Swisher International, Inc. v. Michael Brooks
Claim Number: FA2105001945660
Complainant is Swisher International, Inc. (“Complainant”), represented by Elizabeth Lee D'Amore of Lucas & Mercanti, LLP, New York, USA. Respondent is Michael Brooks (“Respondent”), represented by Amanda Conley of Brand & Branch LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carolinacbdhempire.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Scott R. Austin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2021; the Forum received payment on May 19, 2021.
On May 20, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <carolinacbdhempire.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 May 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 2021, 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@carolinacbdhempire.com. Also on May 20, 2021, 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 June 9, 2021.
A timely Additional Submission was received from Complainant on June 11, 2021.
On June 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Scott R. Austin 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:
1. Complainant, an international cigar company founded in the United States in 1861, is a leader in the tobacco business, accounting for one third of the nation's cigar sales, and sells rolling papers as well as hemp related products under the trademark HEMPIRE (the “HEMPIRE Mark”) since at least as early as 2005 in the United States.
2. Complainant’s products are distributed through trade channels of brick-and-mortar convenience stores, smoke shops and dispensaries throughout the world, including in 21,500 stores across the U.S, and via select internet vendors.
3. Complainant’s hemp rolling papers are the number one hemp rolling paper by volume in the U.S. and are sold side-by-side with numerous cannabidiol or “CBD” products related to rolling papers.
4. Complainant owns exclusive rights to the HEMPIRE Mark in the United States through its trademark registration with the United States Patent and Trademark Office (“USPTO”), United States Trademark Registration No. 3,845,267, HEMPIRE, registered on Sep. 7, 2010, for “Cigarette papers; Cigarette rolling papers” in international class 34 and claiming a first use date of October 31, 2005.
5. Complainant has pending applications for U.S. trademark registration of the HEMPIRE Mark in connection with other products, including clothing, hemp wraps for smoking, hemp sticks for smoking, and hemp cones for smoking, all derived from hemp.
6. Complainant’s HEMPIRE Mark is well-known and exclusively associated with Complainant in the United States where Respondent is located in North Carolina.
7. Complainant is also the owner of the domain name <hempire.com> from which Complainant operates its official website offering information about Complainant’s rolling papers and hemp related products as well as a store locator search tool for users to locate stores where its rolling papers and hemp related products are sold (“Official Website”).
8. The disputed domain name was registered on December 21, 2018 and resolves to an active website promoting products competing with those of Complainant.
9. The disputed domain name is identical or confusingly similar to Complainant’s HEMPIRE Mark.
10. Respondent lacks rights and legitimate interests in the <carolinacbdhempire.com> domain name as it is not commonly known by the disputed domain name and is not authorized to use the HEMPIRE mark.
11. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent diverts Internet traffic to a website that promotes competing goods.
12. The disputed domain name was registered and is being used in bad faith.
13. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the HEMPIRE mark.
14. Respondent uses the disputed domain name to promote, advertise, and sell products related to and in competition with Complainant’s business.
B. Respondent
2. Respondent’s use of the disputed domain name is a bona fide offering of goods in line with the generic meaning of the domain name.
3. Respondent did not register or use the <carolinacbdhempire.com> domain name in bad faith.
4. Respondent makes a legitimate use of the domain name and Complainant provides no evidence of Respondent’s knowledge of the HEMPIRE mark prior to registration of the domain name.
C. Additional Submissions
Complainant’s Additional Submission
1. Respondent’s assertion that the term HEMPIRE is generic is completely unfounded and incorrect.
2. Respondent’s reliance upon a definition in the Urban Dictionary should be given little weight because the Urban Dictionary is not an authoritative source of definitions since it mainly serves as an entertainment site.
3. Given its limited audience a definition in the Urban Dictionary should not be considered controlling or authoritative.
4. Respondent provides no proof here that HEMPIRE is a widely accepted common term that people associate with the definition listed in the Urban Dictionary.
5. Respondent does not use the term HEMPIRE in accordance with the Urban Dictionary Definition on its own website.
6. The cases cited by Respondent on confusing similarity are distinguishable on their facts and inapposite.
7. Being known locally does not equate to being commonly known and Respondent has provided no evidence it is commonly known by the disputed domain name.
8. The third parties cited by Respondent for using the term HEMPIRE have been the subject of trademark enforcement action by Complainant, including successful UDRP proceedings.
9. The third party applications for US trademark registration employing the HEMPIRE Mark have been refused by the USPTO on a likelihood of confusion basis with Complainant’s registration for the HEMPIRE Mark.
10. Respondent had actual knowledge of the HEMPIRE Mark when it registered the disputed domain name because Complainant HEMPIRE branded products hold a leading position in the same marketplace in which Respondent operates and evidence submitted supports Complainant’s HEMPIRE Mark is well-known.
11. Respondent had actual knowledge of Complainant’s HEMPIRE Mark and targeted it when it registered the disputed domain name because Complainant has operated its Official Website at <hempire.com> since 1997, over 20 years before Respondent registered the disputed domain name on December 21, 2018.
After reviewing both Complainant's and Respondent's submissions, this Panel finds the following:
(1) the domain name registered by Respondent is confusingly similar to a mark in which Complainant has established trademark rights;
(2) Respondent has no rights or legitimate interests with respect to the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See Citigroup Inc. v. Philip Morrish, FA 1600832 (Forum 2015).
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
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018). Complainant has exclusive rights in the HEMPIRE Mark, both by virtue of its valid and subsisting, incontestable trademark registration shown in the Annexes to its Complaint and as a result of the goodwill and reputation acquired through its use of the HEMPIRE Mark since 2005. The Panel finds that Complainant has demonstrated its established trademark rights in the HEMPIRE Mark under Policy 4(a)(i).
Complainant argues the disputed domain name is identical or confusingly similar to Complainant’s HEMPIRE Mark because it contains the HEMPIRE Mark in its entirety with the addition of two descriptive terms, namely, the geographically descriptive term “carolina” and the term “CBD” a generic designation for Cannabidiol, a supplement derived from the hemp plant used for therapeutic purposes. See, Procana Laboratories Inc. v. Robert Anderson / DDB Solutions LLC / Daniel Bragg, FA1820435 (Forum Jan. 13, 2019)
Prior UDRP panels have found that the addition of a generic or descriptive phrase and gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
Respondent contends that the disputed domain name is comprised entirely of common and generic terms and thus cannot be deemed identical or confusingly similar to Complainant’s mark. This argument is more appropriately considered under Policy ¶¶ 4(a)(ii) and (iii).See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (The issue in the analysis of the first factor is not whether there is confusion in the trademark infringement sense (an issue more properly considered under the legitimate interest and bad faith factors), but rather whether there is sufficient similarity between the domain name and the trademark to advance to consideration of the second and third factors.)
The Panel finds therefore, that the disputed domain name is confusingly similar because Complainant’s registered HEMPIRE Mark in its entirety remains fully recognizable within the disputed domain name and the descriptive terms before the Mark are insufficient to prevent a finding of confusing similarity between the disputed domain name and HEMPIRE Mark under Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
The Panel is reminded that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <carolinacbdhempire.com> domain name because it is not commonly known by the disputed domain name and is not authorized to use the HEMPIRE Mark.
Prior UDRP panels have held that in the absence of evidence to the contrary, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent argues Respondent’s family-owned CBD dispensary is known locally as one of the top CBD dispensaries in the region, but as Complainant points out, Respondent provides no credible evidence in support of that statement. Prior UDRP panels have also held that being known locally does not equate to being commonly known. See Heel Quik, Inc. v. Goldman, et al., FA 92527 (Forum Mar. 1, 2000).
Additionally, lack of authorization to use a mark further evinces that a respondent lacks rights and legitimate interests in the mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Here, the WHOIS information of record identifies the registrant as “Michael Brooks” and nothing in the record rebuts Complainant’s assertion that it never authorized Respondent to use the HEMPIRE Mark in the disputed domain name.
The Panel finds, therefore, that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Prior UDRP panels have also found that a respondent has no rights or legitimate interests in a disputed domain name under Policy ¶ 4(c)(ii) where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information can be relied upon to show the respondent is not commonly known by the domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018); see also, Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Respondent argues that Respondent’s use of the <carolinacbdhempire.com> domain name is a bona fide offering of goods in line with the generic meaning of the domain name. As noted in discussing the first element of the Policy above the domain name incorporates in its entirety Complainant’s HEMPIRE Mark registered on the Principal Register in 2010, 8 years before Respondent registered and began using the disputed domain name. The USPTO prohibits the registration of a generic term on the Principal Register. Moreover, a brief review by the Panel of the USPTO’s publicly available application history for the Mark at www.uspto.gov shows no refusal to register the HEMPIRE Mark as generic or even as merely descriptive. Complainant’s registration has matured to the point it is now incontestable and in 2020 its first renewal was approved without question by the USPTO. See RockAuto, LLC v. Kamil Wszola / Blueconnex Inc., FA1440497 (Forum May 17, 2012) (“Paragraph 4.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions states the consensus view of UDRP panels regarding a panel’s independent review of a website linked to an at-issue domain name: ‘A panel may visit the internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision.)
Respondent argues the HEMPIRE Mark is generic because third parties use the term “Hempire” and relies upon a definition from the Urban Dictionary, a source that cannot be authenticated, and case precedent that the Panel finds inapposite and unpersuasive. In MSI Holdings, LLC v. Biohistory Research FA 626625 (Forum July 31, 2015) the panel found no confusing similarity between the at-issue domain name and the complainant’s SPEX mark because the appended term “affair” was clearly distinct from and not generic to complainant’s spectroscopy and laboratory measurement equipment products identified by its SPEX mark. In the disputed domain name here, however, both appended terms are generic to the hemp related products identified under Complainant’s HEMPIRE Mark, because Complainant’s hemp related products are sold in stores in both South and North “Carolina”. “CBD” is an acronym for cannabidiol and commonly used globally as the term to refer to products containing cannabidiol derived from the hemp plant and related to Complainant’s hemp products marketed under the HEMPIRE Mark.
Complainant also shows in its Annexes its vigilant enforcement efforts against third parties using the term Hempire, including USPTO actions, cease and desist letters, such as the one sent to Respondent twice, without reply, and a successful UDRP action against a different disputed domain name using the HEMPIRE Mark. See Swisher International, Inc v. Kerby Coman, FA 1944232 (Forum June 7, 2021). Complainant also shows in evidence submitted in the record that the USPTO has refused registration of the third party Hempire marks on a likelihood of confusion basis and cited Complainant’s registration as the conflicting registration. These facts do not support a finding that the HEMPIRE Mark is generic or that its registration is weak or invalid.
Complainant also claims that Respondent does not use the <carolinacbdhempire.com> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent diverts Internet traffic to its website that promotes competing goods.
Prior UDRP panels have held that use of a disputed domain name to redirect Internet users to a competing webpage is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
Complainant provides in an Annex to the Complaint a screenshot of the resolving webpage at the disputed domain, that shows Respondent promotes, advertises, and sells related smoking products bearing the HEMPIRE mark. Amend. Compl. Ex. 7. Regarding the term “Carolina” in the disputed domain name, the Panel notes that a brief search on Complainant’s Official Website on its “store locator” page reveals Complainant’s products are sold at a number of brick and mortar stores in both South Carolina and North Carolina, where Respondent is located. Consumers could assume therefore an affiliation or false association between the disputed domain name and Complainant because it has stores in both “Carolina” states. The second appended descriptive term, CBD is a generic designation for “cannabidiol” and is commonly used globally as the term to refer to products containing cannabidiol. “CBD” products are highly related to Complainant’s hemp products identified by the HEMPIRE Mark.
Considering that Complainant states that no authorization, license, permission, or consent was granted for the use of the HEMPIRE Mark in the disputed domain name, under these circumstances, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant contends that Respondent registered the <carolinacbdhempire.com> domain name with actual knowledge of Complainant’s rights in the HEMPIRE Mark because Respondent fully incorporated the mark into the disputed domain name and used the domain to compete with Complainant.
Under Policy ¶ 4(a)(iii), actual knowledge of a Complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark and the use the respondent makes of the domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”); Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., D2014-0878 (WIPO Aug. 5, 2014) (“Knowledge and targeting [of a trademark] may be proven inferentially”). After 20 years of use, Complanant’s HEMPIRE Mark is well-known, and Complainant has shown in the record submitted “HEMPIRE is the #1 hemp rolling paper brand by volume in the United States. Based on the foregoing the Panel finds it reasonable to infer that Respondent had actual knowledge of Complainant’s HEMPIRE Mark, proving bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent registered and uses the <carolinacbdhempire.com> domain name in bad faith since Respondent promotes products sold on Respondent’s website accessed at the disputed domain name that compete with Complainant’s business.
Prior UDRP panels have held that use of a disputed domain name to offer competing goods or services may evidence bad faith attraction for commercial gain per Policy ¶ 4(b)(iv). See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)).
Complainant’s evidence submitted with its complaint includes a screenshot of the resolving webpage at the disputed domain name, which shows that Respondent promotes, advertises, and sells competing smoking products bearing the HEMPIRE Mark. See Amend. Compl. Ex. 7. The Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <carolinacbdhempire.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: June 28, 2021
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