Sunday, April 23, 2017

Shocker: used to sell couunterfeit LEGO building bricks

In LEGO Juris A/S v. Whoisguard Protected, Whoisguard, Inc. / Giovanni Bonny, WIPO Case No. D2017-0143 (Peter Wild, March 15, 2017), the Panel ordered the transfer of to the owner of the famous LEGO trademark. This was a case I could not resist blogging about, as my life just changed for the better this past week when my son wandered into a LEGO store at a local mall. He thought he was forcing me to buy LEGO bricks, but I may have been more excited about his "discovery" than he was. And I am glad to see that my money-for-bricks is being used to quash counterfeit enterprises. Well done LEGO!

Reading this decision was almost as enjoyable as building my son's first LEGO kit. There is some great language in the decision for brand owners. To start, the Panel noted the significance of the fact that Complainant not only owns the LEGO mark and corresponding domain, but also owns "a large number of similar domain names." It is always wise to build up a portfolio of domain names around your core trademark/domain, and Complainant here appears to have done just that.

From there, piecing together a victory for Complainant was easy. Examining the three factors necessary for Complainant to prevail in its UDRP dispute, whether the disputed domain is identical or confusingly similar to a trademark in which Complainant has rights, the Panel noted that the disputed domain consists of Complainant's trademark plus a geographic term that "does not alter the overall similarity" of the mark and disputed domain.

Looking at the second factor, Respondent's rights or legitimate interests in the disputed domain, Respondent here actually filed a response and tried to defend its right to the disputed domain, which he used to sell building bricks designed to imitate and compete with LEGO bricks. The Panel was not impressed: "It is clear that the toys offered for sale through the links on the website under the disputed domain name are toys which imitate, copy, or counterfeit the Complainant’s well known trademark and toys. As such, they are competing goods." Respondent attempted to argue that LEGO has become generic for building bricks, and that he made clear on his website that the bricks he was selling were not LEGO branded bricks. Again, the Panel scoffed: "The Panel does not find the Respondent’s submission that LEGO has somehow become 'genericized' to be convincing, nor does it accept that the Respondent’s statement on the website (that the products referred to are not genuine products of the Complainant) could give rise to rights or legitimate interests on the part of the Respondent."

As to the final factor, bad faith registration and use of the disputed domain, the Panel found that "[r]egistering a domain name with a famous trademark to draw Internet users to unauthorized copies and counterfeits of products which are sold under that famous trademark is a clear case of bad faith registration." As to bad faith use of the disputed domain, the Panel again balked at Respondent's defenses: "The Respondent claims that, on the website, he clearly states that there is no connection with the Complainant and, therefore, the use of the disputed domain name cannot be in bad faith. The Panel rejects this view. Using a domain name which refers to the Complainant’s well-known products but links to counterfeit products will attract Internet users who are interested in the Complainant’s products... [t]his establishes bad faith use of the disputed domain name."

This was a fun read, but getting back to building my son's new LEGO Batman set will be even more fun. There is only one true LEGO brand, and I'm glad my son is learning to appreciate the authentic and best building blocks out there.

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