WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Ashley Core, Green Path Solutions and Noah Beauvais, Green Path Solutions

Case No. D2019-2267

1. The Parties

The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services AB, Sweden.

The Respondents are Ashley Core, Green Path Solutions, United States of America (“United States”) and Noah Beauvais, Green Path Solutions, United States, self-represented.

2. The Domain Names and Registrar

The disputed domain names <hempblocklego.com>, <hempblocklego.info>, <hempblocklego.net>, <hempblocklego.org>, <hempblocklegos.com>, <hempblocklegos.info>, <hempblocklegos.net>, <hempblocklegos.org>, <hemplegoblock.com>, <hemplegoblock.info>, <hemplegoblock.net>, <hemplegoblock.org>, <hemplegoblocks.com>, <hemplegoblocks.info>, <hemplegoblocks.net>, <hemplegoblocks.org>, <hemplegos.net>, <hemplegostore.com>, <legohempblock.com>, <legohemp.net>, <legohempnow.com>, <legoshemp.com>, and <thehemplegos.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2019. On September 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 19, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondents 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 Respondents of the Complaint, and the proceedings commenced on October 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2019. On October 21, 2019, the Respondent requested an extension of the deadline for Response. Pursuant to paragraph 5(b) of the Rules, the Response due date was extended to October 27, 2019. The Response was filed with the Center on October 28, 2019.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 8, 2019. 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 7.

4. Factual Background

The Complainant is the owner of the United States of America Trademark Registration No. 73032292 for the LEGO trademark dated December 9, 1975 (Annexes 3.1 and 3.2 to the Complaint).

The Complainant uses the LEGO trademark to identify inter alia construction toys, computer hardware and software, books, videos and computer controlled robotic construction sets.

The disputed domain names were registered on July 23, 2019 (<hempblocklego.com>, <hempblocklego.net>, <hempblocklego.org>, <hempblocklegos.com>, <hempblocklegos.net>, <hempblocklegos.org>, <hemplegoblock.com>, <hemplegoblock.net>, <hemplegoblock.org>, <hemplegoblocks.com>, <hemplegoblocks.org>, <hemplegoblocks.net>, <hemplegos.net>, and <legohemp.net>); July 29, 2019 (<hempblocklego.info>, <hempblocklegos.info>, <hemplegoblock.info>, and <hemplegoblocks.info>); August 3, 2019 (<hemplegostore.com>, <legoshemp.com>, and <thehemplegos.com>); and August 15, 2019 (<legohempblock.com> and <legohempnow.com>). No active webpage resolves from the disputed domain names. However, some of them contain a message stating that the respective website will become available soon.

5. Parties’ Contentions

A. Complainant

The Complainant asserts to own one of the best-known trademarks in the world, having been ranked number 1 at the top 20 Consumer Superbrands for 2018 by Superbrands UK in the category “Child Products – Toys and Education” (Annex 6.1 to the Complaint), as well as having been announced by Time as the “Most Influential Toy of All Time” (Annex 6.3). The Complainant further asserts that its group sells LEGO products in more than 130 countries, having the LEGO trademark acquired substantial inherent distinctiveness, deserving the special protection awarded to well-known trademarks foreseen in the Paris Convention and the TRIPS Agreement.

According to the Complainant, the dominant part of the disputed domain names comprises the registered and well-known trademark LEGO, the addition of the generic terms “hemp”, “block”, “blocks”, “store”, “the”, and “now” not detracting them from the overall impression, thus being the disputed domain names confusingly similar with the Complainant’s trademark. The Complainant believes that the addition of “block”, “blocks”, and “store” enhances the likelihood of confusion between the disputed domain names and its famous mark in view of the close association with the Complainant’s products, and, in its turn, the term “hemp” may, according to the Complainant for some reason, result in dilution to the Complainant’s prestigious trademark.

As to the absence of rights or legitimate interests, the Complainant argues that:

i. it has not found any trademarks or trade names registered by the Respondent corresponding to the disputed domain names, nor has it found anything that would suggest the Respondent’s legitimate interests or rights in the disputed domain names, given that the Respondent appears to be trading under the names Ashley Core and Noah Beauvais;

ii. no license or authorization of any kind has been given by the Complainant to the Respondent to register the disputed domain names, not ever having the Respondent been in a business relationship with the Complainant;

iii. it is highly unlikely that the Respondent did not know of the Complainant’s rights over LEGO at the time of the registration of the disputed domain names, being it clear that the fame of the Complainant’s trademark was what motivated the Respondent to register the disputed domain names;

iv. the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services given that the disputed domain names resolve to pages that are under construction or that lack content; and

v. the Complainant sent a warning letter to the Respondent prior to this procedure (Annex 9 to the Complaint) but Respondent did not offer any explanation for the registration of the disputed domain names and rather choose to register two of the disputed domain names, after having received such communication.

Lastly, the Complainant points out that given the well-known status of the LEGO trademark, the Respondent chose the disputed domain names to create an undue association as to the source of the disputed domain names which must be considered as having been registered and used in bad faith. The Complainant further adds that the Respondent is passively holding the disputed domain names, not being present any other indications that the Respondent could have registered and used the disputed domain names for any non-infringing purposes. In addition to that, the Complainant argues that the Respondent’s conduct of registering 23 domain names that reproduce the famous LEGO trademark characterize a pattern of bad faith conduct.

B. Respondent

The Respondent asserts to have developed industrial construction blocks, panels and related products which he intends to sign as L.E.G.O. and L.E.G.O.S. which would be acronyms for “Lightweight Environmentally Grown Organic” and “Lightweight Environmentally Grown Organic Systems”. Such products will be hemp based full size construction products, not similar to the Complainant’s miniature scaled toy sized products.

The Respondent further asserts that, according to public information on the history of the Complainant’s LEGO trademark, it is assumed that the trademark derives from the generic Danish phrase leg godt [laɪ̯ˀ ˈkɒt], which would mean "play well"; in view of that the Respondent contends that 23 domains including "hemp", "block", "legos", "lego", "now", and "the" would all be generic terms in essence and the Respondent’s intent is to legitimately use the disputed domain names in connection with such generic nature of the terms they are comprised of.

The Respondent also contends that the Complainant does not have any hemp product and has provided no proof of its intention to bring hemp products to the market, whereas the Respondent has obtained lab certification approvals in California and Michigan (Annexes 2 and 3 to the Response), as well as the creation of “Hempire” as a key identifier (Annex 1 to the Response), being the disputed domain names vital to the lone of business related to industrial hemp and to the legal business identity of GPSHEMPIRE.

Lastly, the Respondent states that he is actively working to put to use the recently purchased 1,000 plus hemp related domain names, having hired a technology company to expedite this process (Annex 4 to the Response is payment proof for such services), not there being any cybersquatting related bad faith in view of the Respondent’s newly formed business.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

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

(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.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Complainant has established its rights in the trademark LEGO (Annexes 3.1 and 3.2 to the Complaint). It is well accepted that the first element functions primarily as a standing requirement and that the 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’s mark is entirely reproduced in the disputed domain names and the addition of the generic terms “hemp”, “block”, “blocks”, “store”, “the”, and “now”, in this Panel’s point of view, does not distinguish the disputed domain names from the trademark.

For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain names. These circumstances are:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain names, in spite of not having acquired trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has attached as Annex 1 to the Response a Fictitious Business Name Statement filed by Green Path Solutions Inc. for the name GPSHEMPIRE before the California Secretary of State.

That name is not linked to the L.E.G.O. or L.E.G.O.S. acronyms creatively brought up by the Respondent and which would correspond to “Lightweight Environmentally Grown Organic” and “Lightweight Environmentally Grown Organic Systems”. Furthermore, there is no indication in the records of the creation of such acronyms or a business plan in connection with the exploitation of construction blocks made of hemp.

Moreover, the Respondent has not produced a single evidence or indication of a preparation to use the disputed domain names in connection with such products, particularly such products that would not seek to capitalize on the Complainant’s reputation and goodwill. The evidence filed by the Respondent solely indicates that he cultivates hemp and is somewhat linked to a company which will trade under the name of GPSHEMPIRE. (Annexes 1, 2 and 3 to the Response).

The Respondent has produced also no evidence in the sense that it would be known by the disputed domain names or by such acronyms.

Somewhat contradictorily the Respondent indicates that he intends to use the disputed domain names in connection with the generic nature of the terms contained therein and suggests that LEGO would somehow be a generic term for building or construction blocks.

The Complainant’s trademark however is not a generic term for building blocks and therefore cannot be regarded as such nor misappropriated irrespective of the prospective use in connection with hemp based building blocks.

Considering that the Complainant states that no authorization, license, permission, or consent was granted for the use of LEGO in the disputed domain names, under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith can be found in the use of the domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, no active use has been made of the disputed domain names. However, passive holding of a domain name can also constitute bad faith. Section 3.3 of the WIPO Overview 3.0 states that “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. The aforementioned factors are in essence present in this case.

For the reasons as those stated above, the Panel finds that the disputed domain names were registered and are being used in bad faith pursuant to paragraph 4(b)(iv) 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 names <hempblocklego.com>, <hempblocklego.info>, <hempblocklego.net>, <hempblocklego.org>, <hempblocklegos.com>, <hempblocklegos.info>, <hempblocklegos.net>, <hempblocklegos.org>, <hemplegoblock.com>, <hemplegoblock.info>, <hemplegoblock.net>, <hemplegoblock.org>, <hemplegoblocks.com>, <hemplegoblocks.info>, <hemplegoblocks.net>, <hemplegoblocks.org>, <hemplegos.net>, <hemplegostore.com>, <legohempblock.com>, <legohemp.net>, <legohempnow.com>, <legoshemp.com>, and <thehemplegos.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: November 23, 2019