The Complainant is Brett Holding B.V. of Amsterdam, the Netherlands, represented by Novagraaf Nederland B.V., the Netherlands.
The Respondent is Tim A’Court, Growlogic of Amsterdam, the Netherlands, represented by De Koning Vergouwen Advocaten, the Netherlands. 2. The Domain Names and Registrar
The disputed domain names and are registered with NameWeb BVBA and GoD, LLC (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2015. On November 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2015 and November 5, 2015, the Registrars transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on November 9, 2015.
The Center verified that the Complaint together with the amendment to 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 November 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2015. On November 27, 2015, the Respondent filed a request for an additional four calendar days to file the Response. In accordance with paragraph 5(b) of the Rules, the Center granted the extension of time to submit a Response until December 4, 2015. The Response was filed with the Center on December 4, 2015.
The Center appointed Alfred Meijboom as the sole panelist in this matter on December 8, 2015. 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 owns, inter alia, Community trademark 11378882 BARNEY’S FARM of April 26, 2013 for goods and services in classes 14, 16, 18, 24, 25, 31, 34, 35 and 43, including for seeds, in particular for cannabis, natural plants and flowers, and retail and wholesale services including retail and wholesale services provided electronically over the Internet connected with the sale of seeds, plant seeds, flower seeds, natural seeds, cannabis seeds, cannabis products, and seedlings.
The Respondent registered the disputed domain name on August 10, 2011 and the disputed domain name on December 20, 2011. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it has been known as “Barney’s” and “Barney’s farm”, and using these terms as mark and tradenames, at least since 1993 for high-end coffee shops where cannabis seeds and plants, and related products are being sold. The Complaint also performs research and development regarding cannabis seeds and plants, also in the medical field. The Complainant is not only active in the Netherlands, but also in several other member states of the European Union, and claims to enjoy a reputation in the field of (medical) cannabis products and services in many countries of the world. The disputed domain names create a likelihood of confusion with the Complainant’s BARNEY’S FARM trademarks as they give the impression that they are linked to websites belonging to the Complainant.
The disputed domain name reverts to a website that sells the Complainant’s official products, uses the Complainant’s so-called sun logo, for which the Complainant filed an International Trademark on January 15, 2014, and pretends to be the Complainant by the use of the words “we” as if the Respondent is the Complainant and owns the BARNEY’S FARM trademark. The disclaimer on the website is misleading as it reads “Barneys Farm Seeds trading conditions are registered at the Chamber of Commerce in Amsterdam, the Netherlands under no. 34243949”, which number does not, as it suggests, identify the Complainant but rather an affiliated company of the Respondent. The Complainant did consent to only temporary use by the Respondent of the disputed domain name . Although the Respondent was aware of the condition that such use was only temporarily allowed, he refused to reply to the Complainant’s requests to stop using the disputed domain name . The Complainant never consented to the use of the disputed domain name . The Respondent was further never appointed distributor, and was never granted a license to use the Complainant’s trademarks. The Respondent is also not supplied by the Complainant.
The Complainant asserts that for the reasons above and the fact the Respondent has no trademark registrations for BARNEY’S or BARNEY’S FARM, while the Complainant adopted and extensively used the mark BARNEY’S FARM well before the registration of the disputed domain names, and that its mark became well-known, the Respondent’s use of the disputed domain names could not give rise to rights or legitimate interests in respect of the disputed domain names.
The Complaint also alleges that the disputed domain names were registered and are being used in bad faith for the reasons mentioned before, and as the Respondent is aware of the Complainant’s trademark and does not make a bona fide use of the trademark. Bad faith use is further caused by the Respondent benefitting from possible confusion between the disputed domain names and the Complainant’s BARNEY’S FARM trademark as Internet users could believe that the Respondent is affiliated to the Complainant or uses the disputed domain names with the Complainant’s consent. The Respondent’s use of the disputed domain names is also to disrupt the Complainant’s business by diverting Internet traffic from the Complainant’s genuine website to the Respondent’s website under the disputed domain names and by interfering with the Complainant’s ability to promote its products under its BARNEY’S FARM trademark. The Responded also used the disputed domain names, to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's BARNEY’S FARM trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location of a product. B. Respondent
The Respondent denies the Complainant’s assertion that it has been using the BARNEY’S FARM trademark for more than 25 years and points out that the Complainant’s Community trademark identified in paragraph 5 above was registered in November 2012, while the disputed domain names were both registered in 2011 so that the alleged infringement of the Complainant’s rights when the Respondent registered the disputed domain names is futile. The Respondent further argues that the Complainant’s claim that the disputed domain names are confusingly similar to the BARNEY’S FARM trademark because the impression exists that the disputed domain names are linked to the Complainant was actually intended pursuant to an agreement between the Complainant and the Respondent. The Respondent refutes the Complaint’s claim that it has only consented to the Respondent’s temporary use of the disputed domain name and asserts that the Complainant and the Respondent agreed that the Respondent would build and exploit a web shop to sell the Complainant’s products, and that specific commercial conditions apply, while the Complainant would have agreed that the disputed domain names would be owned by the Respondent. According to the Respondent its right and legitimate interest in respect of the disputed domain names follows directly from the agreement with the Complainant.
The Respondent’s website launched in September 2012 and the Complainant made links to the Respondent’s website in accordance with the agreement. The offerings made by the Respondent were bona fide pursuant to the agreement between the parties. The Complainant further used the Respondent’s web shop for different events in 2013, for which reason a web module was implemented. As a result of the Respondent’s web shop the Complainant’s profits increased so that it did not suffer any damage as a result of the Respondent’s use of the disputed domain names.
The Respondent argues that the registration and the use of the disputed domain names were not in bad faith as the Complainant was aware of such registration and such use as it was part of the agreement between the parties. Consequently, the Complainant’s allegations as if negative experiences of Internet users with the Respondent website could have a negative impact on the Complainant, and the Respondent diverting Internet traffic from the Complainant’s genuine website to the Respondent’s website cannot hold. Only when the Complainant had a third party build a web shop for the Complainant, the Complainant decided to link to this new web shop. When the Respondent complained, the Complainant promised to reapply the links to the Respondent’s web shop if the Respondent would use some new logo’s and product images on its web shop, which the Respondent did. However, after the changes were made the Complainant did not reapply the links, despite the Respondent’s requests which remained unanswered. In 2015 the Complainant filed several BARNEY’S FARM trademarks in the Benelux and internationally and stopped supplying the Respondent so that the Respondent was forced to buy from the Complainant’s distributors at higher cost. The Respondent asserts that the Complainant breached its contract with the Respondent or acted unlawfully against the Respondent. As the Complainant agreed to the Respondent registering and using the disputed domain names, such registration was made in good faith, which cannot be deemed to having been made in bad faith over the years when circumstances changed. The Respondent further argues that it has not intentionally attempted to attract, for commercial gain, Internet users to its website using the disputed domain names. 6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
It is well established that the generic Top-Level Domains (“gTLDs”) may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
When disregarding the gTLD, the disputed domain name is nearly identical to the BARNEY’S FARM trademark, the only difference being the apostrophe and space having been left out. As such marks cannot be reflected in a domain name they also need to be ignored in the comparison so that the disputed domain name is identical to the Complainant’s trademark BARNEY’S FARM.
The disputed domain name only adds the generic word “shop” to the Complainant’s trademark BARNEY’S FARM. The added word is insufficient to differentiate the disputed domain name and Complainant’s trademark, and actually enhances the connection given the goods for which the marks are registered and used, and the nature of the Complainants’ business.
Consequently, the first element of paragraph 4(a) of the Policy is met. B. Rights or Legitimate Interests
The Complainants must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Although the Complainant claims that the Respondent was not authorized to register and use the disputed domain names, and did not use the disputed domain names in connection with a bona fide offering of goods, the Complainant acknowledged that it has consented to the Respondent’s temporary use of the disputed domain name . Although neither party submitted an agreement, the Respondent did submit evidence showing that the Complainant and its representative exchanged emails with the Respondent regarding the Complainant’s websites linking to the web shop which Respondent built and operated under the disputed domain name in the 2011 and 2012 time frame. The Respondent also submitted an email from the Complainant of January 2015, promising to restore the links to the Respondent’s web shop. In contrast, the Complainant only submitted an email of the Complainant to the Respondent of October 9, 2015 requiring the Respondent to cease using the disputed domain names, and alleging that the Complainant only discovered the existence of the disputed domain name on that date.
It seems that neither the Complainant nor the Respondent disclosed their entire relationship and dispute(s) to the Panel. That being their good right, it makes it more difficult for the Panel to determine what actually happened between the parties. However, parties concur that the Respondent registered the disputed domain name and used it for, at least, a limited period of time, which covers at least the period of late 2011 until the beginning of 2015 according to the emails submitted. The Respondent was clearly a distributor for the Complainant and there is no clear evidence if this distribution relationship ended, other than that the Complainant sent the Respondent an email on October 9, 2015 requiring the Respondent to cease further use of the disputed domain names. Given the limited information provided by parties, the Panel can establish that an (apparently) oral distribution agreement between the Complainant and the Respondent was in place, but the Panel cannot establish if and if so when, this agreement was terminated. The Respondent did therefore have a right and legitimate interest with respect to the disputed domain name when it registered the disputed domain name and, at least, during a number of years thereafter. As the Panel cannot clearly establish if the distribution agreement ended, it is satisfied on the present case file that the Respondent has a right or legitimate interest in connection with the disputed domain name .
The Panel finds that the Respondent did not have a right or legitimate interest with respect to the disputed domain name for different reasons. The disputed domain name does not revert to an individual website, but rather only redirects Internet users to the Respondent’s web shop under the disputed domain name . The Complainant argued that it only gave the Respondent its consent to (temporarily) use the disputed domain name , which the Respondent repeated but not explicitly denied. The Complainant’s cease and desist email to the Respondent of October 9, 2015 mentioned that it only became aware of the disputed domain name at that date, which the Respondent did not contest. And the statistics of Internet traffic submitted by the Respondent only show active traffic to the disputed domain name . Further, according to the so-called Oki Data test, which was first applied in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, and ever since applied by the majority of panelists in UDRP cases, at least four elements should be met for a distributor’s offering of goods in connection to a domain name to be bona fide. The Panel finds that the Respondent does not meet the Oki Data criteria, in particular the fourth element that “the Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name”, as the Respondent registered more than one variation of the Complainant’s BARNEY’S FARM mark as a domain name, without providing any reason, let alone an acceptable reason, why the Respondent should use more than one domain name. For all those reasons the Panel is satisfied that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name . C. Registered and Used in Bad Faith
For the reasons as explained in Section 6.B above, the Panel is of the opinion that the Complainant agreed that the Respondent registered and used the disputed domain name , so that the Complainant has not satisfied the requirements of paragraph 4(a)(iii) of the Policy for the disputed domain name , so that the Complaint shall be denied in this respect.
This is different for the disputed domain name , which was registered and used by the Respondent without the Complainant’s consent. Although the Complainant did not have a registered trademark BARNEY’S FARM when the disputed domain names were registered, the Panel is satisfied that the Complainant had already been using and was already known by the mark BARNEY’S FARM at the time of registration of the disputed domain names, as shown by the extract of the Complainant’s company from the Dutch mercantile register and the very fact that both the Complainant and Respondent agreed that the latter could register and use the disputed domain name for a web shop selling the Complainant’s products under the mark BARNEY’S FARM. It is therefore clear that the Respondent had the Complainant’s mark in mind when he registered the disputed domain name without the Complainant’s consent and accordingly registered the disputed domain name in bad faith.
Although the Respondent only used the disputed domain name to redirect Internet users to the web shop under the disputed domain name for which he had the Complainant’s permission, he still intentionally attempted to attract, for commercial gain, Internet users to this web shop, giving such Internet users the impression that the Complainant (also) endorsed the use of the disputed domain name . In this respect and for the reasons explained in Section 6.B above the Panel is satisfied that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy with respect to the disputed domain name . 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 be transferred to the Complainant, and that the Complaint is denied with regards to the disputed domain name .
Alfred Meijboom
Sole Panelist
Date: December 22, 2015
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