In order to combat trademark disputes, it is a common tactic to dispute opponents rights over the generic nature of a mark. In simple words, the party claims that the word is too common to be specially reserved for some entity. However, such claims become laughable when someone contests it for a brand like Lego!
Lego had filed a complaint at WIPO over the use of the domain name LegoIP.com. The Respondent was an Egyptian national who had been using the domain name for providing Intellectual Property related services.
The Complainant owns trademark rights over the LEGO mark, including in Egypt, the place of residence of the Respondent. The Complainant claims that the Respondent aimed at deriving benefits from the infringement of the well known worldwide brand of the Respondent.
The Respondent however contested that the domain name was being used for a legitimate service offering related to Intellectual Property. The Respondent also claimed that Legonotorie mark was generic and hence use of it didn’t infringe upon the Complainant’s rights.
The panel pointed out that whether the Respondent was using the domain name for legitimate purpose didn’t matter, as the mark considered in the domain name had already attained notoriety because of the Complainant’s use. The Complainant didn’t allow the Respondent to use the mark and hence found the Respondent registration of domain name in bad faith.
The domain name was transferred.
Read the full case here.