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.
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
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:
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