LEGO Wins UDRP Case Over Domain Name: A Trademark Enforcement Case Study

In a significant case of trademark enforcement under the Uniform Domain Name Dispute Resolution Policy (UDRP), LEGO Holding A/S successfully secured the transfer of the domain name <my-lego.world> from Ukrainian registrant Anton Sokolov. This decision serves as a powerful precedent and offers essential insights for domain investors.

Case Overview:

• Complainant: LEGO Holding A/S (Denmark), a global leader in the toy industry with registered trademarks in over 130 countries and ownership of more than 6,000 LEGO-branded domains.
• Respondent: Anton Sokolov (Ukraine), who registered the domain <my-lego.world> on December 26, 2024.
• Registrar: PDR Ltd. (PublicDomainRegistry.com)
• Decision Date: March 19, 2025
• Panelist: Masato Dogauchi

Despite redirecting the disputed domain to LEGO’s official site—a seemingly harmless act—the registrant lacked permission, which was pivotal to the case.

Why LEGO Won: UDRP’s Three-Leg Test

1. Confusing Similarity: The domain name <my-lego.world> included LEGO’s entire trademark, and the prefix “my-” did not diminish the likelihood of confusion.
2. No Rights or Legitimate Interests: LEGO showed that the Respondent had no authorization to use its trademark and provided no evidence of legitimate interests or fair use.
3. Bad Faith Registration and Use: The panel concluded that the Respondent likely had prior knowledge of the LEGO brand and that redirecting the domain without consent constituted bad faith use.

Key Takeaways for Domain Investors:

1. Famous Marks Are Off-Limits: Unauthorized use of domains incorporating famous trademarks can lead to disputes, even if the intent seems benign.
2. Prefix Additions Don’t Mitigate Risk: Adding prefixes like “my-” does not reduce trademark similarity; it may increase the perception of association.
3. Passive Use Doesn’t Protect You: Control over dormant domains counts as active use under UDRP principles, meaning investors should be cautious even with inactive domains.
4. Respond or Risk Default: The Respondent’s failure to respond allowed LEGO to win uncontested. Silence can be detrimental in UDRP disputes.
5. Respect Jurisdictional Conflicts: Even in conflict zones, UDRP proceedings can proceed, so investors must remain vigilant regarding their rights.

Final Ruling:
“The disputed domain name <my-lego.world> is ordered to be transferred to the Complainant.” — Panelist Masato Dogauchi, March 19, 2025

This case exemplifies the importance of due diligence and respect for intellectual property in domain investing. The LEGO case serves as a cautionary tale for anyone involved in buying, selling, or holding domain assets.