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Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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TUESDAY, 18 MAY 2010
Lego win bestcheaplego.com domain name


 Just a few days ago, Manoel J. Pereira dos Santos, handed down a sole panelist decision in case D201-0457, involving the domain name <bestcheaplego.com>. The complainant, obviously LEGO JUSRIS A/S of Denmark, turned against a resident of Thailand, who had registered the domain name on December 16, 2009. LEGO sent the respondent a cease and desist letter on February 19, 2010, which letter was reiterated by email on February 26, 2010. The respondent wisely consumed no resources in replying either to the letter or the complaint, obviously having full knowledge of what was to come.


The case is relatively straightforward. The Panel evidently held that “best” and “cheap” do not avert likelihood of confusion, and ruling on bad faith, that:


“The fact that Respondent has chosen as domain name a widely-known trademark is per se a clear indication that registration of the disputed domain name was made in bad faith even in the case of the present combination of words because the domain name <bestcheaplego.com> has a particular meaning intended to attract Internet users which would look for a website offering Lego products. In the circumstances, the mere fact of diverting users in this misleading manner is evidence of bad faith. See The Gap, Inc. v. YongHoon Lee, SofTech, WIPO Case No. D2007-0386. Therefore, the Panel finds that Respondent desired to free ride on Complainant’s reputation and goodwill for commercial gain, and, accordingly, finds that Respondent registered the disputed domain name in bad faith.”


For those having fun gossiping with major brands, the decision offers a useful list of LEGO’s prior domain name adventures (LEGO is said to own over 1000 domain names including the word LEGO) and recognition of the “famous” nature of the LEGO mark:


“The Panel also notes that the notoriety of the LEGO trademark has been confirmed in previous WIPO decisions. See LEGO Juris A/S v. John Davies, WIPO Case No. D2010-0160; Lego Juris A/S v. Hu Liang/Dolego, WIPO Case No. D2009-0848; LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Stop2Shop, G V, WIPO Case No. D2009-0784; LEGO Juris A/S v. Private, Registration / Dohe Dot, WIPO Case No. D2009-0753; LEGO Juris A/S v. EcomMutual, WIPO Case No. D2009-0685; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680; LEGO Juris A/S v. Deng Yi Xia, WIPO Case No. D2009-0644; LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564; Lego Juris A/S v. Gioacchino Zerbo, WIPO Case No. D2009-0500; LEGO Juris A/S v. Mike Morgan, WIPO Case No. D2009-0438; LEGO Juris A/S v. Bladimir Boyiko, WIPO Case No. D2009-0437; LEGO Juris A/S v. Domainproxyagent.com and Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0381; LEGO Juris A/S v. Zhijun Guo, WIPO Case No. D2009-0184; LEGO Juris A/S v. P N S Enterprises, WIPO Case No. D2009-0170; LEGO Juris A/S v. David Palmer, WIPO Case No. D2008-1826; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; and LEGO Juris A/S v. Level 5 Corp., WIPO Case No. D2008-1692.”



Interestingly enough, the decision bears the old WIPO logo

Posted by: Nikos Prentoulis @ 15.30
Tags: WIPO, domain names, domain name disputes, LEGO, bestcheaplego, famous trade marks,
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