LEGO Holding A/S v Anton Sokolov

WIPO Case No. D2025-0494

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LEGO Holding A/S v. Anton Sokolov

Case No. D2025-0494

1. The Parties

The Complainant is LEGO Holding A/S, Denmark, represented by CSC Digital Brand Services Group AB,

Sweden.

The Respondent is Anton Sokolov, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <my-lego.world> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2025. connection with the disputed domain name. On February 10, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name
Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution
Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on February 12, 2025. In accordance with the Rules,
paragraph 5, the due date for Response was March 4, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 5, 2025.

The Center appointed Masato Dogauchi as the sole panelist in this matter on March 13, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph

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4. Factual Background

The Complainant is a limited company incorporated in Denmark doing business in toy markets in more than
130 countries, including Ukraine. In particular, the Complainant contends that its construction toy series

named LEGO is famous all over the world.

The Complainant has LEGO trademarks in many jurisdictions such as:

- Ukraine Trademark Registration No. 2347 for LEGO, registered on November 15, 1993;

- Japan Trademark Registration No. 520470 for LEGO, registered on May 21, 1958; and

- United States Trademark Registration No. 1018875 for LEG, registered on August 26, 1975.

The Complainant's licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in Ukraine and elsewhere.

The Complainant is also the owner of more than 6,000 domain names containing the mark LEGO.

The disputed domain name was registered on December 26, 2024. It was used to redirect Internet users to the Complainant’s official website. Although the disputed domain name does not currently host any active content, the Respondent retains control over the redirection.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with the Rules, paragraph 15(a), a panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since the Respondent has not made any substantive arguments in this case, the following decision is rendered on the basis of the Complainant’s contentions and other evidence submitted by the Complainant.

In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      the disputed domain name has been registered and is being used in bad faith.

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6.1 Preliminary Matters

Paragraph 10(b) of the Rules requires the Panel to ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case. Paragraph 10(c) requires that the administrative proceeding takes place with due expedition.

The Respondent’s mailing address is in Ukraine, which is subject to an international conflict at the date of this decision. These circumstances may impact case notification and it is appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules, whether the proceeding should continue.

The Panel is of the view that the proceeding should continue, having considered all the circumstances of the case.

The Panel notes that the mail service was able to deliver the Written Notice sent by registered mail to the Respondent’s address in Ukraine; also, the Complaint was delivered to the Respondent’s email address provided by the Registrar without any delivery failure. The Respondent has not opposed the continuation of

the proceedings.

The Complainant has specified in the Complaint that any challenge made by the Respondent to any decision to transfer the disputed domain name will be submitted to the jurisdiction of the courts at the location of the principal office of the concerned Registrar.

Additionally, as set out below, the Panel has formed the view that the Respondent has registered and used the disputed domain name in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of the LEGO trademark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The disputed domain name includes the Complainant’s LEGO trademark as a whole. Such fact supports a finding that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark. The addition of the term “my-” does not prevent the finding of confusing similarity. WIPO Overview 3.0, sections 1.7 and 1.8.

Accordingly, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of

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proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

The Panel finds that the Complainant made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the Respondent did not come forward with relevant evidence rebutting the prima facie case.

Accordingly, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, in consideration of the fact that the Complainant has been doing business in toy market for many years using the LEGO trademark, it is highly unlikely that the Respondent could have been unaware of the Complainant’s LEGO trademark at the time of registration of the disputed domain name on December 26, 2024. Therefore, it is found that the Respondent registered the disputed domain name in bad faith.

On the other hand, with regard to the requirement that the disputed domain name is being used in bad faith, the Respondent utilized the disputed domain name to redirect Internet users to the Complainant’s official website. Although the disputed domain name does not currently, by itself, host any active content, this can change at any time, as the Respondent retains control over the redirection. The use of the disputed domain name to redirect to the Complainant’s official website with no authorization indicates an intent by the Respondent to take unfair advantage of a likelihood of confusion with the Complainant’s LEGO trademark in bad faith. WIPO Overview 3.0, section 3.1.4.

Accordingly, the Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <my-lego.world> be transferred to the Complainant.

/Masato Dogauchi/
Masato Dogauchi
Sole Panelist
Date: March 19, 2025