LEGO Secures Transfer of shahrlego.com Following Trademark Misuse

The Complainant, LEGO Holding A/S, initiated a UDRP proceeding against the Respondent, mohammad hossein askari, payshkaran, concerning the domain name <shahrlego.com>. The Complainant asserted that the registration was unauthorized and specifically designed to exploit their globally recognized trademark to attract internet users to a website that appeared to be an official or authorized entity without any legal basis for doing so.

Basis for the Domain Transfer

1. The domain incorporates the Complainant’s registered trademark in its entirety, paired with the Persian word “shahr,” which translates to “city.” This specific combination mirrors one of the Complainant’s most prominent product lines, creating a direct link in the minds of consumers between the website and the official brand.
2. The Respondent was never granted any license or permission to use the trademark in a domain name or for any commercial activity. There was no evidence suggesting the Respondent had ever been commonly known by the name or had established any independent reputation under that title prior to the registration.
3. The website associated with the domain was used to promote products identical to those of the Complainant. By leveraging a famous name to generate traffic for a commercial platform, the Respondent sought to benefit from the reputation of the brand to divert potential customers to their own site.

Indicators of Deceptive Registration

The selection of a domain that specifically references a major product theme suggests a clear awareness of the Complainant’s business operations. The Respondent’s failure to include a prominent disclaimer on the website to clarify the lack of any official affiliation further points to a strategy of capitalizing on user error or brand recognition for financial gain. The registration of such a distinctive and famous name by an unrelated party typically indicates an intent to disrupt the Complainant’s market presence.

Protecting Brand Integrity in Global Markets

This case highlights the necessity for brands to monitor international domain registrations that combine trademarks with descriptive terms in various languages. Even when a domain includes non-English components, the core identity remains protected if the usage implies a false connection. For businesses, the strategic takeaway is that active enforcement is vital to prevent third parties from leveraging brand equity to host unauthorized retail environments.
If you are dealing with unauthorized use of your intellectual property or need to recover descriptive domain names, the ClaimOn team offers expert assistance to help you reclaim your digital assets and secure your brand.