Lego shutting down someone's site

mayberts

Hi guys,

My friends 12 year old son started to setup a Lego fan site called lego360.co.uk. He has now recieved a letter stating that he has 2 weeks to shut down the and sign the domain name over to them.

I can understand that he has to shut the site for copyright infringement, but does he really have to sign the domian name over?

madforLEGO

Im guessing thi is to do with LEGO being trademarked and LEGO being afraid that people may errantly think it is an official LEGO site.
Probably why most sites I see use 'brick' instead of LEGO in them. Just a guess though

prof1515

If you turned it into a site dedicated to drunken flashing, Lego would have to shut you down again. As long as the domain contains "Lego" in it, it may be construed as damaging to their brand. Since they can't control what you put up on that site, it's easier for them to keep the domain from being used.

I would write back and say that you're happy to turn over the domain but request compensation to purchase a new domain as a replacement.

DaddyWhale

Is he certain that the letter came from LEGO or other reputable source?

dougts

@prof1515 suggestion seems like the most reasonable. LEGO has repeatedly gone after domain names with their brand name in it, and repeatedly won the challenges involved. Don't fight it - you will lose. It was an honest mistake with no intent to harm or infringe LEGO, so working cooperatively with them is the best bet.'

That said, I see www.legolease.com is still up and running, a full year after I reported them to LEGO.

Huw

LEGO does not tolerate any domain with the word 'lego' in it, which is why all fan sites are something-brick.com or brick-something.com.

They do not like, but do not shut down, sites with 'lego' in the subdomain, e.g. gimmelego.blogspot.com

I think leggo.com and legolas.com and that sort of thing will get away with it, though.

mayberts

Yes, it came from their lawyers. I thought he would be able to keep the domain name and just use it to redirect traffic to the new site.

prof1515

Yes, it came from their lawyers. I thought he would be able to keep the domain name and just use it to redirect traffic to the new site.

Again, if you're redirecting traffic, that is the problem. What if the new site was a porn site? People thinking that they're going to a Lego site would find themselves at an unrelated porn site (it doesn't have to be porn; I'm just using that as an example).

mayberts

Yes, it came from their lawyers. I thought he would be able to keep the domain name and just use it to redirect traffic to the new site.

Again, if you're redirecting traffic, that is the problem. What if the new site was a porn site? People thinking that they're going to a Lego site would find themselves at an unrelated porn site (it doesn't have to be porn; I'm just using that as an example).

Fair point, I think he just wants to point it to his new fan based brick site

dougts

^ i would suggest get the new site up and running asap, and put a message on the old one that people need to start using the new one. at least for the next week or two until the old one goes away, he can get as many people as possible swapped over and re-bookmarked.

brickmatic

Why bother redirecting? The site isn't even properly live yet, since the kid has just started to put the site up. I'd recommend asking for the registration fee being paid, so the kid doesn't lose money, and then getting a different domain. But if you're compelled to keep the domain, you should be aware there are mechanisms in place for trademark owners to protect the trademark in domain names: http://www.bitlaw.com/internet/domain.html

DaddyDeuce

I can't comment directly on UK trademark law, but from a US point of view LEGO Group would have every right to tell you to shut down the website. Their ability to seize the domain name is much more limited.

The LEGO Group has approximately 20 trademark registrations for the word "LEGO". These registrations give the LEGO Group exclusive use of the word "LEGO" for specific markets, including but not limited to construction toys, educational software, online fan-club services, watches, keychains, sunglasses, child-care centers, etc.

However, having trademark rights does not generally give you exclusive use of that word in markets unrelated to where you use it. As an example, up until recently an Israeli company had the trademark on the word "Lego" with regards to irrigation equiment. (They ended up selling the trademark to the LEGO group, but that is another story).

You could, hypothetically, start a company today selling "Lego Brand" chemical assay equipment, tampon manufacturing facilities, suppository wrappers for canine medicine, or any other product unrelated to the LEGO Groups business.

One caveat; there is the concept of "famous trademarks" - a brand name that is so well known that it is not possible to use it in any field at all without diluting the trademark owner's brand. An example would be "Coca-Cola".

Anothre caveat; Trademark primarily protects commercial use. There are complete realms of usage (including criticism) where the trademark owner can do nothing to protect their brand. Examples include:

http://www.screw-paypal.com/
http://www.mitsubishisucks.com/
and so on...

So, back to your son's friend. The sad thing is that if he uses http://www.lego360.co.uk/ as a sort of pro-lego discussion of Lego products then he is likely to have the domain seized, while if he used http://www.lego360.co.uk/ as forum for criticizing Lego then he would likely have a right to keep it.

You can't blame LEGO for being fiercely protective of their brand, as it the most valuable asset they have. Anybody can go into the business of manufacturing LEGO-compatible plastic bricks, but building the brand equity that "LEGO" has would be difficult indeed.

Edit: The whole "you must sign over your domain" is a bluff. You don't *have* to sign over the domain. It just saves them the work of having to file a domain name challenge and potentially fight you over the domain. And there is no possible way that LEGO is actually going to sue a 12-year old fan for financial damages. If it were me I would bring up the new site, use the old one as a redirect, and write LEGO a letter that you were going to keep the site as a redirect until it no longer had any traffic.

bricksan

Sorry but why is he running a website in the first place at 12?

Redbullgivesuwind

It is a really nice site by the way. Just change the domain name to something like brick360 and as people have said redirect traffic. He should be pleased that his site is worth lego's notice. Thats an upside.

andyscouse

I hate lawyers - scum of the earth!! Yes - let them compensate for the hassle caused (dock it from the lawyer's pay -- plenty to go round there, I'm sure).

(I mean - Lego isn't Apple - the awful company that litigates just about anything, I'm surprised we can even eat apples still!!)

bahnstormer

as a 12 year old cant legally sign a contract, the parent is at risk unless the child signed up and paid for the contract with his own money.

the counterparty cannot legally enter into an agreement with a minor and my understanding is that all monies paid have to be refunded. This might get around the cost issue.

DaddyDeuce

They do not like, but do not shut down, sites with 'lego' in the subdomain, e.g. gimmelego.blogspot.com

It isn't a matter of what LEGO likes, but more a matter what the courts have said. Courts have generally held that a domain name owner can do whatever they want with the subdomain names. So LEGO would have very little legal ground to stand on if they tried taking down subdomains. Patmont Motor Werks Inc. v. Gateway Marine Inc is one of the early cases here, although it dealt more with things like mydomain.com/lego instead of lego.mydomain.com. Jews for Jesus v. Google would have been more directly relevant, but it was settled out of court.

DaddyDeuce

(double post)

mayberts

Thanks for your input everyone, I'll keep in informed of the outcome

Brewer51

Lego are quite right to do so.

Everything that @DaddyDeuce said is correct in the UK too, as far as I'm aware. Trademark rights only stretch to that market in which you have them (unless of course, the brand is so famous it is impossible to use it). Lego are right to take any precautions against their brand. They want to avoid the (highly unlikely) possibility that people associate your son's website with TLG and business is affected. Just covering all areas I suppose.

ljames28

I previously looked into UDRP (a way of retrieving domain names registered in bad faith), theres a archive of many of them at the WIPO, including 400 that lego have retrieved.

http://www.wipo.int/amc/en/domains/search/ search for lego in the "Search WIPO Cases by Domain Name" section

Matthew

Sorry but why is he running a website in the first place at 12?

Same reason a friend of mine's 8 year old has his own (template build admittedly) forum for his school friends? If they can learn IT skills at that age why criticize it, didn't someone say recently that the country that invented the computer is falling behind due to a lack of younger people with IT skills...

jeffmace

Yes LEGO is very strict about the domain name rule. Right on their fair play policy is states this:

The LEGO Trademark cannot be used in an Internet Address
The LEGO trademark should not be incorporated into an Internet address. Internet addresses have become useful tools for people to identify the source of a homepage. Using "LEGO" in the domain name would be creating the misleading impression that the LEGO Group sponsored the homepage.

http://aboutus.lego.com/en-us/legal-notice/fair-play/