On Eve Of Lego Movie 2 Release, WIPO Acts To Block Pirated Version

As the blockbuster animated movie Lego Movie 2 gets set to hit screens in the United States this weekend, the World Intellectual Property Organization had a release of its own: a domain dispute ruling against a pirate website purporting to offer a free version of the film for download ahead of the release.

Warner Brothers’ US release of The Lego Movie 2: The Second Part is scheduled for 8 February.

On 7 February, WIPO issued a decision against a ripoff site called “the-legomovie.com” which as of press time still was live on the Web with links offering free access to the first and and not-yet-released second film. The domain name was transferred to the complainant, Lego.

The decision, case D2018-2901, available here, was dated 1 February.

Geneva-based WIPO offers Uniform Dispute Resolution Procedures (UDRP) services, using outside experts to rule on internet domain name disputes.

The complainant was Lego of Billund, Denmark, represented by CSC Digital Brand Services AB, Sweden. The respondent was listed as: “Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America / Md Opu Ahmed of Rangpur, Bangladesh.” The respondent never responded in the proceedings.

The infringing domain was registered on 18 September and a cease-and-desist letter was sent by Lego on 15 October. It has been active for nearly 5 months.

The complaint was first filed on 20 December, amended on 21 December. The case was fairly open-and-shut, as Lego said it obtained its first trademark in Denmark back in 1954 (1975 in the US), and spotlighted its broad global presence and reputation, for instance citing a Time magazine cover from 2014 naming it the “Most Influential Toy of All Time.”

Lego owns more than 5,000 trademarks with Lego in the name, it said. The domain in question was determined to be “confusingly similar” to the Lego trademark, the registrant had no right to the domain, and it was registered in bad faith.

A question might be asked whether the 5-week process begun in late December involving such a clear-cut case could have moved even faster, as likely every day the pirated version was available was harmful to the company.The decision shows the timeline:

“In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 24, 2018. In accordance with the Rules, paragraph 5, the due date for the Response was January 13, 2019. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 14, 2019.” The Center appointed the panelist on January 18, 2019. “The Panel finds that it was properly constituted,” it said.

Beyond the scope of the domain dispute, one could ask, why is the site still up? How many downloads of the film were there, and how are they benefiting from the downloads? How did a pirated version get online in the first place?

One clue is that this is a repeat offender. According to the case, “the Panel notes that the Complainant has also shown that the Respondent has registered domain names incorporating other famous marks, for example: <superbowl2019.net>, <2020superbowl.net>, <oscars2018.net>, and <indy-500-live.net>.”

How do the registrars who allow these domains to be registered stop them? In this case, the registrar was NameSilo.

And finally, is there any penalty for the violators?