national arbitration forum

 

DECISION

 

Patients Mutual Assistance Collective Corporation d/b/a Harborside Health Center v. UMMA

Claim Number: FA1206001451414

 

PARTIES

Complainant is Patients Mutual Assistance Collective Corporation d/b/a Harborside Health Center (“Complainant”), represented by Mary L. Shapiro, California, USA.  Respondent is UMMA (“Respondent”), represented by Rhett Graff, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <harborsidedispensary.com>, and <harborsidecollective.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

          ROBERT T. PFEUFFER, Senior District Judge (Texas), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2012; the National Arbitration Forum received payment on June 29, 2012.

 

On July 3, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <harborsidedispensary.com> and <harborsidecollective.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On July 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@harborsidedispensary.com and postmaster@harborsidecollective.com.  Also on July 10, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A deficient Response was received on August 6, 2012.

 

 On August 13, 2012, an additional submission was received and was fully considered by the Panel, which material was found to very helpful in deciding the case.

 

On August 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed  ROBERT T. PFEUFFER as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

and Trademark Office (“USPTO”) for the HARBORSIDE HEALTH CENTER mark (e.g., Reg. No. 4,166,130 filed December 11, 2009; registered July 3, 2012).

 

B. Respondent

 Respondent contends:

 

C. Additional Submissions

On declaration of Mary L. Shapiro, counsel for Complainant, it submits evidence to support the allegations that Respondent is connected with the medical cannabis industry. It further states that the disputed domain names direct the public to competitors of complainant. The declarant also offers exhibits that link Respondent to UMMA (United Medical Marijuana Association), not “United Media Marketing Association”, as claimed by Respondent.

 

     FINDINGS              

The Panel concludes that the evidence supports these findings:

(1)  The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  The domain name has been registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

Preliminary Issue: Deficient Response

 

Respondent’s Response was received after the deadline to file a response. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5.  The Panel, at its discretion, has chosen to accept and consider this Response.  See Victoria’s Secret Stores Brand Management, Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).

 

Identical and/or Confusingly Similar

 

The Panel notes that Complainant does not provide evidence of a trademark registration for the HARBORSIDE mark with a national trademark authority.  However, the Panel finds that Complainant need not own a trademark registration in order for Complainant to demonstrate rights in the HARBORSIDE mark under Policy ¶ 4(a)(i).  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).

 

In support of Complainant’s rights in the HARBORSIDE mark, Complainant contends that it began providing medical cannabis and related services in 2006 under the mark.  Complainant claims that it was recently featured on the Discovery channel as a part of a documentary series.  Complainant argues that the media, both locally and nationally, have reported on Complainant.  The Panel  notes that Complainant provides copies of numerous articles discussing Complainant and using the HARBORSIDE mark in connection with Complainant.  See Complainant’s Exhibit E.  Complainant asserts that it owns trademark registrations with the USPTO that include the HARBORSIDE mark, such as the HARBORSIDE HEALTH CENTER mark (e.g., Reg. No. 4,166,130 filed December 11, 2009; registered July 3, 2012).  Based on this evidence, the Panel  has determined  that Complainant owns common law rights in the HARBORSIDE mark under Policy ¶ 4(a)(i).  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).

 

Complainant claims that Respondent’s <harborsidedispensary.com> and <harborsidecollective.com> domain names are confusingly similar to Complainant’s HARBORSIDE mark.  The Panel notes that the disputed domain names combine Complainant’s HARBORSIDE mark with the generic top-level domain (“gTLD”) “.com” and the descriptive term “dispensary” or “collective.”  The Panel finds that the additions of a gTLD and a descriptive term fail to adequately distinguish the disputed domain names from Complainant’s mark, the Panel therefore concludes  that Respondent’s <harborsidedispensary.com> and <harborsidecollective.com> domain names are confusingly similar to Complainant’s HARBORSIDE mark under Policy ¶ 4(a)(i).  See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).

 

While Respondent contends that the <harborsidedispensary.com> and <harborsidecollective.com> domain names are comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark.  See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant alleges that Respondent is not commonly known by the  <harborsidedispensary.com> and <harborsidecollective.com> domain names.  Complainant argues that Respondent’s name is “UMMA” or “United Medical Marijuana Association.”  The Panel notes that the WHOIS information lists “UMMA” as the registrant of the disputed domain names.  In light of this evidence, the Panel concludes that Respondent is not commonly known by the <harborsidedispensary.com> and <harborsidecollective.com> domain names under Policy ¶ 4(c)(ii).  See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Complainant argues that Respondent uses the <harborsidedispensary.com> and <harborsidecollective.com> domain names to redirect Internet users to Complainant’s competitor, ReeferRelief.com.  Complainant claims that ReeferRelief.com is a directory service that facilitates access to legal medical cannabis.  The Panel notes that, under Policy ¶ 4(a)(iii), Complainant alleges that the disputed domain names no longer direct to a competing website, but Complainant does not allege what they currently redirect to.  The Panel further finds that Complainant failed to provide a screenshot of the competing website.  Nevertheless, the Panel  holds that Respondent’s previous use of the <harborsidedispensary.com> and <harborsidecollective.com> domain names was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).

 

Registration and Use in Bad Faith

 

 Complainant asserts that Respondent told Complainant that it was willing to sell the <harborsidedispensary.com> and <harborsidecollective.com> domain names to Complainant.  Complainant provides an e-mail correspondence, which the Panel notes denies Complainant’s offer to purchase the disputed domain names for $25 and tells Complainant that the Complainant may make a monetary offer for the domain names.  See Complainant’s Exhibit C.  The Panel finds that Respondent registered and uses the <harborsidedispensary.com> and <harborsidecollective.com> domain names for the purpose of selling the domain names to Complainant for more than Respondent’s out-of-pocket costs; therefore the Panel holds  that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(i), regardless of the fact that Complainant initiated the offer.  See Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where the respondent, a domain name dealer, rejected the complainant’s nominal offer of the domain in lieu of greater consideration); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).

 

Complainant avers that Respondent’s registration and prior use of  the  <harborsidedispensary.com> and <harborsidecollective.com> domain names disrupted Complainant’s business.  Complainant claims that Respondent used the disputed domain names to redirect Internet users to the website of Complainant’s competitor, ReeferRelief.com.  The Panel determines that Complainant’s business was disrupted by Respondent’s registration and use of the disputed domain names, consequently the Panel concludes that Respondent registered and used the <harborsidedispensary.com> and <harborsidecollective.com> domain names in bad faith under Policy ¶ 4(b)(iii).  See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).

 

Finally, Complainant contends that Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark.  As noted above, Complainant claims that Respondent previously used the disputed domain names to resolve to a competitor’s website.  The Panel notes that Complainant does not assert how Respondent commercially benefits from this redirection or how Respondent creates confusion, aside from using the confusingly similar disputed domain names.  Nevertheless, the Panel finds that Respondent is commercially benefiting by creating Internet user confusion, the Panel therefore holds that Respondent registered and used the <harborsidedispensary.com> and <harborsidecollective.com> domain names in bad faith according to Policy ¶ 4(b)(iv).  See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <harborsidedispensary.com> and <harborsidecollective.com> domain names be transferred from Respondent to

Complainant.

 

 

 ROBERT T. PFEUFFER , Panelist

                                            Dated: August 15, 2012

 

 

 

 

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