Complainant is Blue Diamond Growers of Sacramento, California, United States of America (“United States” or “U.S.”), represented by Hanson Bridgett LLP., United States.
Respondent is Loel Wood, Christianna Enterprises, Inc, 9Sight2020, LLC., and L Wood of Fresno, California, United States, self-represented. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2017. On April 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 25, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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”).
On May 16, 2017, the Center received two email communications from Respondent.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2017. Respondent did not submit any formal response. Accordingly, on June 9, 2017, the Center notified the Parties that the Center would proceed to commence the panel appointment process.
The Center appointed Lawrence K. Nodine, Andrew Bridges, and Evan D. Brown as panelists in this matter on July 3, 2017. The Panel finds that it was properly constituted. Each member of 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
As Complainant stated in its Complaint, Complainant is headquartered in California, United States, and is the world’s largest almond processor and marketer. From the time it was founded, in 1910, Complainant has used the mark BLUE DIAMOND in association with its almond products, and it owns the U.S. registration for the marks BLUE DIAMOND (U.S. Registration No. 159,301), BLUE DIAMOND ALMONDS & Design (e.g., U.S. Registration No. 3,711,265), BLUE DIAMOND GROWERS & Design (e.g., U.S. Registration No. 3,711,267) (collectively, “BLUE DIAMOND marks”), among others. Complainant sells its products using the BLUE DIAMOND marks and promotes its products on its primary website “.” In addition, Complainant has registered numerous domain names that incorporate the BLUE DIAMOND mark and that resolve to Complainant’s primary website. Over the years, Complainant has spent millions of dollars in advertisements and promotions tailored to garner brand recognition. For example, Complainant has sponsored national sports teams such as the Sacramento Kings basketball team and the United States national swimming and volleyball teams.
Respondent Loel Wood resides in California, United States. According to his partial response, Mr. Wood’s company has a relationship to Complainant and he is an almond grower.
According to the Complaint, Respondent registered the disputed domain names over a ten-month period beginning on March 6, 2016. Each of the disputed domain names resolves to a parked page. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has long-established rights in the BLUE DIAMOND marks and that the disputed domain names registered by Respondent are confusingly similar to its mark. Complainant sorts the disputed domain names into three categories: disputed domain names that incorporate the BLUE DIAMOND marks in conjunction with a descriptive term such as “my,” “rancher,” or “almond rancher”; disputed domain names that incorporate Complainant’s mark but with a minor misspelling (e.g., , which misspells the word “grower”); and disputed domain names that incorporate Complainant’s mark in conjunction with the third-party mark KINGS (e.g., ), which Complainant argues does nothing to minimize the confusing similarity given Complainant’s sponsorship of the Sacramento Kings. According to Complainant, none of the above inclusions or alterations dispels the similarity between Complainant’s marks and the disputed domain names that fully incorporate Complainant’s BLUE DIAMOND marks.
Complainant maintains that while Respondent is an almond grower for Complainant, Respondent is not known by the BLUE DIAMOND marks and is not licensed or otherwise authorized by Complainant to use its marks in the disputed domain names. Further, Complainant argues that Respondent is not making a bona fide or noncommercial use of the disputed domain names as they resolve to parked pages with, according to Complainant, pay-per-click advertising links to websites, including to websites for Complainant’s competitors.
Complainant contends that Respondent registered the disputed domain names in bad faith as Respondent, given his status as an almond grower for Complainant, had full knowledge of Complainant and its rights in the BLUE DIAMOND marks at the time he registered the disputed domain names and proceeded to demonstrate his willful infringement of Complainant’s marks by registering additional disputed domain names in response to Complainant’s communications to cease. For example, Complainant shows that a month after Respondent’s registration of and , Complainant’s Field Supervisor told Respondent that he was not authorized to use Complainant’s trademarks, including in domain names. Despite this, according to Complainant, Respondent proceeded to register eleven additional domain names (including seven of the disputed domain names) incorporating Complainant’s BLUE DIAMOND marks. Similarly, according to Complainant, an emailed cease-and-desist letter from Complainant’s counsel on January 17, 2017, garnered the opposite reaction: the next day, Respondent registered six domain names (including two of the disputed domain names) fully incorporating the BLUE DIAMOND mark.
As for its claim of bad faith use, Complainant argues that Respondent’s passive holding constitutes bad faith, especially when considered in conjunction with Respondent’s pattern of conduct, which consists of registering a total of twenty domain names incorporating the BLUE DIAMOND marks and registering other domain names reflecting other well-known trademarks (e.g., AIR JORDAN, TESLA, STARBUCKS, CUBS, FITBIT, and FERRARI). B. Respondent
While Respondent did not file a formal Response to the Complaint, on May 16, 2017, Respondent emailed the Center claiming that he was a grower for Complainant and that he had registered the disputed domain names to “secur[e] and help[] to ensure the integrity of the brand of which I grow almonds for.” According to Respondent, “[t]he only products that should be promoted using the Blue Diamond trade mark is the Blue Diamond products and because we grow almonds exclusively for Blue Diamond and we are a part of the Blue Diamond Cooperative Association that’s all that would be promoted.” With the email, Respondent provided a Membership Certificate to Blue Diamond Growers, welcome letters from Complainant, and a Crop Agency Agreement between Complainant and Respondent’s company. 6. Discussion and Findings A. Identical or Confusingly Similar
Each of the twelve disputed domain names is confusingly similar to one or more of the BLUE DIAMOND marks. Ten of the disputed domain names fully incorporate either the BLUE DIAMOND or the BLUE DIAMOND ALMOND mark in association with an additional term. The remaining two incorporate the mark BLUE DIAMOND GROWERS but with a misspelling, leaving out the first “r” from “grower.”
Despite the misspellings and/or additional terms, at least one of the BLUE DIAMOND marks is recognizable in each of the disputed domain names. Accordingly, the Panel finds that Complainant has standing and has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that Respondent is not making a bona fide use of Complainant’s marks. Respondent’s email hints at a contention that he claims rights similar to those enjoyed by resellers and dealers. The Panel finds that this defense is not available here. Respondent does not use the associated webpages to sell only Complainant’s goods or services. Instead, Respondent has parked the pages and offered links to third-party sites. “Panels have found that websites do not normally meet the Oki Data requirements as they do not themselves offer the goods or services at issue.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8.2. And the webpages for the disputed domain names make no effort to explain or clarify Respondent’s relationship to Complainant. Respondent’s statement that he was holding the domain names to help ensure the integrity of the BLUE DIAMOND marks rings hollow in the face of his holding the domains personally and not turning control over to Complainant.
The Panel finds that Complainant has satisfied paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant alleges that Respondent was plainly aware of Complainant’s rights. Even after he was advised of Complainant’s rights, he registered several more domains, in defiance of Complainant’s claims. According to the Complaint, Respondent’s registration of domain names that combine Complainant’s BLUE DIAMOND marks with KINGS, referring to the Sacramento Kings professional basketball team with which Complainant has a relationship, is especially damning evidence of bad faith. The Panel finds that, based on the Complaint, Respondent was more likely than not aware of Complainant’s rights and chose to disregard them to secure for himself domain names that plainly referred to Complainant. This constitutes registration in bad faith.
Respondent has also used the domain names in bad faith. When Complainant gave notice of its rights and insisted that Respondent stop registering domains incorporating its trademarks, Respondent’s defiant answer was to register more domain names that include Complainant’s marks. Moreover, Respondent has not responded to evidence that he has registered domain names incorporating many well-known marks —AIR JORDAN, TESLA, FERRARI, CUBS, STARBUCKS, and FITBIT. This evidence supports the Panel’s finding that Respondent is attempting to interfere with the business of Complainant and that his effort to hoard multiple domain names, including domain names combining BLUE DIAMOND with KINGS, constitutes a use of the domains in bad faith to injure Complainant. 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 , , , , , , , and be transferred to Complainant and that , , and be cancelled.
Lawrence K. Nodine
Presiding Panelist
Andrew Bridges
Panelist
Evan D. Brown
Panelist
Date: July 17, 2017
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