The Complainant is FLRish IP, LLC, United States of America (“United States”), represented by Evoke Law, PC, United States.
The Respondent is Corey Nix, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2020. On August 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2020, 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 August 19, 2020, 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 the same day. 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 August 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2020. The Center appointed William R. Towns as the sole panelist in this matter on September 23, 2020. 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 licensed California enterprise operating cannabis dispensaries, delivery services, manufacturing, and cultivating cannabis pursuant to the California Medicinal and Adult-Use Cannabis Regulation and Safety Act (SB 94). The Complainant since 2006 also has provided medical cannabis as a collective under an earlier California law (SB 15). The Complainant trades under the HARBORSIDE name, and is the owner of the following trademark registrations for its HARBORSIDE mark issued by the United States Patent and Trademark Office (USPTO): United States Reg. No. 5509268, applied for November 30, 2016, and registered July 3, 2018 (first use October 10, 2016); and United States Reg. No. 5509269, applied for November 30, 2016, and registered July 3, 2018 (first use October 10, 2016). The Complainant also has secured registrations for its HARBORSIDE mark in Australia, the European Union, and Israel. The Complainant has maintained a website as “www.shopharborside.com” since August 2016. The Complainant has been the subject of a documentary series on the Discovery channel, and has received other media attention in news outlets including USA Today, NBC News, ABC 7 New, Reuters, CNet, and New York Times. The dispute domain name The Complainant submits that the disputed domain name The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that its rights in the HARBORSIDE mark predate the Respondent’s registration of the disputed domain name, and that the Complainant has not licensed, consented to, or otherwise authorized the Respondent to register a domain name appropriating the Complainant’s HARBORSIDE mark. The Complainant asserts there is no indication that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant explains that while the Respondent has redirected the disputed domain name to the “https://www.delta8xtracts.com” website and is promoting the sale of hemp and hemp-derived products, such offerings cannot be “bona fide” as the Respondent is attempting to capitalize on the goodwill associated with the Complainant’s HARBORSIDE mark in order to deceive and divert consumers seeking the Complainant to the Respondent’s website. The Complainant denies that the Respondent has been commonly known by the disputed domain name or has acquired trademark or service rights. The Complainant maintains that the Respondent is “Delta8Xtracts”, and that the Respondent’s sole use of the disputed domain name has been a redirection attempting misleadingly to create a false association with the Complainant’s legitimate business. The Complainant thus concludes that the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain name. The Complainant concludes that the Respondent registered and is using the disputed domain name in bad faith. The Complainant observes that it has been a prominent and leading cannabis retailer using the HARBORSIDE brand since 2006, and that accordingly the Respondent would have been well aware of the Complainant when registering the disputed domain name. The Complainant submits that the Respondent intentionally is seeking 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 mark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain name”, also known as “cybersquatting”. Weber‑Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name In this case the Complainant’s HARBORSIDE mark is clearly recognizable in the disputed domain name.2 The inclusion of the term “hemp” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 Top-Level Domains (TLDs) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.4 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s HARBORSIDE mark. The Respondent notwithstanding registered the disputed domain name, which is confusingly similar to the Complainant’s HARBORSIDE mark, and has redirected the disputed domain name to the Respondent’s website, offering for sale hemp and hemp related products competing directly with those of the Complainant. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is 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 Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel concludes from the record in this case that the Respondent was aware of the Complainant and had the Complainant’s HARBORSIDE mark firmly in mind when registering the disputed domain name. As previously noted, the disputed domain name appropriates the Complainant’s HARBORSIDE mark in its entirety, and the Respondent’s use of the disputed domain name to redirect Internet users to the Respondent’s website where hemp and hemp related products are sold easily could convey to Internet users the false impression that the website is affiliated with, sponsored, or endorsed by the Complainant. In view of the foregoing, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As previously noted, the Panel finds that the Respondent was well aware of the Complainant and had the Complainant’s distinctive HARBORSIDE mark firmly in mind when registering the disputed domain name. The Panel concludes that the Respondent has used the disputed domain name intentionally to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website or products displayed on the Respondent’s website. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 William R. Towns 1 See WIPO Overview 3.0 , section 1.7 . 2 See WIPO Overview 3.0, section 1.8 and cases cited therein. 3 Id. 4 See WIPO Overview 3.0 , section 1.11 .
Sole Panelist
Date: September 25, 2020
Full & Egal Universal Law Academy