Thu 1. Aug 2024, 21:36
Lego Juris A/S is another company that - like AVM in the fritz.box case - had to fight over a .box domain. The brick manufacturer prevailed in the UDRP proceedings for lego.box. However, the question remains as to what will become of the NFT lego.box.
The Danish LEGO Juris A/S believes its trade mark rights have been infringed by the lego.box domain. The domain was registered on 26 February 2024. The top level domain .box stands for the linking of Web2 domains in the classic DNS with blockchain-based Web3 domains. The complainant identified Paul Gauvreau from the USA as the domain holder. He claimed in the UDRP proceedings that he was an employee of 3DNS, the reseller through which lego.box was registered. He could not understand why he was registered as the owner. The actual owner according to the 3DNS system is Androux Reabow from Great Britain. He stated that he had purchased the domain from my.box, a marketplace for .box domains, together with the associated NFT. He was prepared to discuss the matter with the complainant and bring about a solution. The case did not appear to be against him, but against "previous parties", which is why the proceedings were unlawful. He had also offered to return the domain to my.box and take another one in its place, whereupon the reseller had offered a refund.
The British lawyer Adam Taylor, who was appointed as the decision-maker, registered Gauvreau and Reabow as opponents of the proceedings. He upheld the complaint and decided to transfer the domain (WIPO Case No. D2024-1725). He confirmed the similarity between the trade mark and the domain in one sentence. With regard to the question of a right or legitimate interest of the opponents in the domain, he initially considered prima facie evidence to have been provided, according to which they themselves do not hold a corresponding trademark, are not known under the domain and are not authorised by the complainant to use the trademark. The respondents did not rebut the prima facie evidence and did not provide any relevant evidence to prove their own rights or legitimate interests in the lego.box domain. Taylor then turned to the question of bad faith. Here, he first made it clear that the opponents had not submitted a proper response. Apart from that, however, none of the parties had fully addressed or explained the "Web3" context, let alone argued that this might entail different considerations than those that would arise in a "traditional" UDRP review. Therefore, Taylor adhered entirely to the dictates of the UDRP. He assumed that the opponents were aware of the famous "LEGO" trade mark when the domain was registered and that the registration of the domain served to attract the attention of internet users to the website under the domain. A possible misleading effect is not reduced by the fact that users do not find any data on the complainant on the website; in this case, the domain creates the risk of assuming a connection with the complainant. The opponents had not given any comprehensible explanation as to why they had registered the domain. The arguments put forward by the opponents tended to blame the provider 3DNS and my.box because they offered the domain in the first place. But the opponents had ultimately made the decision to register the domain. In Taylor's opinion, this constituted bad faith and all the requirements of the UDRP were met, which is why he upheld the complaint and ruled that the domain be transferred to the complainant.
As simple and clear as this case is, it remains unclear what will happen to the Web3 domain lego.box, which is ultimately an NFT in the blockchain. Obviously, it is not covered by Taylor's decision, which, in the absence of a corresponding submission by the parties, bypassed the issue and adhered entirely to the UDRP. This, in turn, does not provide for any regulation with regard to Web3 domains and only applies to domains in the DNS. In view of this, and to the extent that a new round of applications for top level domains in the DNS will actually take place at the end of 2026, for which numerous endings linked to Web3 have already been announced for registration, a solution should be tackled - perhaps in an annex to the UDRP or in a future WIPO Overview 4.0.
The UDRP decision on the lego.box domain can be found at:
https://www.wipo.int/amc/en/domains/dec ... 4-1725.pdf