lego_logo-150x150In LEGO Juris A/S v. Le Thi Kim Phuong, a WIPO Arbitration panel found that the Respondent who had registered the domain nameĀ www.thegioilego.com was in violation of UDRP Policy because “the addition of generic or highly descriptive wording is ‘typically regarded as insufficient to prevent threshold Internet user confusion.'”

Although the term “gioi” is a Vietnamese word that means “world” – and the collective terms THE GIOI LEGO when translated into English mean “the world Lego” or “Lego World”, the Panel reasoned that even though the term “gioi” was not technically descriptive of the LEGO mark or products it was still not “distinctive” and therefore “[did] not alter the overall impression of the disputed domain name.”

The case is interesting to note because the word “gioi” as a foreign language term that does not specifically relate to or describe LEGO or its products, shows how cyber-squatters will even attempt to use domain names with foreign language combinations (in this case Vietnamese and English) to capitalize on known trademarks.

Although such combinations of words could present problems when used in conjunction with marks that are less distinctive/strong than the LEGO mark (which sits atop the trademark strength hierarchy), if the cyber-squatters use the site in obvious association with a known trademark, brand holders can use the decision in this case as positive support for finding that the Respondent has still acted in violation of UDRP law...