When you think of companies or institutions that are involved in ongoing arbitrations, you probably think of banks and insurance companies. Well, we can now add Lego Juris A/S to that list, which has been involved in a staggering 750 UDRP proceedings. At a cost of approximately $1,500 per arbitration, Lego has spent approximately $1 million on prosecuting domain related claims before WIPO’s Arbitration and Mediation Center, and this is just in arbitration fees.
You may be wondering, why I know this, well as someone with a passion for IP law, the UDRP, and domain name litigation in general, I spend around 30 minutes to an hour every day looking through WIPO’s domain name decisions, and, there is one name that comes up over and over again and that name is Lego.
Why Lego?
Based on my research Lego is ranked 59th in the Top 100 brands in the world of 2023 according to Interbrand, which makes Lego the most popular toy brand in the world. Ok, so you may be thinking, well it makes sense then that infringers who want to sell fake toy bricks or toys in general would use these fake domains. This is true for the majority of these disputes. It does not, however, explain why the Lego brand has been used to market:
- Cryptocurrency scams (WIPO Case No. D2022-1349)
- Adult content (WIPO Case No. D2009-0170);
- NFT scams (WIPO Case No.D2022-1284);
- Unlicensed Casinos (WIPO Case No. D2020-1711); and
- Hemp (D2019-2267)
In contrast BMW is ranked 10th most valuable brand in the world by Interbrand of 2023 has only been involved in around 100 UDRP disputes, which includes “MINI” and “THE ULTIMATE DRIVING MACHINE”, both of which are additional brands registered in favor of BMW at the USPTO and around the world.
Even
It Must Be the SEO
So, the next part of this assessment is that use of Lego is probably valuable as far as SEO is concerned, so by attaching the lego brand to some other product, currency or content sold on their website, the SEO is so valuable that it will drive traffic to the infringing websites. According to Semrush.com, as of June 2024. lego.com is ranked 1,288 worldwide and 755 in the United States.
The Lego.com website is old, like 90’s old.
The lego.com website has been around since 1996, which as most people will realize is when the internet became mainstream. This around the same time that Microsoft’s Internet Explorer was first released and Amazon.com opened their virtual doors. Lego.com predates domain name titans like Google.com, Facebook.com, YouTube.com, Netflix.com and PayPal.com.
Lego the Victim of an Ongoing Trend
For whatever my opinion is worth, based on the research that I have done, it appears that the widespread online infringement of the “LEGO” mark stems not, at least exclusively, from it’s brand or SEO value, but, from a company that was so far ahead of the rest of the pack that it found the proverbial double edged sword. Lego is the beneficiary of having an established online internet presence, but, also the victim of some of the earliest instances of domain spoofing, bad faith domain name registrations and online intellectual property theft.
If you want to avoid these issues and need assistance protecting your online content or want to take action against infringing domains feel free to visit the Justec Brand Protection website at justechlegal.com.
Justec Brand Protection is not a law firm and this blog is j my opinion and does not constitute legal advice. You should seek legal advice specific to your needs.