The Complainant is My Passion Media Inc., Canada, represented by Palmer IP Inc., Canada.
The Respondent is Constantina Anagnostopoulos, Mytrueearth, United States of America (“United States”), represented by Internet & Intellectual Property Justice Law Clinic, 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 February 10, 2021. On February 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2021, 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 February 12, 2021, 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 February 16, 2021. The Center received email communications from the Respondent on February 12 and 16, 2021. The February 16, 2021 communication indicated a willingness to pursue settlement negotiations. Accordingly, pursuant to paragraph 17 of Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), on February 16, 2021, the Center informed the Parties that a proceeding could be suspended if the Parties were interested in pursuing settlement negotiations. 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, 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 February 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2021. On February 26, 2021, the Complainant requested the suspension of the proceeding. Pursuant to paragraph 17(a)(i) of the Rules, on March 1, 2021, the Center informed the Parties that the proceeding was suspended until March 31, 2021, for purposes of settlement discussions concerning the disputed domain name. On March 29, 2021, the Complainant requested an extension to the suspension period. On March 30, 2021, the Center informed the Parties that the suspension of the proceeding was extended until April 30, 2021. On April 27, 2021, the Center reminded the Parties of the forthcoming end of the suspension period. On May 4, 2021, the Complainant requested the reinstitution of the proceeding. On the same day, the Center notified the Parties that the proceeding was reinstituted and the Response due date was May 13, 2021. On the same day, the Respondent contacted the Center requesting a 30-day extension to the Response due date. On May 5, 2021, the Center informed the Parties that the Response due date was extended until May 17, 2021, pursuant to paragraph 5(b) of the Rules. Further, pursuant to paragraph 5(e) of the Rules, the Center invited the Complainant to comment on the Respondent’s 30-day extension request. The Complainant did not respond to the Center’s invitation for comment. Accordingly, on May 11, 2021, pursuant to paragraph 5(e) of the Rules, the Center informed the Parties that the Response due date was further extended until May 27, 2021. The Response was filed by the Respondent on May 27, 2021. On May 31, 2021, the Center informed the Parties that it would proceed with the panel appointment process. On June 2, 2021, the Complainant submitted an unsolicited supplemental filing with the Center. On June 8, 2021, the Respondent submitted an unsolicited supplemental filing with the Center. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 4, 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 British Columbia, Canada, Corporation. The Complainant offers laundry detergents and products under the TRU EARTH trademark and sells “Tru Earth” branded detergent internationally. The Complainant’s other “Tru Earth” branded products include eco-strips laundry detergent, wool dryer balls, multi-surface cleaner, stainless steel straws, bamboo cutlery sets, beeswax food wraps, and reusable cotton mesh product bags. The brand seeks to reduce plastic and create sustainable packaging with less waste and chemicals. The Complainant came second in the “www.canadianbusiness.com” startup list “Canada’s Top New Growth Companies 2020” showing two-year growth of 8,408 per cent and 2019 revenue in the range of CAD 5,000,000 to CAD 10,000,000 [note: the Panel has assumed CAD rather than USD as the publication concerned appears to be Canadian, though the actual denomination of the revenue range was not specified. Any difference in denomination would not be relevant to the merits of this proceeding]. The Complainant also ranked as no. 167 on the ranking of Canada’s top growing companies by the Globe and Mail news media outlet. The Complainant has 63,600 “followers” on “www.instagram.com”, 38,383 “likes” and 42,076 “follows” on “www.facebook.com”, and 898 subscribers on “www.youtube.com” with view counts for its videos ranging from thousands of views to 9.8 million. Said videos range in age from two days to one year before the date of the screenshot of the Complainant’s channel on “www.youtube.com”. The Complainant’s products are available on its own website and from online retailers such as “www.amazon.com”. The Complainant produced two invoices for eco-strips laundry detergent, in the sum of USD 6.47 and USD 12.95 respectively, to demonstrate that the Complainant has supplied consumers in the United States since April 2019. The Complainant is the owner of United States Registered Trademark no. 6206861 for the word mark TRU EARTH, filed on August 16, 2019, and registered on November 24, 2020, in international classes 3 (laundry detergents) and 21 (wool dryer balls for use in clothes drying machines) and showing a claimed date of first use in commerce of April 3, 2019. The Complainant is also the owner of United States Registered Trademark no. 6206862 for the stylized word mark TRU EARTH, featuring the capitalized words in a “handwritten” typeface style with a line above and below, also filed on August 16, 2019, and registered on November 24, 2020, in international classes 3 and 21. The Complainant has made applications for broadly similar Canadian trademarks (though incorporating additional goods and services) dated August 14, 2019, although such marks have not yet proceeded to grant. The Complainant maintains a website at “www.tru.earth”. The disputed domain name was created on July 10, 2019. The Respondent uses the disputed domain name for a website entitled “TRUE EARTH” which initially offered “True Earth” branded multi-surface cleaner for sale and later added “True Earth” branded wool dryer balls. The Respondent’s “Instagram” social media page features the disputed domain name and is entitled “mytrueearth”. It has 1,626 followers. The Respondent’s “Facebook” social media page is entitled “True Earth” and “@mytrueearth”. The page was created on May 11, 2020, and features 41 “likes” and 44 “followers”. Based on the evidence before the Panel, the chronology behind the creation of the Respondent’s business is as follows: According to items invoiced either personally to the Respondent or, in the case of one of the Respondent’s suppliers, to an alternative business name of “Spartan Brothers Oil”, between October 2018 and September 2020, the Respondent purchased various ingredients for the manufacture of a cleaning product. The invoices for most of these items did not mention the name of any business or company. On March 8, 2019, the Respondent emailed a graphic designer to discuss a logo for the Respondent’s proposed business involving a multi-purpose cleaner using essential oils. In said email, the Respondent noted, “[…] I was thinking maybe mother nature cleaning the earth […]”. According to a screenshot from a cellphone, on June 27, 2019, the Respondent discussed various brand/company names by text with “Martha,” who is described as an attorney and family friend. A text to “Martha” at 08:51 asks “GreenEarth one word?” and when the recipient replies that they are checking whether this is taken, a further text is issued saying “Disregard”. Later, at 10:39 the same day, a text is sent stating “True earth?” followed by “Can I put company next to my name?”. The recipient replies “True earth company?” to which the reply is “Yes”. An image is then texted back showing the website of the Office of the Illinois Secretary of State indicating that a search for “True Earth” did not match any records in the corporation database. On July 1, 2019, the Respondent emailed said graphic designer indicating that the name of the Respondent’s organization was to be “True Earth Company”. Among the Respondent’s invoices, one shipment of packaging to the Respondent’s address, which is dated July 15, 2019, is addressed to “True Earth”. An extract from a communication between the Respondent and “Shopify Support” states that, according to system records, the Respondent’s website went live on October 5, 2019. The Respondent’s “Shopify” log indicates that its first sale was made on June 1, 2020. Said log indicates that the Respondent created and published a new product named “100% Wool Dryer Balls” on October 31, 2020. On November 30, 2020, “Shopify” issued a trademark infringement notice to the Respondent, which the Respondent says was initiated by the Complainant. On December 4, 2020, the Respondent removed the dryer balls from its online store and from “Facebook”. 5. Parties’ Contentions A. Complainant The Complainant contends as follows: Identical or confusingly similar The Complainant has used the TRU EARTH mark since as early as April 2019 and garnered sales in the seven figures in 2019 and in the eight figures in 2020. The Complainant’s market presence covers the United States, Canada, Africa, Singapore, Australia, New Zealand, and throughout Europe. The Complainant’s mark has acquired distinctiveness through use for its other goods not yet registered under its United States trademarks and has achieved rapid recognition due to a significant Internet presence, the type and scope of its market activities, and the nature of its goods and services. The Complainant has experienced swift growth in sales and industry recognition, and has generated actual public knowledge of its TRU EARTH mark by virtue of its social media presence. The disputed domain name incorporates the Complainant’s TRU EARTH trademark in its entirety. The only difference is the prefix “my” and the generic Top-Level Domain (“gTLD”) “.com”, which are descriptive and not significant. The inclusion of the letter “e” to the word “tru” makes no difference as the word is phonetically identical to the mark. The Respondent offers the same products as the Complainant via the same channel of trade, namely online web platforms. Rights or legitimate interests The Complainant has found no evidence that the Respondent used or made any demonstrable preparations to use the disputed domain name for a bona fide offering of goods and services. The Respondent commenced using the disputed domain name on or about September 19, 2020, well after the Complainant had become well known in relation to its TRU EARTH mark, for identical goods to that of the Complainant (reference is made to the Internet Archive page for the disputed domain name showing one entry for September 19, 2020). There is no evidence that the Respondent has acquired any trademark rights corresponding to the disputed domain name or that the Respondent has been commonly known by the disputed domain name. The use of the disputed domain name in connection with identical products to those of the Complainant creates a misleading impression that the Respondent is affiliated to the Complainant. Registered and used in bad faith The Complainant’s TRU EARTH mark does not correspond to a descriptive or generic word for laundry or cleaning substances and is a unique coined word. The Respondent could not have registered the disputed domain name without knowledge of the Complainant’s mark. The Respondent offers wool dryer balls and multi-surface cleaners which are identical goods to those of the Complainant. The Respondent intended to benefit from confusion between the Complainant’s mark and the disputed domain name. The Respondent’s goods are labeled simply as “TRUE EARTH” identical to the Complainant’s marks. The Respondent’s multi-surface cleaner is in the same class of goods as laundry detergents and the likelihood of confusion assessment should extend to this. A side-by-side comparison of the Parties’ products shows the Respondent’s intent to confuse. The Respondent’s “Facebook” and “Instagram” social media pages, linked from the website associated with the disputed domain name, also feature the “TRUE EARTH” branding, which usage is very similar and confusing to the use of the Complainant’s TRU EARTH mark on its social media pages. The Respondent’s registration and use of the disputed domain name is intended to create a likelihood of confusion and disrupt the Complainant’s business by diverting Internet traffic and customers from the Complainant’s website to the Respondent’s page. B. Respondent The Respondent contends as follows: Identical or confusingly similar The disputed domain name and the Complainant’s registered trademark are not identical and there is no phonetic or visual similarity. The first word of the Complainant’s mark sounds phonetically the same but is spelled incorrectly. The disputed domain name contains three elements, “my”, “true”, and “earth”, in which the word “true” is spelled correctly. The Respondent initially sold multi-surface cleaners as early as June 2020 while the Complainant’s August 2019 trademark applications were for laundry strips and wool dryer balls. The Complainant filed a trademark application for multi-surface cleaners in February 2021. The Respondent has prior common law rights in certain goods under the mark. The Respondent had no knowledge of the Complainant until the Complainant filed a notice of dispute via the “Shopify” website. The Respondent started selling dryer balls on October 31, 2020. The “Shopify” complaint was filed on November 30, 2020. In order to resolve the issue quickly and without dispute, the Respondent discontinued use of dryer balls from its website in December 2020. Rights or legitimate interests The Respondent had a full operational business before notice of the dispute from the Complainant and before the Respondent had any knowledge about the Complainant. The Respondent knew of the Complainant only from the date of the “Shopify” complaint on November 30, 2020. There is no evidence that the Respondent was aware of the Complainant’s mark before engaging in demonstrable preparations dating back to before February 2019, before the Complainant sold any products and well before the “Shopify” complaint. The Respondent has made clear demonstrable (and not merely superficial or mechanical) preparations to use the disputed domain name for a bona fide offering of goods and services. The Respondent’s order history for ingredients and containers dates from February 8, 2019, before the Complainant’s mark was used anywhere. The Respondent discussed logos with a graphic designer from March 8, 2019. The Respondent discussed and checked the name “True Earth” with an attorney and family friend on June 27, 2019. Had the Respondent searched the relevant register on that date, the Complainant’s marks had not even been filed. The Respondent registered the disputed domain name on July 19, 2019. The Respondent’s website was first available on October 5, 2019, and contained the name “True Earth” at launch. The initial products made available on said website were multi-surface cleaner, bathroom cleaner, and glass cleaner and the Respondent’s first invoice is dated June 1, 2020. It is incorrect for the Complainant to suggest that the Respondent’s site was not online until September 2020. The Respondent had substantial sales of its green cleaning products from first sale to November 2020. Registered and used in bad faith The Respondent has not engaged in cybersquatting and did not know about the Complainant’s use of the TRU EARTH mark before the registration of the disputed domain name. The Respondent searched the Illinois database for the business name “True Earth” as early as June 2019 and the Complainant did not file its trademark application for TRU EARTH until August 2019, which was published for opposition on June 16, 2020. The Respondent purchased the disputed domain name before the Complainant filed a trademark anywhere. Absent actual notice, a party is not deemed to be put on constructive notice of a mark until the date of registration. The date of registration of the Complainant’s marks was November 24, 2020, being around the same time as the November 30, 2020 “Shopify” complaint. There are no facts from which a reasonable person could infer the Respondent’s knowledge of the Complainant’s trademark rights and the registration of the disputed domain name does not constitute bad faith. The Complainant attempts to show that its mark was famous and widely known when the disputed domain name was registered by way of the Canadian press release. This is dated September 25, 2020, well over a year after the Respondent registered the disputed domain name and after the Respondent had begun to sell green cleaning products under the disputed domain name. The Complainant’s Startup Ranking List dates to October 28, 2020. There is ample evidence to support the fact that the TRU EARTH mark does correspond to a descriptive term for laundry and cleaning substances rather than being a unique, coined word. The disputed domain name corresponds to the descriptive nature of the products sold. “My” indicates ownership of the products, “true” conveys purity, honesty, and healthy plant-based qualities associated with the products, and “earth” expresses the origin and source of the ingredients and components. A large number of brands use “tru”, “true” or “earth” in domain names for clean and healthy products (list of 17 URLs produced). The use of “tru” is a crowded field in connection with natural components. The Respondent had no intent to benefit from any confusion and it is not possible that the Respondent aimed to benefit from the confusion of selling multi-surface cleaners compared to the Complainant’s laundry products. The Complainant did not file for a trademark for multi-surface cleaners until February 2021. There is no evidence of any confusion having occurred and the Respondent is aware of none. When the Respondent discovered that the Complainant was also selling dryer balls, which the Respondent had begun to sell in October 2020, the Respondent removed its dryer balls from its website to resolve the dispute amicably and without any admission of wrongdoing. The Complainant sent a cease and desist letter to the Respondent on January 19, 2021, alleging trademark infringement. The Respondent informed the Complainant that it would rebrand as of March 7, 2021. The Complainant did not reply to this offer. The Respondent disabled and removed the disputed domain name on March 6, 2021. The Respondent never requested money in exchange for the transfer of the disputed domain name and offered to transfer it for free in exchange for a settlement agreement. Negotiations on the latter ultimately broke down and the Respondent is defending its bona fide right to the disputed domain name. The Respondent’s acts do not show an intent to mislead the public by trading on the Complainant’s goodwill or diverting the Complainant’s Internet traffic, nor any attempt to profit from the disputed domain name by attempting to sell it to the Complainant. The record shows the Respondent’s engagement in a bona fide business to sell green cleaning products under the name “True Earth” by way of the disputed domain name and is absent of any evidence of bad faith. C. Complainant’s supplemental filing In its supplemental filing, the Complainant contends as follows: The Respondent has selectively provided information about the settlement negotiations between the Parties. The Respondent argues that the disputed domain name is not being used in bad faith. Use in bad faith does not refer to a particular point in time under the Policy but refers to a period of time after registration of the disputed domain name. The disputed domain name was used in bad faith when the Respondent used the TRUE EARTH name to market wool dryer balls with a mark nearly identical to the more popular TRU EARTH mark of the Complainant – the Complainant has 2020 sales in eight figures while, according to the Respondent’s evidence, the Respondent sold 32 dryer ball packages. D. Respondent’s supplemental filing In its supplemental filing, the Respondent contends as follows: The Respondent offered a reasonable settlement to the Complainant. The requirements in paragraph 4(a)(iii) of the Policy will be satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith. The Respondent did not acquire the disputed domain name in bad faith, nor is it using it in bad faith. It is currently disabled, but the Respondent reserves the right to use it in good faith going forward. The test in paragraph 4(a) of the Policy is not satisfied. 6. Discussion and Findings In order to succeed in the Complaint, the Complainant must show that all three of the elements set out under paragraph 4(a) of the Policy are present, namely that: (i) the disputed 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 in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Preliminary Issues – Parties’ Supplemental Filings According to paragraph 12 of the Rules, the Panel may request, in its sole discretion, further statements or documents from either of the Parties. Unsolicited supplemental filings are generally discouraged. Panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response. In the present case, the Panel accords no material significance to the Parties’ submissions as regards the settlement negotiations between them. To that extent, the Parties’ supplemental filings will not be admitted. The Parties’ respective submissions as to use in bad faith appear to the Panel to amount to a reply to the other’s submission on the topic, and the supplemental filings will therefore be admitted to this extent only. B. Identical or Confusingly Similar The first element under the Policy is generally regarded as a standing element, the purpose of which is to determine whether the Complainant has a bona fide basis for filing the Complaint (see: The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743). The assessment has two aspects, first, whether the Complainant has UDRP-relevant rights in a trademark (which may or may not be a registered trademark) and, secondly, a comparison between the disputed domain name and any such trademark, usually on a straightforward side-by-side basis. Such comparison is intended to determine whether the latter is recognizable in the former. The gTLD (in this case “.com”) is typically disregarded for the comparison exercise as being required for technical purposes only. It is not necessary for the first element test that the Complainant’s trademark pre-date the registration date of the disputed domain name, though this may be relevant to the second and third element analyses. The Panel finds that the Complainant has UDRP-relevant rights in its TRU EARTH registered trademarks as described in the factual background section above. The Complainant’s trademark applications which have not yet proceeded to grant are not relevant to this analysis. Comparing the TRU EARTH registered trademarks to the second level of the disputed domain name, it is evident that the former is entirely reproduced in the latter, along with the letter “e” added to make the dictionary word “true” and prefixed with the word “my”. These additional elements do not change the fact that the Complainant’s mark is sufficiently recognizable in the disputed domain name (on the addition of the dictionary word “my”, see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). It should also be noted that the “true earth” element of the disputed domain name and the entirety of the Complainant’s mark are aurally identical. The fact that the Parties may at one time or another have sold different items under the mark and the disputed domain name respectively or that the Complainant’s mark is not registered in respect of the goods and services offered by the Respondent is not relevant to the first element assessment (for a general discussion on this topic, including the issue of aural similarity see section 1.7 of the WIPO Overview 3.0). In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore that the requirements of paragraph 4(a)(i) of the Policy have been met. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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.” In this particular matter, the issue of rights and legitimate interests focuses squarely upon the Respondent’s conduct in its registration and use of the disputed domain name. The essence of the Respondent’s case on this topic is that it made demonstrable preparations to use the disputed domain name and a name corresponding thereto, being its business name, in connection with a bona fide offering of goods and services before notice to it of the dispute. The chronology produced by the Respondent as to its preparations to use the disputed domain name is detailed. Taken together, this evidence suggests that the Respondent selected the name “True Earth” for its business on June 27, 2019, having been in the process of organizing packaging materials and ingredients for its proposed multi-surface cleaner, mostly under a personal name and, with one supplier, under a different business name, since about October the preceding year. The Respondent instructed its graphic designer as to its proposed business name on July 1, 2019, registered the disputed domain name on July 10, 2019, and organized a shipment of packaging addressed to “True Earth” on July 15, 2019. The Respondent’s “Shopify” site, using the disputed domain name, opened for business on October 5, 2019. The Panel is satisfied that the above evidence constitutes demonstrable preparations to use the disputed domain name (and a business name corresponding thereto). The remaining question for the Panel on this topic is whether the Respondent made all of these preparations independently of any knowledge of the rapid growth and success of the Complainant’s business, then operating under the unregistered trademark TRU EARTH. If the Respondent had intended to target the Complainant’s business, and had selected its organization name, brand name, and the disputed domain name with the Complainant in mind, then its offering of goods and services could not be regarded as bona fide. As the panel noted in Novomatic Netherlands B.V. v. Peter Giesbers, Netvista Media SL ESB54981352,WIPO Case No. D2021-0818, “The words ‘bona fide’ must encompass the Respondent’s knowledge and motives in choosing the name in question – if done deliberately to trade off, or take advantage of the Complainant’s name or reputation, then the ‘bona fide requirement is not met.” The record shows that when it registered the disputed domain name, the Respondent could not have known of the Complainant’s registered trademarks. These were filed in August 2019, just over one month after the date of registration of the disputed domain name. The Panel has therefore asked itself whether the evidence on the present record indicates that the Respondent might otherwise have known of and intended to target the Complainant, perhaps being aware of the Complainant’s early successes and/or anticipating registered trademarks which might be filed in due course. On that matter, a degree of suspicion might arise by virtue of the fact that the due diligence which was done by the Respondent prior to registering the disputed domain name was apparently restricted to consulting the Illinois state database. This could be said to be a rather unusual approach, where any due diligence is carried out at all, prior to registering a domain name. There is no mention of the Respondent supplementing the state database with any form of generalized Internet search, domain name availability search, or trademark search, as might be thought to be typical of a prudent business founder. On one view, therefore, the very specific and restricted nature of the search which the Respondent chose to undertake could suggest that it was deliberately looking in a place where it knew that the Complainant’s existence could not be found. Nevertheless, this is not enough for the Panel to find it to be more likely than not that the Respondent had any such intention, particularly where the Complainant’s evidence fails to provide adequate detail as to its probable notoriety at the material time, whether this would be available from those kinds of searches or otherwise. In addition to the prevailing circumstances when the disputed domain name was registered, the Respondent presents uncontested evidence by virtue of the list of URLs containing “earth”, “true”, “tru”, and in one example the phrase “truearth”, which suggests that it is not unknown for these elements to be deployed as descriptive monikers for environmentally-conscious and sustainable businesses and thus that the Complainant’s name and mark, while containing an alternative spelling of “tru”, is not unique, even to the extent of such different spelling. Notwithstanding its meteoric rise to success, including a presence on leading social media and e-commerce platforms, there is insufficient evidence on the present record regarding the extent of the notoriety of the Complainant’s then unregistered TRU EARTH mark at the critical time between its claimed April launch1 and late June when the Respondent selected its name which might, if demonstrated, have led to a reasonable inference that the Respondent more probably than not knew of and was seeking to ape the Complainant’s brand. As the Panel sees it, this is the crux of the Complainant’s case, and it would have expected to see a rather detailed briefing from the Complainant on this point. For example, there is no evidence as to when the Complainant’s social media presence was established or its rate of growth. The “www.youtube.com” channel, while cited in the Complaint as evidence of the Complainant’s notoriety, only appears to contain videos posted in the year prior to the screenshot being taken, such that the Complainant’s millions of views seem to be of comparatively recent date. To be clear, the Panel accepts that the Complainant has experienced rapid growth and notable recent success. In particular, the Panel has no reason to doubt the Complainant’s growth and revenue figures presented by the “www.canadianbusiness.com” startup list or the Globe and Mail ranking. However, the Respondent points out that the rankings themselves date from September and October 2020, respectively. There is no way of knowing from these entries alone, or from the Complainant’s social media or limited evidence of sales into the United States, the likely notoriety of the Complainant’s business to someone in the Respondent’s position at the time when the disputed domain name was registered over a year earlier. It is true that the Complainant’s revenues for the whole year of 2019 are substantial, as indicated by the ranking on the “www.canadianbusiness.com” startup list, but, in the Panel’s view, that fact either on its own, or taken together with the Complainant’s limited demonstration of sales to the United States market in April 2019, is insufficient to overcome the Respondent’s submissions disclaiming knowledge of the Complainant prior to the “Shopify” dispute. What is more, the Complainant’s belief that the Respondent commenced using the disputed domain name on or about September 19, 2020, after the Complainant had become well known in relation to its TRU EARTH mark, is somewhat misconceived. Such belief is based on the fact that no corresponding entry exists on the Internet Archive for an earlier date. However, while the presence of a screenshot on the Internet Archive can be useful evidence in appropriate cases, the absence of such does not ipso facto mean that a site does not exist. The Respondent’s “Shopify” log indicates that the Respondent’s site went live in October 2019, albeit that the first sale appears to have occurred much later, in June 2020. It cannot be overlooked that the Respondent began to sell wool dryer balls of a similar type to those offered by the Complainant under a domain name that is confusingly similar to the Complainant’s TRU EARTH mark, with which the Complainant has had rapid and substantial success. The Complainant’s case is that this is a coincidence too far and exposes the Respondent’s true motivation for selecting the disputed domain name in the first place. However, the evidence before the Panel shows that the addition of this product to the Respondent’s stable took place around two years after the Respondent began preparations to set up its business and over a year after the Respondent’s “Shopify” site went live. It appears to be a much later development in the life of the Respondent’s business and there is insufficient evidence to link it to the registration date or earlier use of the disputed domain name in connection with the sale of multi-surface cleaners. It is also of some limited supportive significance that as soon as the issue relating to laundry balls was pointed out to the Respondent, the Respondent immediately took these off its site and social media pages. In all of these circumstances, the Panel finds it cannot be discounted at least on the present record that the Respondent made demonstrable preparations to use the disputed domain name and a corresponding brand name in connection with a bona fide offering of goods and services before any notice to it of a dispute. Accordingly, the Complainant has failed to prove that the Respondent has no rights and legitimate interests in the disputed domain name and the Complaint fails. D. Registered and Used in Bad Faith Much of the discussion in the preceding section regarding the circumstances surrounding the registration of the disputed domain name is also relevant to the third element analysis in this case. The Complainant must prove the conjunctive requirement that the disputed domain name has been registered and is being used in bad faith. While attempts have historically been made to imply retroactive bad faith in certain cases, current UDRP jurisprudence is clear that no such approach is permissible and that the respondent must been shown to have known of, and to have targeted, the complainant’s trademark at the date of registration of the disputed domain name (see: Reboxed Limited v. Adesoji Adeyemi,WIPO Case No. D2021-0886). Here, the evidence before the Panel is insufficient to give rise to a finding of registration in bad faith as the Complainant has not proved that the disputed domain name was registered with the requisite knowledge and intent. The extent of the Complainant’s notoriety before late June 2019 is insufficiently evidenced on the present record. To be clear, this is not to say that the Respondent has definitively proven its case as to claimed lack of knowledge of and intent to target the Complainant, but that based on the evidence it submitted the Complainant has not carried its burden. Both Parties have focused their submissions to some extent on the question of use in bad faith. However, given the Panel’s finding regarding rights and legitimate interests in the preceding section and likewise its finding on the question of registration in bad faith here, it is not necessary for it to reach a definitive ruling on the question of whether the disputed domain name was or was not used in bad faith by virtue of the Respondent’s offering of wool dryer balls on the website associated with the disputed domain name with effect from October 31, 2020. The Panel adds, for completeness, that it appears that the Parties may have a wider trademark dispute than simply that surrounding the registration and use of the disputed domain name. The Parties are to be commended for their various attempts to negotiate an amicable settlement prior to this Panel’s appointment, notwithstanding the fact that this ultimately proved abortive. To the extent that wider issues regarding the Parties’ competing businesses subsist, it should be noted that a Complaint under the Policy, focused as it is upon written submissions and documentary evidence, is not best placed to resolve matters of this nature, nor should this Decision be taken as a definitive ruling on all the issues which may be in dispute between the Parties. The Parties are free to bring all and any relevant issues before a court of competent jurisdiction, with the opportunity to conduct a fuller inquiry and having the benefit of discovery procedures, oral testimony and cross-examination. In that connection, the Panel notes that it does not address its Decision to the attention of any such other forum. 7. Decision For the foregoing reasons, the Complaint is denied. Andrew D. S. Lothian 1 See the discussion in Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent,WIPO Case No. D2009-1033, regarding the limited evidentiary value of the date of first use in commerce claimed on a trademark application. The Panel does not consider that the Complainant has established the extent of its notoriety based solely upon the claimed first date in commerce or between such date and the date of registration of the disputed domain name on the basis of the present record.
Sole Panelist
Date: June 18, 2021
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