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Successful Representation of the Client in the Dispute over the Illegal Use of the Trademark in the Domain Name and on the Internet

Client LEGO Juris A/S (Denmark)

Description

LEGO Juris A/S, a manufacturer of world-famous game construction sets (hereinafter “LEGO”), has exclusive rights to a series of the registered LEGO trademarks, including well-known trademark LEGO No. 129, which have a single dominant verbal element LEGO (hereinafter the “LEGO Trademarks”), as well as to the Trade Name of LEGO Juris A/S.

The Company has become aware that an individual entrepreneur (hereinafter the “Infringer”) illegally uses the LEGO Trademarks and the LEGO’s Trade Name in the lego-lepin.ru Domain Name as well as on the website www.lego-lepin.ru to offer for sale goods using the Lego Trademarks. Moreover, by offering his products for sale, the Infringer illegally uses the LEGO Trademarks indicating that his products are “similar to the LEGO products.”

The Company actively uses its Trade Name as a means of individualization of its legal entity and the LEGO Trademarks as a means of individualization of its Goods worldwide as well as on the Internet. As a result, LEGO’s business has acquired a good business reputation, and its intellectual property has gained appreciated value. Therefore, any illegal use of the LEGO’s Trade Name and the LEGO Trademarks causes material losses to it and inflicts major damage to the business activities of the Company, its official distributors, partners, and licensees operating under its control.

As a result, to protect the exclusive rights to the LEGO Trademarks and the Trade Name and to prevent bad faith conduct of the Infringer, LEGO has contacted us as specialists in resolving disputes over illegal use of trademarks in domain names and on the Internet.

Solution

Within this case, we have advised LEGO on all legal issues and legal tactics in connection with the dispute over the illegal use of the LEGO Trademarks offering the client the most effective strategies for pre-trial and legal representation.

In particular, we have advised LEGO to send a letter of claim to the Infringer and a complaint to the registrar and hosting provider. Since the Infringer, the registrar, and the hosting provider have not responded to the letters in any way, it has been then recommended that the client file a claim with a competent court.

We have prepared and submitted a statement of claim to the court based on the concept of unfair competition, the practice of consideration of similar disputes under the UDRP principles and the provisions of the Russian Civil Code requesting to 1) recognize the registration of the domain name as infringement of the client’s exclusive rights; 2) prohibit the Infringer from using the LEGO Trademarks, including on the Internet, including in the lego-lepin.ru Domain Name, without the LEGO’s authorization.

As a result, in the frame of the proceedings in the Commercial Court of Bryansk Region on case No. A09-11219/2020, we have managed to prove the following facts: (1) the disputed lego-lepin.ru Domain Name is confusingly similar to the LEGO Trademarks; (2) the Infringer has no rights or legitimate interests in the disputed lego-lepin.ru Domain Name; and (3) the Infringer uses the disputed lego-lepin.ru Domain Name in bad faith.

Result

As a result, the LEGO’s claims have been satisfied in full by the court of first instance. Then the Infringer has sent an appeal to the court of appeal against the decision of the court of first instance; however, the lawyers of Gorodissky & Partners have managed to defend the client’s interests in the second instance as well: the Infringer’s appeal has been dismissed, and the decision of the court of first instance has been upheld.

The final court decision has granted the client a priority right to register the lego-lepin.ru Domain Name in its own name and to stop the illegal use of the LEGO Trademarks on the Internet.

This case is important since it gives another example (precedent) when the Russian court applies the internationally developed and recognized UDRP approaches in the context of the domain dispute in the .RU domain extension.

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