Robert Crown v. Ian Kendrick
Claim Number: FA1803001776449
Complainant is Robert Crown (“Complainant”), represented by Alan Kendrick, Canada. Respondent is Ian Kendrick (“Respondent”), represented by James L. Buchal of Murphy & Buchal LLP, Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crowncannabis.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has not known conflict in serving as Panelist in this proceeding.
Piotr Nowaczyk as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 17, 2018; the Forum received payment on March 20, 2018.
On March 20, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <crowncannabis.com> 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 March 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2018 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@crowncannabis.com. Also on March 28, 2018, 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 timely Response was received and determined to be complete on April 18, 2018.
On April 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Piotr Nowaczyk 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims that Respondent’s <crowncannabis.com> domain name is confusingly similar to Complainant’s marks for CROWN-CANNABIS.COM and CROWN CANNABIS. According to Complainant, the domain name and the CROWN-CANNABIS.COM mark are phonetically identical and visually nearly identical, the difference being the lack of a hyphen between the word elements crown and cannabis in the domain name. However, as Complainant asserts, the absence of a hyphen here does not alter the overall commercial impression of the disputed domain name, as it creates a similar overall commercial impression to the CROWN-CANNABIS.COM mark. Complainant also contends that the commercial impression of the CROWN CANNABIS mark and the disputed domain name are the same, since the latter contains the base word elements of the CROWN CANNABIS mark.
Complainant states that Respondent has no rights or legitimate interests in the <crowncannabis.com> domain name. According to Complainant, Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Complainant also claims that Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use since the disputed domain name resolved to an inactive webpage since its creation.
Complainant contends that Respondent registered and uses the <crowncannabis.com> domain name in bad faith. According to Complainant, Respondent replied to Complainant’s request to purchase the domain name by offering the domain name in great excess of out-of-pocket expenses and placed the domain name up for auction shortly after. Further, Complainant emphasizes that Respondent has a history of obtaining cannabis related domain names and as not made any demonstrable preparations to use the resolving webpage associated with the disputed domain name.
B. Respondent
Respondent claims to own over sixty-five domain names with the most general pairing of terms related to cannabis and regality, none of which intended to target Complainant. Respondent asserts that he registered these domain names in hopes that Respondent’s cannabis related business efforts come to fruition. He also contends that he had no knowledge of Complainant or its business.
Respondent emphasizes that Complainant’s domain name <crown-cannabis.com> was registered after he registered the disputed domain name.
According to Respondent, he has never used the domain name to offer competing goods or services.
Finally, Respondent claims that he did not register the domain name with the purpose of selling it. Further, Respondent asserts that he has not knowingly received any offers to purchase the domain from Mr. Crown. Here, he emphasizes that Complainant’s representative is his father with whom Respondent has restricted any communication for over 5 years. Moreover, Respondent admits that on February 14, 2018 he listed the domain name for sale for $1,798 on GoDaddy’s Premium Listings, as that was the fair market value indicated by the registrar, GoDaddy. Respondent also states that he is still ready to sale the disputed domain for the same $1,798 price.
C. Additional Submissions
Complainant submits that the disputed domain name was originally registered by Respondent in name of Alan Kendrick, Complainant’s representative, without his knowledge or permission. The same happened to some 40 other domain names. Complainant considers it to be fraudulent registration. Complainant emphasizes that Respondent complied with a notification that Alan Kendrick wanted to have his name removed from all of these registered domains.
Moreover, Complainant submits that he not only holds federal trademark registrations for his marks, but those marks hold certain common law rights and priority of use from at least as early as January 1, 2012, which precedes the Respondent’s domain registration by more than a year. Complainant claims that he put considerable time, money and effort into building these brands and the goodwill encompassed in these brands.
Complainant declined Respondent’s sale offer as the proposed price was far in excess of the cost of maintaining the domain.
Complainant engages in the business of providing educational services, namely, conducting informal on-line programs in the fields of cannabis information, and printable materials distributed therewith. Complainant also owns trademarks which cover clothing and apparel services:
-CROWN-CANNABIS.COM mark through its registration of the mark with the United States Patent and Trademark Office (Reg. No. 5,353,120, registered December 12, 2017);
- CROWN CANNABIS mark through its registration of the mark with the United States Patent and Trademark Office (Reg. No. 5,393,842, registered February 6 2018).
Complainant also owns the domain name <crown-cannabis.com>, created on April 6, 2014.
Respondent registered the <crowncannabis.com> domain name on May 28, 2013.
By letter of October 20, 2016, Complainant offered Respondent to trade the disputed domain name for one or more of the domain names owned by Complainant. By letter of January 18, 2018, Complainant offered Respondent to buy the disputed domain name for $500. Respondent did not respond.
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.
The disputed domain name contains either of Complainant’s marks in its entirety. For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the top-level domain (“TLD”) suffixes “.com” may generally be disregarded (see LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No. D2012-0607). Although, the Panel notes that in case of the CROWN-CANNABIS.COM mark TLD “.com” is a part of the mark.
Given the above, the Panel finds that the disputed domain name is identical to the Complainant’s registered marks and as a consequence, Complainant has met the requirement of paragraph 4(a)(i) of the Policy.
The WHOIS information about the disputed domain name as well as all other information in the record does not indicate that the Respondent was commonly known by the disputed domain name.
Moreover, Respondent has not used the domain name in connection with an active webpage since its creation and has failed to evidence any preparations to use it for business purposes as alleged. The Panel finds that the failure to make an active use of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Therefore, Complainant has met the requirement of paragraph 4(a)(ii) of the Policy.
Firstly, the Complainant’s marks were in first in use at least as early as January 1, 2012 so they predate registration of the disputed domain name. Moreover, the disputed domain name was fraudulently registered by Respondent in the name of Alan Kendrick, Complainant’s legal representative.
Secondly, when Complainant contacted Respondent about purchasing the domain name, Respondent replied by posting the disputed domain name for sale at an auction for an excess of out-of-pocket costs ($1,798.00). The Panel reasons that because the disputed domain name remains inactive and Respondent did nothing but offered the domain name for sale, the registration was for that sole purpose (See Educational Testing Service v. TOEFL, WIPO Case D2000-0044).
In these circumstances, Panel decides that Complainant established bad faith registration and use, thus paragraph 4(a)(iii) of the Policy is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <crowncannabis.com> domain name be TRANSFERRED from Respondent to Complainant.
Piotr Nowaczyk, Panelist
Dated: May 7, 2018
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