WIPO Domain Name Decision D2021-3446 for cbdistillery.live, cbdistillery.store

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Balanced Health Botanicals, LLC v. Privacy Service Provided by Withheld for Privacy ehf/ Mindful Media Case No. D2021-3446 1. The Parties

The Complainant is Balanced Health Botanicals, LLC, United States of America (“United States”), represented by VDB Legal Group, United States.

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland/ Mindful Media, Singapore.

2. The Domain Name and Registrar

The disputed domain names are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2021. On October 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 21, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 22, 2021.

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 October 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2021.

The Center appointed Alistair Payne as the sole panelist in this matter on November 18, 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 has operated in the United States since 2016 in connection with hemp derived health and wellness products, including those containing cannabidiol oil or “CBD”, and is now one of the leading retailers of products in the United States. It owns United States trade mark registration number 6,406,909 registered on July 6, 2021 for the mark CBDISTILLERY and also European Union Trade Mark number 017912596 registered on September 25, 2018. It also owns the domain names and through which it sells its hemp-derived products.

The disputed domain name was registered on September 17, 2020, and the disputed domain name was registered on October 14, 2020.

5. Parties’ Contentions A. Complainant

The Complainant submits that it owns registered trade mark rights as set out above. It says that as its CBDISTILLERY mark is wholly contained within each of the disputed domain names that they are both confusingly similar to its mark.

The Complainant submits that CBDISTILLERY is an arbitrary term, which has no meaning outside its use as a means to identify the Complainant as a source of certain products and services. It submits that to its knowledge the Respondent has never been known by the CBDISTILLERY mark and has never used it except in relation to the disputed domain names. It says that the Respondent is not a licensee or authorised reseller of the Complainant and nor is the Respondent otherwise authorised to use the Complainant’s Mark for any purpose. It says that the Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services.

It says in this regard that the disputed domain name is currently inactive and does not display any content and asserts that the disputed domain name contains imagery and text relating to software development services but does not actually offer any such services. It says that the content of the website at this disputed domain name is a reproduction from a prior version of the website by a legitimate provider of software development services (“Distillery Software”). It maintains that the website does not contain any statement as to the true ownership of the site or any disclaimer of association with the Complainant or Distillery Software but, rather, is an attempt to mislead consumers seeking the services of Distillery Software or the Complainant. For example, it notes that the disputed domain name uses the same contact phone number as Distillery Software and the same “hello@” contact email address and that it features content showing the same client work as Distillery Software. It notes that nearly all of the links on the website are disabled with the exception of the “Shop” link where the Respondent ostensibly offers for sale three books about UX design, although it is highly unlikely, given the surrounding circumstances, that the Respondent actually sells such products. Although it is not readily apparent why the Respondent used the disputed domain name to display content from a company in an unrelated industry, nevertheless, says the Complainant, it is not a bona fide offering of goods or services as it only operates to mislead and confuse consumers of both the Complainant and of Distillery Software. As a consequence, the Complainant submits that it has made out a prima facie case that the Respondent owns no rights or legitimate interests in either of the disputed domain names.

As far as bad faith is concerned the Complainant submits that the Respondent registered the disputed domain names in identical form to the Complainant’s mark in order to prevent the Complainant from reflecting its CBDISTILLERY mark in corresponding domain names in the “.live” and “.store” Top-Level Domain spaces. It notes that the Respondent has engaged in a pattern of such conduct having now registered three generic Top-Level Domains containing the Complainant’s CBDISTILLERY mark, namely: , , and (Balanced Health Botanicals, LLC v. Sander Cry,WIPO Case No. D2021-1988 (September 9, 2021).

Secondly, says the Complainant, the timing of the registrations further supports a finding that the Respondent registered the disputed domain names in bad faith. It notes that the Complainant started using the CBDISTILLERY mark in September 2016. It registered its own domain names and in 2018 and 2016, respectively and says that it has prominently and extensively used, promoted, and advertised under its CBDISTILLERY mark for the past five years. It notes that the Respondent registered the disputed domain names in September and October 2020, approximately four years after the Complainant started using the CBDISTILLERY mark. In circumstances also that the CBDISTILLERY mark is a coined arbitrary term that has no meaning except in relation to the Complainant’s products, the Complainant submits that it is impossible to conceive of an actual or contemplated good faith basis for the Respondent’s registration of the disputed domain names.

Thirdly, the Complainant says that the Respondent’s apparent lack of use of the disputed domain names demonstrates that it has no legitimate business in relation to them and is only using the disputed domain names to disrupt the Complainant’s business. It notes that the disputed domain name has been disabled and contains no content or links and that the disputed domain name features imagery and text copied from a third-party website, does not make any bona fide offering of its own products or services and does not contain any disclaimer of association with either the Complainant or Distillery Software. On this basis, the Complainant suggests that the Respondent is solely using the disputed domain names to disrupt the Complainant’s business.

Finally, the Complainant asserts that the Respondent has engaged in a pattern of targeting marks in the CBD products industry, as evidenced by the results of a Reverse WHOIS search using the Respondent’s email address. It notes that the Respondent has registered the following domain names that target the CBD industry: ; ; and . It says that the Respondent’s pattern of targeting legitimate CBD retailers constitutes yet further evidence of its bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights for its CBDISTILLERY mark, namely United States trade mark registration number 6,406,909 registered on July 6, 2021 and European trade mark number 017912596 registered on September 25, 2018, both for the mark CBDISTILLERY.

Each of the disputed domain names wholly incorporates this mark before the Top-Level-Domain (“TLD”) name element and therefore both and are confusingly similar to the Complainant’s registered trade mark and the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that CBDISTILLERY is an arbitrary term which has no meaning outside its use as a means to identify the Complainant as a source of certain products and services. It has asserted that to its knowledge the Respondent has never been known by the CBDISTILLERY mark and has never used it except in relation to the disputed domain names. Further, it has submitted that the Respondent is not a licensee or authorised reseller of the Complainant and is not otherwise authorised to use the Complainant's mark for any purpose.

It is the Complainant’s contention that the Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services. In this regard, the Panel notes that the disputed domain name is currently inactive and does not display any content and effectively amounts to a passive holding. While the disputed domain name does not currently resolve to an active site, based on the evidence filed by the Complainant and as at the date of filing, this disputed domain name resolved to a site that contained imagery and text relating to software development services that reproduced elements from a prior version of the website at a different domain name by a legitimate provider of software development services (“Distillery Software”). The Complainant has provided evidence that the Respondent’s site used the same contact phone number as Distillery Software and the same “hello@” contact email address and that it featured content showing the same client work as Distillery Software. It notes that nearly all of the links on the website were disabled with the exception of the “Shop” link from which the Respondent ostensibly offered for sale three books about UX design. The Panel is not aware of any actual connection between the Respondent and Distillery Software. The Panel agrees with the Complainant that this evidence is not consistent with the Respondent having made a bona fide offering of goods and services from the disputed domain name.

The Panel therefore finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in either of the disputed domain names. The Respondent has failed to rebut the Complainant’s case in relation to each of the disputed domain names and as a result and for the reasons set out under Part C below. The Panel finds that the Complaint also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The Complainant has used its CBDISTILLERY mark since 2016 in relation to its hemp based products and the first of its trade mark registrations for this mark, namely European trade mark number 017912596 was registered on September 25, 2018. The disputed domain names were registered approximately two years after this date, respectively in September and October 2020.

The Complainant’s CBDISTILLERY mark is a combination of the CBD abbreviation for cannabidiol and the word distillery and is therefore a coined term that is distinctive in connection with the Complainant’s products and services. Since commencing in business in 2016, the Complainant appears to have become a large player in the market, at least in the United States, has attracted media attention and has a developed online presence. It registered its own domain names for and in 2018 and 2016, respectively and asserts that it has extensively used, promoted, and advertised under its CBDISTILLERY mark for the past five years. In these circumstances it seems highly unlikely to the Panel that the Respondent was not aware of the Complainant’s business and CBDISTILLERY mark when it registered the disputed domain names in September and October 2020. A simple Internet search would have sufficed to identify the Complainant’s mark and business and considering the distinctive nature of the Complainant’s mark and that the Respondent has not subsequently used either of the disputed domain names in relation to a bona fide offering of goods or services, as noted under Part B above, the Panel finds it most likely that the Respondent had knowledge of the Complainant’s mark when it registered each of the disputed domain names.

The disputed domain name is currently inactive and based on the Panel’s attempt to review the website at it now also appears to be inactive. Factors that have been considered relevant in applying the passive holding doctrine, as noted at section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

The Panel has already noted the distinctiveness of the Complainant’s CBDISTILLERY mark as a coined term. The Respondent has failed to submit a response in this case or to respond to the Complainant’s assertions and it used the same privacy service to conceal its identity when registering each of the disputed domain names. Finally, in view of the very distinctive nature of the Complainant’s mark, the fact that it had been used and registered for quite some time prior to the registration of the disputed domain names and the lack of evidence of use by the Respondent in relation not a bona fide offering of goods or services, the Panel considers it highly unlikely that there is a plausible explanation for the good faith use by the Respondent of each of the disputed domain names. As such, the Panel finds that both of the disputed domain names are currently being passively held in bad faith.

Even if the website to which the domain name resolved at the date of filing of the Complaint is to be considered as the relevant website, for the reasons outlined under Part B above, the Panel thinks that it is more likely than not a fake website which featured duplicated contact details of a bona fide third party’s website in order to masquerade as being a website offering bona fide goods or services. Had that not really been the case, then the Respondent could have been expected to respond that it was using this disputed domain name in relation to a bona fide business, but it has failed to do so.

Finally, the Panel notes that in terms of the Complainant’s case made out under paragraph 4(b)(ii) of the Policy and evidence of a pattern of previous conduct, the Panel finds that although it is not convinced that the underlying respondent in Balanced Health Botanicals, LLC v. Privacy service provided by Withheld for Privacy ehf / Sander Cry, WIPO Case No. D2021-1988,is the same entity as the Respondent in this case (even if the same privacy service was used), it does appear, based on the reverse WhoIs searches filed in evidence, that the Respondent has registered several domain names that target other service providers in the CBD industry (Extract Labs, Veritas Farms, Pure Relief) and namely the domain names , and . As noted earlier, there is no plausible explanation for the Respondent’s registration of the disputed domain names containing the Complainant’s coined and distinctive mark and therefore the Respondent does appear to have registered the disputed domain names in order to prevent the Complainant from reflecting its mark in a corresponding domain name. In the context of the evidence of the Respondent’s pattern of domain name registration in relation to established traders in the CBD sector, this amounts to conduct fulfilling the requirements of paragraph 4(b)(ii) of the Policy and is evidence of registration and use in bad faith of both disputed domain names.

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 , be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: November 25, 2021

Full & Egal Universal Law Academy