The Complainant is GW Pharma Limited, United Kingdom, represented by J A Kemp LLP, United Kingdom.
The Respondent is Paul Gluchanicz, United States of America (“United States”), self-represented. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2020. On May 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 19, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for all of the disputed domain names and providing the contact details. The Center sent an email communication to the Complainant on May 29, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant requested the suspension of the proceeding (before commencement) on June 3, 2020. Pursuant to paragraph 17 of the Rules, the proceeding was suspended until July 3, 2020. On July 3, 2020, the Complainant contacted the Center requesting the reinstitution of the proceeding. On July 6, 2020, the proceeding was reinstituted and the due date for the amendment to the Complaint was recalculated to July 11, 2020. On July 10, 2020, the Complainant contacted the Center requesting an extension to the filing period for the amendment to the Complaint. On July 14, 2020, the Center extended the filing period for the amendment to the Complaint to July 17, 2020. On July 14, 2020, the Complainant contacted the Center requesting an additional extension to the filing period for the amendment to the Complaint. The filing period was extended until July 20, 2020. On July 14, 2020, the Respondent objected to this extension. The Complainant filed amendment to the Complaint on July 20, 2020. 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 July 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2020. The Response was filed with the Center on August 12, 2020. The Center appointed Assen Alexiev, Marilena Comanescu, and Frederick M. Abbott as panelists in this matter on September 25, 2020. 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 The Complainant is a biopharmaceutical company incorporated in 1999. It is a member of the GW Pharmaceuticals Group, which has operations in the United States and in the United Kingdom. The Complainant’s parent company is listed on the NASDAQ Stock Market Exchange. In 2018, the Group’s total global revenue amounted to USD 15.4 million. The Complainant develops and produces the plant-derived cannabinoid therapeutics Epidiolex and Sativex. Sativex is the world’s first prescription medicine derived from the cannabis plant. It is approved for the treatment of spasticity due to multiple sclerosis in over twenty-five countries outside of the United States, and in the United States, Sativex is an investigational product for which the Complainant plans to seek approval by the US Food and Drug Administration (“FDA”). The Complainant is the owner of the following trademark registrations for the brand “Sativex” (the “SATIVEX trademark”): - the trademark SATIVEX with registration No. 2304388, registered in the United Kingdom on November 29, 2002 for goods in International Classes 5 and 31; - the trademark SATIVEX with registration No. 2395506, registered in the United Kingdom on December 16, 2005 for goods and services in International Classes 9, 16, 41, and 44; - the European Union trademark SATIVEX with registration No. 2993384, registered on October 29, 2004 for goods in International Classes 5 and 31; - the European Union trademark SATIVEX with registration No. 4800819, registered on November 23, 2006 for goods and services in International Classes 9, 16, 41, and 44; and - the trademark SATIVEX with registration No. 4281416, registered in the United States on January 29, 2013 for goods in International Class 5. The Complainant is the owner of the trademark SATIV with registration No. 3389714, registered in the United Kingdom on August 16, 2019 for goods in International Classes 5 and 31 (the “SATIV trademark”). The Complainant is also the registrant of the domain names The disputed domain names The disputed domain names The disputed domain name The disputed domain names All disputed domain names resolve to similar webpages displaying pay-per-click links to different matters, including such as “cannabis”, “cbd”, “joint”, “hemp”, “marijuana”, “weed”, etc. These webpages also contain the text “Would you like to buy this domain?” with a “Learn more” button next to it. 5. Parties’ Contentions A. Complainant The Complainant notes that its cannabinoid product Epidiolex is an oral formation of purified cannabidiol (“CBD”) for use in the treatment of serious rare illnesses in children. In June 2018 it was approved as a medicine in the United States by the FDA for the treatment of seizures associated with two rare and severe epilepsy syndromes, and this approval was a historic milestone and a major news-making event in the pharmaceutical industry, which significantly raised the Complainant’s profile in the CBD-based pharmaceutical field. The Complainant notes that Epidiolex was the first and remains the sole FDA-approved plant-derived cannabinoid medicine for distribution in the United States, where its net sales in the first half of 2019 amounted to USD 101.9 million. The Complainant submits that the history of its dispute with the Respondent is relevant to the case, and describes it as follows: - On August 16, 2019, the Complainant filed with the Center a complaint against the Respondent (among others) in respect of the disputed domain names - On October 18, 2019, the Complainant filed a new complaint with the Center against the same two disputed domain names, and on December 6, 2019, it withdrew its complaint inWIPO Case No. D2019-2010 in respect of the same two disputed domain names. On the basis of the new complaint, the Center openedWIPO Case No. D2019-3052; - On December 13, 2019, the Center notified the Respondent of the complaint inWIPO Case No. D2019-3052; - On December 18, 2019, the Respondent registered the disputed domain names - On January 6, 2020, the Respondent filed in the USPTO a trademark application SATIVEXTRACT with No. 88748017 in respect of goods in International Class 5, and a trademark application SATIVEXVAPE with No. 88748079 in respect of goods in International Class 34. The USPTO later cited the Complainant’s own United States trademark registration for SATIVEX as a bar to registration of the two trademark applications of the Respondent; - On February 13, 2020, the Respondent registered the disputed domain names - In March and April 2020, the Complainant’s counsel discussed with the Respondent’s then counsel potential settlement terms. The Respondent’s then counsel stated that the Respondent wanted a financial compensation covering the value of the transferred domain names, registration costs, transfer costs, and attorney fees required to reach such an agreement; - On May 2, 2020, the Complainant filed an amended complaint inWIPO Case No. D2019-3052 seeking to include the disputed domain names - On May 15, 2020, the Complainant filed its Complaint covering all the disputed domain names, and the Center opened the proceeding in the presentWIPO Case No. D2020-1246; - On June 9, 2020, the Respondent requested the Complainant to contact him directly rather than through his counsel, and on June 17, 2020, he admitted that he had registered the disputed domain names The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s SATIVEX trademark, as they contain this trademark in its entirety or a common misspelling of it, which differs from the trademark by a single character, where the Complainant’s trademark is still clearly recognizable. The disputed domain names also include either a dictionary word suggesting means of ingestion (“vape”, “vapor”), a dictionary word suggesting the means of production (“extract”), the dictionary word “cannabis”, or commonly used acronyms for identifying cannabinoids, such as “THC” for “tetrahydrocannabinol” and “CBD” for “cannabidiol”. The Complainant notes that the disputed domain name According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names, as it is not authorized to use the Complainant’s SATIVEX trademark and is not affiliated with the Complainant. The Complainant points out that the registrations of its SATIVEX trademark and of the domain names The Complainant further states that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain. Rather, the Respondent is using them in connection with parked webpages containing click-through advertising of third-party businesses offering “medical cannabis” and suggestions that the disputed domain names might be available for purchase. The Complainant also draws the attention to the fact that the Respondent registered the other seven disputed domain names only after it received notice of the Complainant’s objections to its registration and use of the disputed domain names The Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith. According to the Complainant, the Respondent has no plausible reason for registering domain names containing the Complainant’s SATIVEX trademark or a typo-variant of it. In view of its close involvement with the business of the company Herbal Extracts, which is a retailer of cannabinoid-based products and thus a competitor of the Complainant, the Respondent must have been aware of the Complainant’s Sativex product, which has been mentioned more than one hundred times in United States-based mainstream news sources since 2004, and of its SATIVEX trademark, which was registered in the United States at least six years before the registration of the disputed domain names. The Complainant further notes that the Respondent promoted on his Facebook page a December 2018 article discussing the Complainant’s SATIVEX product. In view of the above, the Complainant maintains that the Respondent has registered the disputed domain names targeting the Complainant’s SATIVEX trademark in attempt to unduly benefit from its unauthorized use, or for disrupting the business of the Complainant with cannabis-based products, where the Parties are competitors. According to the Complainant, the disputed domain names could be used for impersonating or imitating the Complainant, for creating the misleading impression that there is a connection with the Complainant, or for preventing the Complainant from reflecting its name in Top-Level Domain names similar to its The Complainant notes that the Respondent by its own admission registered the seven other disputed domain names to attempt to defend the registration of the disputed domain names On procedural matters, the Respondent submits that by withdrawing, refiling, requesting suspension and amending its Complaint, the Complainant has engaged in legal tactics meant to cause financial distress to the Respondent. According to it, on at least three occasions the Complainant requested an extension under the pretense of engaging in settlement negotiations, but never proposed anything different from the remedy it initially sought, which was rejected outright at the time. The Respondent also disagrees with the filing of the amended Complaint which includes additional disputed domain names for which the Complainant learned from the Respondent’s initial Response, and with the Complainant’s use against the Respondent of information that the latter provided in its own defense. The Respondent points out that it has established multiple consumer brands, acquired trademark rights to those brands, and has several applications pending with the USPTO for additional trademarks, including RELIEVIDOL, HYDROLEAF, and SATIVOIL. The Respondent also notes that it owns a wide array of domain names that support each of these brands, including The Respondent submits that it is developing and marketing several inhalable recreational cannabis products derived from industrial hemp, now legalized on a national level in the United States, including smokable flower, pre-rolls, vape oil, concentrates, topicals, beverages, and textiles, and does not offer pharmaceutical products similar to those sold by Complainant. Within its branding, the Respondent uses the common term “sativa”, from the most common marijuana plant cannabis sativa, together with other terms such as “extract” or “oil”. The Respondent draws a distinction between the Complainant’s Sativex product, which is a pharmaceutical oral spray for the treatment of multiple sclerosis, cancer, spinal cord injuries, bladder issues, and neurological disorders, meant to be administered at the direction of a physician, and not yet available on the United States market, and the Respondent’s products, which it describes as inhalable recreational products for personal use, derived from industrial hemp, and available for sale immediately. The Respondent maintains that it has rights in the disputed domain names, as it has a bona fide intention of using them in relation to its brands of inhalable cannabis products, as evidenced by its other trademarks and domain names. To differentiate its trademarks from other products available in the United States, the Respondent has included “cbd”, “thc”, “vape”, and “vapor” in the disputed domain names, so they create a distinct impression different from the Complainant’s pharmaceutical product. According to the Respondent, consumers, particularly in the United States, will be able to understand the difference between the disputed domain names and the products of the Complainant. According to the Respondent, the disputed domain names combine the common terms “sativa” and “extract”, which are common for cannabis-derived products and are descriptive terms in relation to selling product derivatives of cannabis plants. The Respondent denies that the SATIVEX trademark is inherently distinctive, and submits that it would be recognized by most consumers as descriptive for cannabis-derived products, related to the cannabis sativa plant. At the same time, the Respondent submits, the consumers of the Complainant’s “Sativex” product are sophisticated, and there is little chance that someone seeking treatment for such issues would identify the disputed domain names as the source of the Complainant’s product, so there is no substantial likelihood of confusion among consumers. The Respondent denies that it has registered and is using the disputed domain names in bad faith. It maintains that it has not attempted to sell the disputed domain names to anyone for profit, and denies that the Complainant and the Respondent are direct competitors. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names: (i) each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the Respondent has registered and is using the disputed domain names in bad faith. A. Identical or Confusingly Similar The Complainant has provided evidence that it is the owner of a number of registrations of the SATIVEX trademark in various jurisdictions, as well as of the SATIV trademark in the United Kingdom. The Respondent disputes the distinctiveness of the SATIVEX trademark, and maintains that it is descriptive for products derived from the cannabis sativa plant. However, it has been validly registered and so enjoys a presumption of validity. In view of this, the Panel accepts that the Complainant has satisfied the threshold requirement of having trademark rights for purposes of standing to file the Complaint in the present case. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” generic TLD sections of the disputed domain names. Each of the disputed domain names incorporates as its dominant element the SATIVEX trademark or its minor typographical variant “sativix” entirely in combination with a dictionary word such as “cannabis”, “vapor”, “vape”, or “tract”, or with an abbreviation such as “thc” and “cbd”, used to designate certain chemical compounds derived from the cannabis plant. As to the disputed domain name In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark. In such cases, the addition of descriptive terms would not prevent a finding of confusing similarity under the first element. See sections 1.7 and 1.8 of the WIPO Overview 3.0. In view of the above, the Panel finds that the disputed domain names are confusingly similar to the SATIVEX and SATIV trademarks in which the Complainant has rights. B. Rights or Legitimate Interests As noted by the Complainant, its SATIVEX trademark was first registered in 2002 in the United Kingdom and in 2013 in the United States, which is a number of years before the Respondent’s registration of the disputed domain names. The Complainant’s Sativex product has received significant media attention, being the world’s first prescription medicine derived from the cannabis plant. The Respondent is involved in the business with cannabis-derived products and may thus be regarded as competitor to the Complainant, and does not deny that it had knowledge of the Complainant and its Sativex product when it registered the disputed domain names Apart from “sativex” or “sativix”, the disputed domain names contain either dictionary words, such as “cannabis”, “vapor”, “vape”, or “tract”, or the abbreviations “thc” and “cbd”. There is no dispute between the Parties that these abbreviations are commonly-used for cannabis-derived substances and that this was the reason why the Respondent included these abbreviations in the two disputed domain names. This leads to the question about the reason why the Respondent has chosen to include “sativex” and “sativix” in them. The Respondent maintains that “sativex” means “sativa extract”, and so it has a legitimate interest to use it in relation to products obtained from the cannabis sativa plant. Nevertheless, the Complainant has successfully registered its SATIVEX trademark for various goods and services in many jurisdictions, including the United States where the Respondent is located, and the Panel’s view is that, even if there is similarity between “sativex” and “sativa extract” that may affect the uniqueness or distinctiveness of the SATIVEX trademark, this does not go so far as to give the Respondent a general right of fair descriptive use of “sativex” in domain names or otherwise. As to the sequence “sativix”, it is confusingly similar to the SATIVEX trademark, but the Respondent’s explanation that it also means “sativa extract” is not convincing. Rather, it appears to the Panel as a deliberate misspelling of the SATIVEX trademark. The case file contains no evidence that the Respondent has actually used any of the disputed domain names in connection with the descriptive phrase “sativa extract”. Rather, the Respondent is using them in connection with parked webpages containing click-through advertising and suggestions that the disputed domain names might be available for purchase. More importantly, the Respondent has registered seven of the disputed domain names after the commencement of its dispute with the Complainant, which has complicated the proceeding, and as submitted by the Complainant and not denied by the Respondent, in the negotiations between the Parties the Respondent has indicated that their sale price should exceed the out-of-pocket expenses relating to their registration and has suggested that the legal proceedings between the Parties may take a long time if they do not reach an agreement. In view of the above, the Panel accepts as more likely than not that the Respondent has chosen and registered the disputed domain names not in connection with any alleged descriptive meaning of them, but to take advantage of the reputation of the SATIVEX trademark by inducing the Complainant to purchase them for an amount in excess of its direct costs for their registration. The Panel notes that there is a higher level of similarity between the combination “sativextract” in the disputed domain name On this basis, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(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; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” As discussed in section 6.B above, it is more likely than not that the Respondent has chosen and registered the disputed domain names not in connection with their alleged descriptive meaning, but because of their confusing similarity to the SATIVEX trademark in an attempt to take advantage of the reputation of this trademark. The Respondent, being a competitor to the Complainant, has registered a series of nine domain names, and seven of them were registered only after the commencement of the dispute between the Parties, which has complicated and prolonged the dispute resolution process between the Parties. The disputed domain names have been used in connection with parked webpages containing pay-per-click links to third-party offers of cannabis and marijuana, which may be regarded as competing with the goods of the Complainant and may cause disruptions of the Complainant’s business. In their negotiations, the Respondent has attempted to induce the Complainant to purchase the disputed domain names as a package for an amount in excess of its direct costs for their registration. This satisfies the Panel that on balance the circumstances of the case indicate that the Respondent has registered and used the disputed domain names primarily for the purpose of inducing the Complainant who is the owner of the SATIVEX trademark to purchase them for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names. Therefore, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith under Paragraph 4(b)(i) of the Policy. The Panel also notes that paragraph 4(b)(ii) regarding a pattern is applicable given the above-described case context. 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 Assen Alexiev Marilena Comanescu Frederick M. Abbott
Presiding Panelist
Panelist
Panelist
Date: October 19, 2020
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