Ghost Management Group, LLC v. Ruben Granados / ShooshTime Inc.
Claim Number: FA1505001619814
Complainant is Ghost Management Group, LLC (“Complainant”), represented by Jonathan A. Menkes of Knobbe, Martens, Olson & Bear, LLP, California, USA. Respondent is Ruben Granados / ShooshTime Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <weedmaps.co>, registered with GoDaddy.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 15, 2015; the Forum received payment on May 15, 2015.
On May 20, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <weedmaps.co> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 May 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2015 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@weedmaps.co. Also on May 22, 2015, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 16, 2015, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant contends:
1. Policy ¶ 4(a)(i)
a. Complainant has established rights in the WEEDMAPS mark through registration with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,321,512, registered April 16, 2013).
b. Respondent’s disputed domain name <weedmaps.co> is identical to Complainant’s WEEDMAPS mark. The disputed domain name includes Complainant’s entire mark and the generic top-level domain (“gTLD”) “.co.” The addition of a gTLD is not relevant when determining if a disputed domain name is identical to a mark.
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the <weedmaps.co> domain name. WHOIS information indicates that Respondent is listed as “Ruben Granados” of “ShooshTime Inc” which does not resemble Respondent’s disputed domain name.
b. Respondent’s registration of a domain name that incorporates Complainant’s whole WEEDMAPS mark, in addition to the apparent use of the domain to redirect to Respondent’s commercial webpage, indicates that Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
3. Policy ¶ 4(a)(iii)
a. Respondent’s registration of a disputed domain name identical to Complainant’s WEEDMAPS mark that redirects to a Respondent’s own competing business demonstrates bad faith disruption of Complainant’s business.
b. Respondent’s bad faith is demonstrated through using the disputed domain name to attract and confuse internet users to a webpage displaying advertisements for Respondent’s commercial gain.
c. Respondent’s disputed <weedmaps.co> domain name can be considered typosquatting and bad faith through preying on users who forget to enter the letter “m” at the end of “.com.”
d. Respondent as a direct competitor of Complainant had actual or constructive knowledge at the time of registration. This knowledge is evidence of Respondent’s bad faith.
B. Respondent contends:
1. The Respondent has not submitted a Response in this proceeding.
1. Respondent’s <weedmaps.co> domain name is confusingly similar to Complainant’s WEEDMAPS mark.
2. Respondent does not have any rights or legitimate interests in the <weedmaps.co> domain name.
3. Respondent registered or used the <weedmaps.co> domain name in bad faith.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims that it has rights in the WEEDMAP mark through registration of the mark with the USPTO (Reg. No. 4,321,512, registered April 16, 2013). Panels routinely find that registration with the USPTO is sufficient to establish a complainant’s rights in a mark pursuant to Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). The Panel finds in this case that Complainant has established their rights in the WEEDMAPS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s disputed <weedmaps.co> domain name is identical to Complainant’s WEEDMAPS mark. The Panel notes that Respondent’s disputed domain name incorporates Complainant’s entire WEEDMAPS mark and adds the gTLD “.co.” Previous panels regularly find that the addition of a gTLD to a domain name does not affect a finding that the disputed domain name and the mark are identical. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Accordingly, the Panel finds that Respondent’s <weedmaps.co> disputed domain name is identical to Complainant’s WEEDMAPS mark.
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 argues that Respondent is not commonly known by the disputed <weedmaps.co> domain name. As evidence of this, Complainant has included WHOIS information that the registrant of the disputed domain name is listed as “Ruben Granados” whose organization is “ShooshTime Inc.” The Panel notes that neither “Ruben Granados” or “ShooshTime Inc” resemble the disputed <weedmaps.co> domain name. Previous panels have found that a respondent is not commonly known by a disputed domain name based on WHOIS and other information available in the record. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel finds that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii).
Complainant claims that Respondent’s use of the disputed <weedmaps.co> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel notes Complainant’s attached Annex 12 which shows that Respondent’s <weedmaps.co> domain name redirects to Respondent’s competing <thcfinder.com> webpage. Panels have held that a respondent using a complainant’s mark to divert users to a website that competed with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Based on Respondent’s use of the <weedmaps.co> domain name the Panel finds that Respondent is not making a
bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant argues that Respondent using the disputed domain name to redirect to Respondent’s own competing webpage demonstrates bad faith disruption of Complainant’s business. The Panel again notes Complainant’s attached Annex 12 which shows Respondent’s disputed <weedmaps.co> domain name redirecting to Respondent’s <thcfinder.com> website. Previous panels have found respondents to have acted in bad faith based on evidence that the disputed domain was used to divert users to a competing webpage. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel finds that Respondent has disrupted and competed with Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant further argues that Respondent intends to use the disputed domain name to attract and confuse internet users for Respondent’s commercial gain. Again, the Panel notes that Respondent’s disputed <weedmaps.co> domain name redirects to Respondent’s <thcfinder.com> webpage. See Complainant’s attached Annex 12. Panels have found that using a domain name confusingly similar to a complainant’s mark can be considered attracting and confusing internet users under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)). The Panel in this case finds that Respondent attracted and confused internet users for Respondent’s commercial profit in bad faith according to Policy ¶ 4(b)(iv).
Complainant further argues that Respondent’s disputed <weedmaps.co> domain name can be considered typosquatting through preying on users who forget to enter the letter “m” at the end of “.com.” Panels have found that a respondent typosquatting can be considered evidence of bad faith registration. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel considers Respondent’s registration of <weedmaps.co> to be typosquatting, and it finds Respondent to have acted in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant asserts that Respondent was on notice of Complainant’s rights in the WEEDMAPS mark prior to domain name registration, because Respondent included the entire mark in the domain name. Complainant states that Respondent ought to be held to at least a constructive notice standard, if not an actual notice standard. While Complainant believes that constructive notice is sufficient, the Panel agrees that the trend in UDRP proceedings is to find bad faith only through actual knowledge. See, e.g., BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). However, the Panel agrees that the content of the domain name’s website provides evidence that Respondent knew enough about Complainant’s business to give Respondent the idea to place images of Complainant’s WEEDMAPS goods on the domain name’s website. As such, the Panel agrees that Respondent actually knew of Complainant’s rights in the mark and as such Respondent is liable of bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <weedmaps.co> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 29, 2015
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