Newsletters and Bulletins / May 2002 / Korea (South) |
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Korea (South) - LEGO Domain Name Decision Toyplaza,
a regional distributor of Lego A/S, who had registered the domain name
legokorea.co.kr, and advertised and sold LEGO toys on its associated website,
was prohibited from using the LEGO name and trademark on its website and
compelled to cancel its domain name.
The
Seoul District Court noted that, according to the Distribution Agreement with
Lego Korea, Toyplaza was prohibited from using Lego Korea's name and/or
trademarks in marketing activities without Lego's prior consent. On the other
hand, despite the fact that Toyplaza was also prohibited from using the domain
name legokorea.co.kr, the Court found that the registration of such domain name
was not, in itself, a marketing activity and, therefore, Toyplaza was not
required under the Distribution Agreement to cancel the domain name.
The
Court further held that no trademark infringement was present, since the LEGO
toys sold on Toyplaza's website were genuine and no consumer confusion would
arise as to the source of the goods. However, Toyplaza's associated website did
contain several elements which would lead consumers to believe that it was the
official website of Lego A/S or Lego Korea since it contained no indication
that Toyplaza was only a regional distributor of Lego A/S. The Court,
therefore, found that Toyplaza's advertisement and sale of LEGO toys on its
website was likely to cause consumer confusion and thus constituted unfair
competition. Toyplaza was, therefore, compelled to cancel its domain name. The
Court further stated that Toyplaza's use of the domain name legokorea.co.kr was
not sufficient evidence to support Lego's claim for trade name infringement.
Even
though Toyplaza had removed the associated website and linked the domain name
to its company webpage after the filing of the action, the Court held that past
activities raised sufficient likelihood of similar future uses, which justified
the decision to compel Toyplaza to cancel the domain name.
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