The Complainant is Aurora Cannabis Inc., Aurora Marijuana Inc., Aurora Cannabis Enterprises Inc., Canada, represented by Parlee McLaws LLP, Canada.
The Respondent is Byron Smith, Canada, who has represented himself. 2. The Domain Names and Registrar
The disputed domain names , are registered with 1API GmbH 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2019. On March 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names on March 19, 2019, the Registrar transmitted by email to the Center its verification response confirming that the 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2019. The Response was filed with the Center on June 13, 2019.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 27, 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.
The proceedings were suspended from April 15, 2019 to June 14, 2019. The Proceedings were reinstituted on June 15, 2019. 4. Factual Background
The Complainants are a group of related companies that operate in the cannabis industry in Canada. The Complainant, Aurora Marijuana Inc. owns a trademark registration for AURORA under Canadian Registration No. TMA 1,010,578 filed on May 16, 2014 and registered on December 6, 2018.
The Complainants have used the AURORA trademark in association with the sale of medical marijuana since January 4, 2016. The sale of recreational marijuana became legal in Canada in October, 2018, and the Complainants have used the AURORA trademark in association with recreational versions of the product since that time. The Complainants’ registered services also include education regarding the cultivation of marijuana, sale of marijuana, and health benefits associated with the use of marijuana since November 11, 2015.
The Respondent registered the disputed domain names and on April 20, 2017. At the time the Complaint was filed, the disputed domain names reverted to parking pages, which featured links to websites of third parties offering a variety of products and services. 5. Parties’ Contentions A. Complainant
The Complaints assert that they own registered rights in the trademark AURORA since at least December 6, 2018, and common law rights in the mark since at least as early as November 11, 2015. The disputed domain names and were registered on April 20, 2017, and are confusingly similar to the Complainants’ trademark. The addition of the word “drops” does not distinguish the disputed domain names from the Complainants’ registered and common law trademarks.
The Complainants also contend that the Respondent has not used the disputed domain names in association with a bona fide offering of goods and services. The Respondent is not commonly known by the disputed domain names and has not acquired any trademark rights. The Complainants further submit that the Respondent redirected the disputed domain names to a website of one of the Complainants’ competitors, at one point in time.
The Complainants argue that the Respondent registered the disputed domain names for the purpose of selling the names for monetary gain. This conduct is not evidence of a bona fide offering of goods and services, and is also evidence of bad faith under the Policy. B. Respondent
The Respondent submits that the Complainant’s trademark AURORA was not registered at the time he registered the disputed domain names. He subsequently conducted a trademark search in Canada, to confirm that “aurora” in combination with “drops” was not registered or pending in any form. The Respondent also states that “aurora” is a common word and there are 128 other registrations on the Canadian Trademarks Register that contain the word “aurora”. Furthermore, the addition of the word “drops” to the word “aurora” does not necessarily relate to the field of cannabis products, and potentially relates to other unrelated categories of goods.
The Respondent also contends that the registration of the disputed domain names for resale is not unlawful or contrary to the Policy, and does not on its own constitute bad faith.
Lastly, the Respondent submits that it did not target the Complainant for purchase of the disputed domain names, and when the Complainant and the Respondent entered into settlement negotiations, the Respondent only sought compensation of his out-of-pocket expenses in the amount of CAD137.46. The Complainant agreed to pay CAD100 for the disputed domain names, but negotiations failed due to other terms. The Respondent submits that this is not evidence of bad faith under the Policy. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainants now own registered rights in Canada for the word mark AURORA. Although the disputed domain names are not identical to the registered mark, confusing similarity has been established by virtue of the use of the same word AURORA as the first and dominant element of the domain names. Pursuant to the threshold established under the Policy 4(a)(i), the Panel is satisfied that the Complainants have established rights in the trademark AURORA and that the disputed domain names are confusingly therewith.
As the Panel notes that the AURORA registration in question was only registered after the disputed domain names were registered, it is important to review the Complainants’ attempt to establish common law rights in the AURORA mark prior to April 20, 2017. In its argument, the Complainants properly lay out the evidentiary requirements under the Policy to prove common law rights. In particular, the relevant factors listed in Section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) are set out, including duration and use of the mark, amount of sales, extent of advertising, actual public recognition, and consumer surveys.
When the Complainants submitted its evidence – intended to be measured against this list of factors – the actual proof falls below the usual threshold. In particular, details of the use of the mark are weak, consisting of signage from four trade shows, and a website home page. The biggest failing is the total absence of proof of sales, save for a single redacted invoice. To establish the necessary reputation to support common law rights, the foundational proof ought to consist of actual sales and promotional efforts. In the absence of any tangible evidence of the scope and scale of results, it is impossible to make a finding that common law rights of any substance existed prior to April 2017.
This finding does not undermine the Panel’s finding on the first element of the Policy, as the Panel has previously indicated that the registered AURORA mark is sufficient to support a conclusion in favour of the Complainant. However, the extent of actual reputation on the Complainants’ mark is relevant to the bad faith analysis, as set out below. B. Rights or Legitimate Interests
Due to the findings under bad faith, it is unnecessary for the Panel to reach a decision on Rights or Legitimate Interests. C. Registered and Used in Bad Faith
The Complainants’ arguments and evidence with respect to bad faith are set out briefly in the space of two paragraphs. The principal submission is that the Respondent registered the disputed domain names “primarily for the purpose of selling, renting or otherwise transferring the domain names”. The evidence of the Respondent’s commercial purpose is set out in a series of emails beginning in August, 2018, where the Respondent inquired “whether the recipient of the e-mail would be interested in acquiring the Disputed Domains”. The Panel has reviewed the email exchanges, and confirms that discussions about the transfer of the disputed domain names did occur, but notes that the mere fact of a potential sale being discussed between the parties is not necessarily probative of bad faith.
The Policy (paragraph 4(b)(i)) precisely describes the set of circumstances on which Complainants rely, but includes one additional element:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; [emphasis added]”
On the facts set out in this Complaint, it appears that the Respondent has not asked for excessive compensation, as the only figure in evidence is CAD100 for the transfer of the disputed domain names, compared to incurred costs of CAD 137.46. In these circumstances it does not appear that The Respondent has engaged in conduct that meets the requirements under paragraph 4(b)(i). The Complainants have overlooked one of the essential elements of proof under this bad faith scenario.
The second argument raised by the Complainants is founded on an allegation that the Respondent redirected visitors from the disputed domain names to a competitive website. On its face, this allegation appears to indicate a deliberate and possibly abusive attempt to divert traffic to another cannabis supplier. However, the actual evidence in support of this claim is incomplete. In fact, the only proof relating to this issue is embedded in an email from the Respondent himself dated September 1, 2018 where he says “I have no problem removing the redirection of the domain.” There is no other evidence of the surrounding circumstances, as to when the redirection was initiated, or whether there was ever any objection taken to it, or precise identification of this website, or if in fact the Respondent voluntarily removed the redirection. In the circumstances, the Complainants ought to have explained what happened in additional detail, and if there was prior correspondence, it should have been produced. As it stands, the evidence is incomplete, and as such is insufficient to warrant a finding of bad faith.
See generally on bad faith, section 3.2.1 of the WIPO Overview 3.0.
The final factor considered by the Panel is that the Respondent conducted a trademark search in September, 2017 which confirmed that “aurora” and “drops” in combination was not a mark of record on the Canadian Register. That remained the case until recently, when the Complainants filed a new trademark application for AURORA DROPS in Canada, in association with a broad range of marijuana-related wares and services. This application references use of the mark AURORA DROPS in Canada “at least as early as April 19, 2017” with respect to “herbs” for medicinal purposes containing cannabis oils, among other products and services. The Panel notes that the claimed date of first use is one day prior to the Respondent’s registration of the disputed domain names. In these circumstances, it is peculiar that the Complainants never put forward any evidence that they had ever used AURORA DROPS at any time as a trademark in Canada. This filing took place on May 10, 2019, during a period of time when the Complainants had requested suspension of these proceedings to permit settlement discussions. In the interest of candor, the Complainants ought to have brought the filing to the Panel’s attention. The only place the pending application does appear is in the Respondent’s evidence as part of the list of AURORA-formative marks on the Canadian database as of June 11, 2019 (Annex 2 to the Response).
As noted previously, the Complainants’ proof of common law rights in AURORA was deficient for purposes of this proceeding. If there was indeed common law use of the AURORA DROPS at any relevant time by the Complainants, proof of that use was also deficient. This may be a function of the fact that the marijuana market in Canada was only operational at full scale beginning in October, 2018. In any event, the Complainants’ evidence of common law rights has not satisfied the Panel that there was a substantial reputation as of April, 2017, when the disputed domain name was registered. The Complainants’ belated attempt to register AURORA DROPS has only served to muddy the waters.
With respect to bad faith as it is defined under the Policy, the Panel is not satisfied that the Complainants have met the burden of proof to establish this element. This finding is predicated on the limited evidence that formed the record for this file, and the Panel acknowledges that a different proceeding, with access to additional evidence and cross-examination of witnesses, could lead to different conclusions. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Sole Panelist
Date: July 12, 2019
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