Legos and the UDRP

Each day I receive an email from the WIPO arbitration center listing decisions under the Uniform Domain Name Dispute Resolution Policy, or UDRP.  The UDRP is the policy a domain name registrant agrees to upon registration of a domain name which binds them to arbitration for trademark-type disputes.  WIPO's arbitration center hears the most of these disputes, though a few other venues also handle them.  WIPO hosts an extensive resource center for viewing past decisions, notice about policy changes, statistics and substantive discussion and summary of trends in UDRP panel* decisions.

Over the past two years, I've been amazed (though not surprised) at how often Lego disputes come up.  The company is well known as an aggressive protector of their trademark rights.  A huge blow came in 2010 when the European Court of Justice (Europe's highest court) held that there are no trademark rights in the shape of interconnected toy bricks since the shape is necessary to obtain a technical result.  In other words, functionality is a bar to trademark protection.  The same is true in the US and elsewhere too.  The Supreme Court of Canada reached a similar result with respect to Legos in 2005.  As Techdirt noted a few years ago, the company " has built up a strong fan base, and a great brand, without having to resort to trademark tricks to eliminate competitors."  Remember, we're talking about the shape of the blocks, not the company's trademark rights in the name "Lego."  Which brings us back to the UDRP.

Since 2007, Lego, represented by Melbourne IT Digital Brand Services, has brought 175 UDRP proceedings before WIPO with the vast majority (170) from 2009 to present.  Many of these involve multiple domain names.  Most are highly legitimate claims against PPC ad farms, typosquatters and the like.  Others are just plain stupid: did you really think you could hang on to legobrand.com?  The source identification function of trademark law is well supported in the UDRP decisions, and there's breathing room for criticism, fan pages and other fair uses.  Still, out of the 175 decisions that appear in the search for "Lego" as complainant, Lego lost only one, legoworkshop.com, a site built for a Lego enthusiast's high school project.

174 - 1.  Not too shabby.  Most respondents didn't even reply, and some might have had pretty good arguments if their activities weren't (determined to be) in bad faith, such as legorumors.com.  Other decisions are more questionable.  For example, freelegoporn.com might have had a better chance if it weren't adult-oriented, and more like beer porn, i.e. glorifying cool things built with Legos, not hilarious sexual poses of Lego figures.  At the same time, there shouldn't be anything wrong with some adult humor at Lego's expense.  Indeed, that's what the respondent tried to argue:
"The most important point that I am going to make is the word lego is not what I am using in the domain name. It is LEGOPORN. LEGO is a latin word defined as to study or build. LEGOPORN is the building of comedic stop action animation pornography with dolls and the like. At no point did we even elude that we represented the lego corperation. We have not interest in selling their products and we never used the LEGO mark, as they put it. If you do a search on Google for the word LEGOPORN you will find 37000 hits. We are simply making a location that people can add links for their youtube their are 85 different videos and 844 different videos with the words separated. And they [the Complainant] are right, when that web domain name wasn't taken they had a perfect right to buying the name, but they choose not to. we at P N S enterprises had a perfect right to buy the domain name which we did. And finally this is a website for mature comedic entertainment. It is simply comedy like a southpark, family guy, or simpson T.V. show."
Nevertheless, the panel found in favor of Lego, stating that no one speaks Latin and the meaning would be lost on the vast majority of Internet users.  With the right representation (and spell check, grammar check, a translator, etc.), perhaps a stronger fair use or parody case could have been made rather than the Latin meaning pretext.  The page isn't indexed on the Wayback Machine, so who knows what was really there.  Regardless, there's plenty of Lego porn out there if you're interested - check out this gallery

In other cases, the respondent might have done better by bringing a declaratory judgment action in court or responding to the panel's decision by filing suit.  See UDRP § 4(k).  For example, legocufflinks.com resulted in a transfer, yet a strong argument over rights exhaustion could be made.  The panel didn't go there, however, and gave no credence to the site's disclaimer or the presence of Lego cufflinks being sold... all over the Internet, further relying on hypothetical initial interest confusion.  It reads like a lame and lazy way out of more complicated issues.  Oh well.

I didn't notice any cases involving legitimate resellers of Lego products, although they may simply have permission to use the trademark.  The decisions involving "store" or similar in the domain name tended to either redirect users to other sites or the respondent failed to reply.   In one of the failure to reply decisions, involving shop4lego.com, the panel favorably cites the Oki Data decision which represents the consensus view:
Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, § 2.3 (emphasis mine)

Then there's the 11 year old who had to wait for his parents to respond when sent a cease and desist letter over "legosaurusrex.com".  Sorry kid, you lose.  All in all, the UDRP seems to be working as intended, giving legitimate rightsholders a quick and cheap way of resolving domain name disputes.  Some of the borderline cases are under-analyzed, leaving the loser to the expense of appealing in court.  Still, no system can be perfect.  What about a UDRP defense clinic?  I'm sure many attorneys or law students and professors would be interested in representing someone here and there.  However, there could be some sticky ethical issues, and finding a qualified attorney is only a Google away.  Interestingly, udrp.com is registered to a lawyer, not ICANN.

*The UDRP requires that panel resolve all disputes.  As I've noted before, there is often just one panelist.  This leads to slightly uncomfortable statements such as, "the panel [of one] finds it is properly constituted."  However, given the number of proceedings each year (over 2,000 this year so far), this is somewhat understandable since most (or all) of the panelists have other full time responsibilities.

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