simply deleted the content of the sites without redirecting users to its own website.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.

in: Digital/Tech, EU/International, Trade Marks

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