Lego Loses First UDRP

Lego finally loses a UDRP case.

LegoLEGO Juris A/S, makers of the popular legos toy, has filed nearly 300 UDRP cases to date. It hadn’t lost a single one — until now.

In a decision dated October 1 (but for some reason just published this week), a single member panel found against Lego in its case for the domain name

The domain was just registered this year. When Lego looked at the site it still had the registrar’s coming soon page with parking links on it. But the owner of the domain said he registered the domain for his son to display his lego projects and that the parked page was something his registrar created.

The panelist agreed that the respondent had rights or legitimate interests in the domain and that it wasn’t registered in bad faith. The panelist determined that the registrant was creating a non-commercial fan site, and that this is not necessarily forbidden under UDRP.


  1. says

    So does this mean that the other 299 cases involved commercial usage?

    It’s hard to believe that none of the other cases were fan sites which raises the question whether those respondents deserved to lose.

  2. says

    What about all the other UDRP cases where a registrar parked page showing links involving the trademark basically damned the registrant? I don’t understand how Lego wouldn’t win this one either.

  3. says

    This is the first time that I can remember where the complainant lost a UDRP case, and I feel that he got gipped. It is always the respondent who loses even if he has the right for the domain name. This time the panelist must have a lot of young kids and he made the decision not depending on rules, but rather on emotions

  4. says

    @Steve Jones

    From the decision:

    However, it is no longer present on the Respondent’s website, as the annex to the Response shows (and as confirmed by the Panel’s visit to the site on 1 October 2011). Accordingly, no links of any kind are now to be found on the Respondent’s website which appears to be just what the Respondent says it is: a place for his son to display representations of his LEGO creations and to seek responses from other interested parties.

    The registrant demonstrated their legitimate use.

  5. observer says

    i highly doubt Lego will pursue UDRP on a (harmless) fan site when it seems to know what it is doing — having done 300 cases and not lost one! I question if the decision is a result of a misjudgement or errors in the review process.

  6. BankLive says

    Interesting decision – although he was able to keep the domain – he admits that it’s use is to display “Lego” projects – with the trademark name “Lego” in the domain – isn’t that actionable for using a registered mark? So those cyresquaters can simply put what appears to be a non-commercial page and do what they want? What about showing use of thier products? Maybe expressing personal oppinions of cars test driven – this make no sence……Just seems to me that the very reason he registered the domain to include LEGO proves his intent to violate their registered marks.

  7. BankLive says

    @Dave Zan
    I’m just surprised with all the big companys reverse hijacking tactics of domains that the lego one was defensible. I bought a domain at auction a while back and within days received a “threat email” from Officmax simply because the name started with Max and they registered a type of paper using the same name. When i replied that it was just purchased and that my development plan for the domain had nothing to do with paper or any office supplies for that matter – they threatened to try to take in anyway because there was an ad that was displayed from the registars ad feed. I didn’t know it at the time but the attorney sent me a ruling link that even if I received no financial benefit from the ad feed page, that i, (or any domain owner) was still reponsible for the ads displayed and for tradmark infridgement if one of them at the bottom displayed an ad relating to their mark, with a case involving a parked page.

  8. says

    From what you described, you arguably had a defensible case. Practically, though, it depends on who you’re potentially dealing with.

    It can cost some to little to nothing to defend against a UDRP, especially if one’s virtually familiar with these things and doesn’t really need a lawyer. If it becomes a lawsuit, though, then that’s another story.

  9. BankLive says

    @Dave Zan
    It was easier under the circumstances just to redirect the domain and relpy sending them an email informing them my intent for the development and threated them back if they stay too far from office products and infridge on MY SM weather registered or not since they were now informed. An attorney asked me if I wanted him to send them a notice to F’Off – but i declined as I wanted to repsond myself.

    Realted – because a domain owner can not only lose a name if it is found to be too simular to a big comanies mark but also be hit with 100k punitive jundgement from my understanding, in court – the same should be true when they are found to be attempting to reverse hijack a name – I could use the 100k – and it would certainly reduce the rediculous claims some of them make.

  10. Misato says

    Lego is stupid. The vast majority of Lego websites provide information about Lego and their products. Their domain name, while containing the word ‘lego’ look nothing what-so-ever like or any of it’s sub directories.

    This is just ridiculous to go after every website that you can find that contain the word lego.

    Now for the stupidity of Lego.
    Number one. Any website that is about Lego is free advertising for Lego.

    Number two. A big percentage of these domains are owned by Lego enthusiast, which in turn mean, they are owned by Lego customers who give Lego a great amount of business.

    Number three. These are also websites that help other Lego enthusiast in ways that Lego can’t and / or chooses not to, thereby relieving Lego of customer support that might otherwise be demanded of Lego.

    And these are the people that Lego wants to sue???

    I have seen the WIPO website were Lego has actually filed copyright infringement claims over domains that go something like

    This, no doubt, would be a website about bikes, where the words are all spelled as one word as in most websites. The site would read as ‘look at that bicycle go”, of which Lego would sue just because the last four letters were L, E, G and O.

    How nit picky can you get? How much of a bully can you be? How ridiculous can you be? How much can you possible harass others without it coming back to bite you in the end.

    I have already communicate with former Lego website owners who say they will never do business with Lego again. One such person claims they will also be spreading as much bad publicity about Lego as they can, and I am sure there are others like him / her.

    It’s amazing that a company as large as Lego lacks this much business sense and this much apathy toward the very people ( their customers ) who keep them in business.

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