The Complainant is FLRish IP, LLC, United States of America (“United States”), represented by Evoke Law, PC, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Ngom Marceline Anwi, Webmastersmalingo, Cameroon. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2019. On May 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 3, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 3, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on May 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2019.
The Center appointed Charles Gielen as the sole panelist in this matter on May 31, 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 a company operating cannabis dispensaries, delivery services, manufacturing, and cultivating pursuant to California’s Medicinal and Adult-Use Cannabis Regulation and Safety Act. The Complainant owns numerous trademark registrations for HARBORSIDE, such as United States registration No. 5509269 registered on July 3, 2018, for goods and services in classes 25, 35, 41, and 44; as well as for a device mark containing the word HARBORSIDE, such as International registration No. 1361694 registered on May 15, 2017, for goods and services in classes 25, 35, 41, and 44. Furthermore, the Complainant holds the domain name incorporating the trademark HARBORSIDE.
The disputed domain name was created on April 16, 2019, and leads to a webpage that displays the trademark HARBORSIDE of the Complainant in connection with promotion and sale of cannabis and cannabis products. 5. Parties’ Contentions A. Complainant
The Complainant contends it is a California licensed enterprise operating cannabis dispensaries, delivery services, manufacturing, and cultivating pursuant to California’s Medicinal and Adult-Use Cannabis Regulation and Safety Act using the trademark HARBORSIDE and that at all times, the Complainant has maintained the necessary approvals to legally provide patients and/or adult-users cannabis products in California. Furthermore, the Complainant contends that it is well regarded nationally as an exemplary organization and was the subject of a documentary series on Discovery channel. Even before the Discovery Channel series debuted, the dispensary operated under the name Harborside had been prominently and positively reported on in the media, featured by news teams from around the globe including major news outlets in the United States, as well as in Canada, Japan, Germany, and the United Kingdom. More specifically, the Complainant has been favorably reported on by the “USA Today”, “NBC News”, “ABC 7 News”, “Reuters”, “CNet”, and “New York Times”. Due to its success and prominence, the Complainant argues it has established considerable goodwill in the trademark HARBORSIDE.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, since the disputed domain name reproduces the trademark HARBORSIDE in its entirety followed by the generic term “store”.
Furthermore, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant gives the following reasons for this. Firstly, the Respondent is not making use of, or did not make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name leads to a webpage that prominently displays the trademark HARBORSIDE in connection with promotion and sale of cannabis and cannabis products. While the Respondent’s website currently offers cannabis goods for sale, such offerings cannot be classified as being bona fide as they are being made with the intention to deceive consumers into mistakenly thinking they are purchasing from the Complainant. Secondly, the Respondent is not commonly known by the disputed domain name, nor has it acquired trademark or service mark rights to the word “harborside”. Finally, the Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant first of all contends that the disputed domain name resolves to an online shop pretending to offer the Complainant’s products. The Complainant anonymously contacted the Respondent using a chat possibility on the Respondent’s website requesting information about the Respondent’s advertised storefront location. The Respondent replied that it operated a cannabis dispensary in Oakland, California, at an address which is, in fact, the address of the Complainant’s licensed cannabis dispensary. The Complainant argues that the Respondent was necessarily aware of the Complainant’s trademarks when it sought to register the disputed domain name, as the Respondent is publicly claiming that it is associated with the Complainant’s cannabis retail store in Oakland, California. According to the Complainant, there is no doubt that the Respondent is intentionally attempting to mislead the public and attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy. A. Identical or Confusingly Similar
The Complainant proves that it has rights in the trademark HARBORSIDE based on numerous trademark registrations. The term “harborside” in the disputed domain name is identical to this trademark. The fact that the disputed domain name contains the term “store” does not alter the conclusion that the disputed domain name is confusingly similar to the trademark HARBORSIDE, since the word “harborside” remains clearly recognizable. The added suffix “.com” does not change the finding that the disputed domain name is confusingly similar, since the “.com” suffix is understood to be a technical requirement. In making the comparison between the trademark and the disputed domain name, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the trademark.
Therefore, the requirement under paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the Complainant’s trademark is not a term one would choose as a domain name without having specific reasons to choose such a term and this word certainly is not a descriptive term serving to indicate specific characteristics of the cannabis related goods and services involved. Furthermore, the disputed domain name was registered after the Complainant started to use the trademark HARBORSIDE. The Panel is convinced that the term “harborside” in the disputed domain name has no other meaning except to refer to the Complainant and its businesses, which is proven by the fact that the Respondent, on the website to which the disputed domain name resolves, refers to the business of the Complainant and some of its products. The Respondent must have been aware of the prior existence of this trademark, which is also proven by the fact that in a reply to a chat message from the Complainant, the Respondent clearly refers to the business of the Complainant. Finally, the Respondent has not come forward claiming any rights or legitimate interests and the Panel does not find so in the present record.
In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith.
The main reasons for this conclusion are as follows. It is obvious that the intention of the Respondent is to mislead consumers in believing that the disputed domain name is in one way or the other connected to the Complainant and its business. The Respondent is undoubtedly trying to attract, for commercial gain, Internet users and consumers by creating a likelihood of confusion with the Complainant and its business. This intention also follows from the fact that the Respondent is using the disputed domain name for a website which refers to the business and products of the Complainant without the Respondent being connected or affiliated in any way whatsoever with the Complainant. Also, in a reply to a chat message sent by the Complainant to the Respondent, the Respondent refers to the business of the Complainant and the address of that business. The Respondent has never been licensed or otherwise authorized to use the trademark of the Complainant. The Panel is of the opinion that registration and use of a domain name as described in this decision constitutes bad faith under the Policy.
The Panel therefore considers the requirement of paragraph 4(a)(iii) of the Policy to be met. 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.
Charles Gielen
Sole Panelist
Date: June 11, 2019
Full & Egal Universal Law Academy