Complainant is Kannaway LLC of San Diego, California, United States of America (“United States”), represented by Premium IP Services, P.C., United States.
Respondent is Domains By Proxy, LLC, DomainsByP of Scottsdale, Arizona, United States / Giovanna Salazar of Miami Beach, Florida, United States / Utopia CBD, Inc. of Miami Beach, Florida, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2018. On October 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 4, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 9, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 10, 2018.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on October 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2018. On October 26, 2018, the Center received an email communication from Respondent.
On November 1, 2018, the Center notified the parties that it would commence the panel appointment process. The Center appointed Robert A. Badgley as the sole panelist in this matter on November 5, 2018. 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
According to the Complaint, Complainant operates in the United States, Mexico, and Europe “in the hemp CBD (Cannabidiol) industries, specializing in supplying and retailing various hemp products containing naturally occurring cannabidiol, including various nutritional supplements, candies, cosmetics, edible products, and vaporizers.” Complainant has offered its goods under the trademark KANNAWAY since 2014.
Complainant holds several trademark registrations for the mark KANNAWAY, including Registration No. 4,924,998 with the United States Patent and Trademark Office. This mark indicates a January 29, 2014 date of first use in commerce of the KANNAWAY mark.
The Domain Name was registered on March 5, 2018. The Domain Name offers for sale “CBD supplements for your health and medical needs.” At least one of the web pages on Respondent’s site refers to its company name, Utopia CBD. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not formally reply to Complainant’s contentions. Respondent did send the Center an email dated October 26, 2018, in which Respondent refused to recognize the Center’s authority. Apparently conflating the Center with Complainant, Respondent stated that it is a registered company and that its website content “in no way copies or imitates that of any other company, much less that of your client’s.” 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the marks KANNAWAY through registration and use. The Panel also finds the Domain Name to be confusingly similar to the KANNAWAY mark. The term “Canaway” is phonetically identical to KANNAWAY. The fact that the Domain Name starts with a “c” and the mark starts with a “K” does not overcome the phonetic similarity noted above. The same can be said for the fact that the Domain Name’s word “Canaway” contains only one “n” while the KANNAWAY mark contains two “ns”. Further, the additional letters “inc” (a common abbreviation for “incorporated”) does very little to diminish the confusing similarity between the Domain Name and the mark.
Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate why it registered the Domain Name when, as far as the record here indicates, Respondent’s company name is not Canaway and instead appears to be Utopia CBD.
The website to which the Domain Name resolves is clearly commercial, and no “fair use” argument has been made, and therefore Respondent cannot claim legitimacy under the above-quoted Policy paragraph 4(c)(iii).
Respondent has presented no evidence that it is commonly known by the Domain Name, and hence paragraph 4(c)(ii) does not apply here.
Nor can Respondent claim a legitimate interest under paragraph 4(c)(i). The Panel concludes, based on the undisputed record before it, that Respondent is selling goods very similar to those offered by Complainant under its KANNAWAY mark. As discussed above, the Domain Name is confusingly similar to the KANNAWAY mark, and it is the Panel’s finding that Respondent has sought to trade off of the renown of the KANNAWAY mark to lure consumers to Respondent’s website.
Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Respondent has not denied knowledge of the KANNAWAY mark at the time the Domain Name was registered. In circumstances such as those present here, one would expect an innocent Respondent to state, in no uncertain terms: “I never heard of Complainant or its mark.” Moreover, given that the Parties are in the same business, i.e., retailing hemp and CBD products to Internet customers, the Panel finds it more likely than not that Respondent had Complainant’s KANNAWAY mark in mind when registering the Domain Name.
With respect to bad faith use, the Panel incorporates here its discussion above in the “rights or legitimate interests” section as a basis for finding bad faith, specifically, within the meaning of the above-quoted Policy paragraph 4(b)(iv). On the undisputed record before it, the Panel concludes that Respondent more likely than not has sought to sow consumer confusion and thereby lure Internet traffic to its website, for commercial gain.
Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: November 9, 2018
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