The Complainant is 3 Bros Brand LLC, United States of America (“United States”), represented by Ropers Majeski, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Elizabeth Sinhi, United States. 2. The Domain Name and Registrar
The disputed domain name <3brossgrow.com> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2020. On December 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 7, 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 December 9, 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 December 14, 2020.
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 December 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2021.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 15, 2021. 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 registered business entity in the State of California, United States. It has traded since 2019. It sells cannabis and related products via a retail outlet and via authorised stockists. It promotes and also sells (see discussion below) those products via its websites. It also sells a range of apparel branded with a “3Bros” logo. Its websites are linked to the domain names <3brosgrow.com>, <3brossantacruz.com>, and <3brosclothes.com>. It applied for a United States trademark for the term “3 BROS” on September 30, 2020, application No. 90226548. That trademark has not yet been granted.
The Disputed Domain Name was registered on August 13, 2020. At the time of this decision the Disputed Domain Name resolves to a webpage bearing an “account suspended” message. Filed evidence shows that previously the Disputed Domain Name has been linked to a website (the “Respondent’s website”) which in large measure copies the Complainant’s website and offers for sale a range of products also bearing the stylised logo used by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
The Disputed Domain Name is identical or confusingly similar to the terms “3bros” and “3brosgrow”, in which the Complainant claims to have unregistered trademark rights.
The Respondent has no rights or legitimate interests in the terms “3bros” or “3brosgrow”. There is no other meaning associated with “3bros” or “3brosgrow” other than in relation to the Complainant and its products.
The Disputed Domain Name was registered and is being used in bad faith. It is a typographical variation of the Complainant’s unregistered trademarks and is being used to confuse Internet users into doing business with a competing website. That website infringes the Complainant’s intellectual property and impersonates the Complainant. The Complainant says that the Respondent’s motives are most likely to trade on the Complainant’s valuable trademarks and divert business from Complainant to Respondent and also sully the valuable reputation of Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Preliminary Matters
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909).
The Panel also notes this is a case where one Respondent (“Domain Administrator, See PrivacyGuardian.org”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case, the Panel considers the substantive Respondent to be Elizabeth Sinhi and references to the Respondent are to that person.
Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has not relied upon any registered trademarks – it has a pending application for a registered trademark but that is not normally sufficient for this element – see WIPO Overview 3.0, section 1.1.4.
The Panel has not found the evidence filed by the Complainant as to its unregistered trademark rights particularly comprehensive nor easy to follow. The Panel does not consider the terms “3bros” or “3brosgrow” to be descriptive. However, the Complaint still needs to demonstrate it has acquired a reputation in either or both of those terms sufficient to support its claim to unregistered trademark rights. The filed evidence appears to show the Complainant’s websites receive in total something over 200,000 visits a year. The sales of apparel that result is unclear to the Panel – the Complaint says “Lastly, as attached as Annex Q, we have provided the accounts for sales to illustrate that products bearing the 3 Bros Logo was [sic] also sold in 2019”. Annex Q appears to be a listing of individual sales over just three days and appears to show sales of “3 Bros” branded items with a total value of approaching USD 1,000. The Panel infers that Complainant’s sales of cannabis itself are likely to be significantly higher. The filed evidence also shows social media activity and promotion in the local community in and around Santa Cruz, California, United States. It is well established that a local reputation can suffice to support a claim to unregistered trademark rights – see WIPO Overview 3.0 at section 1.3. Whilst the evidence is not particularly comprehensive the Panel is persuaded that the Complainant does have at least limited unregistered trademark rights for the purposes of the Policy – in particular because the Respondent clearly thought it worthwhile to adopt a typographic variation of the Complainant’s “3brosgrow” identifier to attract custom to her own website. As the Panel noted in NEOVIA, Hi-Nutrients International Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / Deniz HusWIPO Case No. D2019-0600: “The Respondent did not provide arguments to the contrary; rather, in the Panel’s view, the Respondent cannot dispute that, given it deliberately targeted the source identifier in an apparent fraud attempt. Such targeting of the Complainants is sufficient to establish limited trademark rights in the HI-NUTRIENTS trademark for the purposes of the Policy”. See also Greenspring Associates, Inc. v. Lisa Knowles, Victoria capital ptyWIPO Case No. D2019-0265: “To that extent, Complainant has in fact used the domain name Accordingly the Panel is satisfied on the evidence as filed that the Complainant has shown it has unregistered trademark rights in the terms “3bros” and “3brosgrow” for the purposes of the Policy given their use as source identifiers. The Disputed Domain Name is clearly a typographical variation or misspelling of “3brosgrow”. The Panel agrees in this regard with the approach set out in WIPO Overview 3.0, section 1.9, namely: “Is a domain name consisting of a misspelling of the complainant’s trademark (i.e., typosquatting) confusingly similar to the complainant’s mark? A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.” It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests “3bros” and “3brosgrow” are as far as the Panel is aware coined terms with no other meaning save in relation to the Complainant and its products. Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name: (i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark 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. None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the terms “3bros” or “3brosgrow”. The Complainant had clearly chosen the terms “3bros” and “3brosgrow” as source identifiers prior to the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). The Panel finds that the Respondent has failed to produce any evidence to establish her rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith In the present circumstances, the distinctive nature of the terms “3bros” and “3brosgrows”, and the use by the Respondent of the Disputed Domain Name to promote a competing business, and the lack of any explanation from the Respondent as to why she registered the Disputed Domain Name lead the Panel to conclude the registration and use was in bad faith. Under the Policy paragraph 4b(iv) evidence of registration and use in bad faith is established where “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 web site or location or of a product or service on your website or location”. In the present case, that is exactly what the Respondent has done. The Panel infers she selected the Disputed Domain Name because of its similarity to the Complainants trademark and used it to attract Internet users to a competing business by creating a likelihood of confusion. In the circumstances the Panel concludes that paragraph 4(b)(iv) applies. Further the Panel notes that the Respondent has not filed a Response and hence has not availed herself of the opportunity to present any case of good faith that she might have. The Panel infers that none exists. As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 <3brossgrow.com> be transferred to the Complainant. Nick J. Gardner
Sole Panelist
Date: January 29, 2021
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