imgres-11-150x99Although Lego Juris A/S (“Lego”), the makers of the very cool and fun lego construction pieces/toys (for the sake of full-disclosure I played with Lego’s as a kid and love them) that are sold everywhere, have been pretty successful at stopping cybersquatters from using the LEGO mark, a few days ago they lost a UDRP decision for the domain

The decision is noteworthy because the panel practically apologized for its ruling using the phrase “somewhat reluctantly” to explain its decision, and because it provides an open door for companies to use famous/strong international trademarks in a domain name, even if they don’t have any recognizable right to the word/mark.  

The Respondent, Congjun Zhang of Beijing, China, registered the domain name and put up an e-commerce site that sells t-shirts, backpacks, and other accessories, but does not deal in lego’s. At the same time the Respondent had no “rights” in the name and had no plausible explanation for choosing the name.  

With respect to the requirements of UDRP law, the panel found that the first element, similarity, was satisfied because the mark LEGO was confusingly similar to, and the principle part of the domain “lego”.  Next, the panel combined the questions of legitimate rights and bad faith and undertook a lengthy analysis of International Law, specifically Article 6 of the Paris Convention and Article 16(3) of the TRIPS (Trade-Related Aspects of Intellectual Property Rights) Agreement. Article 6 was sited as particularly relevant by Lego because it includes language about covering “unrelated goods”: 

“The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.” Paris Convention, Article 6bis(1).  

Even so, the panel reasoned that International Law did not protect Lego in this situation, stating:

“… the Paris Convention and TRIPS do not give blanket protection to well-known marks as submitted by the Complainant. A connection between the mark and the goods or services must be formed and the interests of the owner must be likely to be damaged by the use.”; and that “[t]he disputed domain name does not by its mere nature, to this panel, suggest the domain name is connected or affiliated in some way with the Complainant, even when taking into account that LEGO is a well known mark. […] This Panel is not satisfied that an Internet user will necessarily look at the disputed domain name and consider there is an affiliation or connection with the Complainant, its products or services: It is certainly possible, but does not strike the Panel as more likely than not based on the evidence of filed in this case.” 

The panel identified the fundamental question before it as “what level of protection should be given to a well known mark when it is being used (as presently) as part of a domain name for unrelated goods or services?” Although this is technically accurate, it fails to include the fact that (i) the LEGO mark is not just “well-known”, but is a strong, distinctive mark that is uniquely and instantly recognizable (similar to marks like PEPSI and KODAK) – not just as a construction toy; (ii)  that the LEGO mark will be damaged by the Respondent’s use because LEGO is now not just a commercial representation for Lego; and (iii) that Lego has online trademark rights via U.S. Reg. No. 3,440,699 covering “[r]etail store services and online retail services, both featuring toys, construction toys, games, video games, movies, clothing, clocks, watches, books, gifts, backpacks, pens, furniture and key chains” that it has been using in commerce since October 2001.  

Further, if the domain name is looked at from an English vocabulary perspective, it is two terms, “lego” and “ego”.  For the similarity prong of the test this is how the UDRP panel looked at the domain name and determined that it was confusingly similar to the LEGO mark.  The panel did however look at the domain as a possible Chinese language term, as a trademark can be protected in its transliterated form. See, .e.g., McDonald’s Corporation v. Fundacion Private Whois, Case No. D2012-1435 (“[t]he disputed domain name is identical to the pinyin transliteration of 麦乐送. It is well established by various UDRP cases that domain names comprising phonetic transliterations of foreign language trade marks are confusingly similar to such trade marks.”).  

However, here, the transliterated form of the Chinese characters used by the Respondent did not resolve to a term that had any meaning and the panel could not come up with a plausible translation from Chinese that would justify its use. If the panel had found that the transliterated term “lego” is used often in Chinese to refer to shopping, or “happy, easy shopping” (as was suggested) then this could have been used to analyze the Respondent’s use of the term differently, but there is no such reasoning in the decision.  

Going forward, UDRP panels should not be so blase about protecting strong/famous trademarks, particularly where the Respondent cannot show that they have legitimate rights in the domain name and there is no justification for use of the mark in the Respondent’s primary language or English.