Farmlane Brands, LLC v. Helene Isbell Biggane / Hembra Genetics Collection
Claim Number: FA2205001996757
Complainant is Farmlane Brands, LLC (“Complainant”), represented by Steven C. Sereboff, California, USA. Respondent is Helene Isbell Biggane / Hembra Genetics Collection (“Respondent”), represented by Anna M. Vradenburgh of One LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hembragenetics.com>, registered with Google 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 17, 2022; the Forum received payment on May 17, 2022.
On May 17, 2022, Google LLC confirmed by e-mail to the Forum that the <hembragenetics.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 19, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2022, 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@hembragenetics.com. Also on May 19, 2022, 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 7, 2022.
On June 14, 2022, an Additional Submission in the form of a Reply was received from Complainant. Respondent was notified of this Additional Submission on June 14, 2022.
On June 17, 2022, an Additional Submission was received from Respondent in the form of a response to Complainant’s Reply. Complainant was notified of this Additional Submission on June 17, 2022.
On June 21, 2022, a Second Additional Submission in the form of Complainant’s Trademark Registration for the EMBRA mark was received from Complainant. Respondent was notified of this Additional Submission on June 21, 2022.
On June 13, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Scott R. Austin as Panelist.
Due to exceptional circumstances the Panel issued several orders extending the deadline to render its decision to July 11, 2022.
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. Co Complainant, Farmlane Brands, LLC, based in Carpinteria, California provides agronomic consulting services under the service mark HEMBRA (the “HEMBRA Mark”) which services include “providing farming and agricultural advice; agricultural consulting services providing crop advice, namely, agronomic, irrigation, and nutrient support and advice; agronomic consultant services analyzing agricultural crop production”.
2. Complainant also provides a website featuring information in the fields of agriculture and farming accessed through its official domain name <hembraconsulting.com> (the “HEMBRA Mark Website”).
3. Complainant has done business and traded using the HEMBRA Mark since at least January 1, 2018.
4. Complainant owns the following trademark registration protecting the HEMBRA Mark in the United States:
U.S. Trademark Registration No. 5,839,049, HEMBRA, filed with the United States Patent and Trademark Office (“USPTO”) on January 29, 2019, registered August 20, 2019, for business consulting services in the agricultural field in International Class 35, and agronomic consulting services providing farming and agricultural advice; agricultural consulting services providing crop advice, namely, agronomic, irrigation, and nutrient support and advice; agronomic consultant services analyzing agricultural crop production; providing a website featuring information in the fields of agriculture and farming.in International Class 44 and claiming a first use date of January 1, 2018 for each class of services.
5. Complainant owns the following trademark registration and pending application for protecting the related mark EMBRA in the United States which Complainant submits is the phonetic equivalent of the HEMBRA Mark because the “H” is silent when spoken:
U.S. Trademark Registration No. 6,768,484, EMBRA, filed with the USPTO on May 9, 2019, registered June 21, 2022, for Cigarette rolling papers; Cigarettes; Herbs for smoking; Lighters for smokers; Tobacco grinders. in International Class 34 and claiming a first use date of September 1, 2021.
Application for U.S. Trademark Registration Ser. No. 97/248, EMBRA, filed on an intent-to-use basis with the USPTO on February 1, 2022, for Alcoholic beverages except beers; Alcoholic beverages, namely, tequila; Alcoholic cocktails.
6. Respondent’s <hembragenetics.com> disputed domain name is virtually identical and confusingly similar to Complainant’s HEMBRA Mark because it incorporates the HEMBRA Mark in its entirety and adds the related and descriptive term, “genetics,” and the “.com” generic top-level domain (“gTLD”).
7. The term “genetics” is commonly used as a descriptive term in corporate brands to designate the business relates to biological technology, especially those in the agricultural field such as Complainant.
8. Respondent has no legitimate interests in the disputed domain name because Complainant has no association or relationship with the Respondent, Respondent is not commonly known by the disputed domain name and Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks, nor has it licensed or otherwise permitted the Respondent to register any disputed domain name incorporating those trademarks.
9. Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s use is illegitimate because the HEMBRA Mark is incorporated in the disputed domain name to access Respondent’s website at www.hembragenetics.com which promotes and sells marijuana products internationally and across US state lines which is illegal under the federal Controlled Substances Act.
10. Respondent registered and uses the <hembragenetics.com> disputed domain name in bad faith. Respondent relies on confusion with Complainant’s mark to divert customers to its website for commercial gain. The domain is misleadingly diverting Complainant’s customers, prospective customers, business partners and prospective business partners and to tarnish Complainant’s trademark for profitable gain.
B. Respondent
1. Respondent, Helene Isbell Biggane/Hembra Genetics Collection, is a female-owned company engaged in the sale of hemp seeds.
2. Respondent registered the <hembragenetics.com> domain name on September 13, 2018.
3. Respondent’s registration of the disputed domain name predates all of Complainant’s applications for trademark registration.
5. Respondent registered and uses the <hembragenetics.com> domain name purposefully and to reflect the nature of its business, not arbitrarily.
6. Respondent contends that its business is lawful.
7. Respondent contends that Complainant’s services constitute an illegal use of the HEMBRA mark, and thus Complainant cannot claim rights in the mark.
8. Complainant lacks evidence to substantiate its claims.
9. Respondent was unaware of Complainant’s existence and has not attempted to divert Complainant’s customers for commercial gain.
10. Respondent has not attempted to capitalize on confusion with Complainant’s business.
C. Additional Submissions
The Panel has given due consideration to the additional arguments and cases cited in the additional submissions noted in reaching its decision below, although such additional submissions are discouraged due to the intended summary nature of UDRP proceedings. Taking those arguments into consideration without corresponding evidentiary support submitted by the parties has in part resulted in the additional delay for the Panel to determine the applicability and weight accorded, if any, to each, and its application to the sections of the Policy in the Panel’s decision below.
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 HEMBRA Mark, both by virtue of its valid and subsisting trademark registration with the USPTO (Reg. No. 5,839,049) shown in the Annexes to its Complaint and as a result of the goodwill and reputation acquired through its use of the HEMBRA Mark since its claimed first use date of January 1, 2018 set forth in the Certificate of Registration issued by the USPTO and assigned to Complainant by its predecessor in interest, Hembra Consulting, LLC, by virtue of assignment effective September 20, 2019, recorded in records of the USPTO at Reel 7672/ Frame 0973 on March 28, 2022. The Panel finds that Complainant has demonstrated it has established trademark rights in the HEMBRA Mark under Policy 4(a)(i).
Respondent contends that its registration of the disputed domain name predates Complainant’s alleged rights in the HEMBRA Mark. Prior UDRP panels have held 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 HEMBRA Mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, WIPO Case No. D2003-0527. See also, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
Complainant argues the disputed domain name is identical or confusingly similar to Complainant’s HEMBRA Mark because it contains the HEMBRA Mark in its entirety with the addition of “genetics”, a descriptive term used in corporate brands to designate the business relates to biological technology and the generic top-level domain (“gTLD”).
Prior UDRP panels have found that the addition of a generic or descriptive term and gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between disputed domain name and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); 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 it has not attempted to capitalize on confusion with Complainant’s business 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 HEMBRA Mark in its entirety remains fully recognizable within the disputed domain name and the descriptive term after the Mark is insufficient to prevent a finding of confusing similarity between the disputed domain name and HEMBRA Mark under Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), and 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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006).
Complainant asserts that Respondent has no rights or legitimate interests in the Disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the HEMBRA Mark, and Complainant has no relationship, affiliation, connection, endorsement or association with Respondent. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Before Complainant’s complaint was filed to force the registrar to remove Respondent’s privacy shield, the WHOIS listed, “Contact Privacy Inc. Customer 7151571251” as the Respondent. Only after the removal did the registrar list “Helene Isbell Biggane / Hembra Genetics Collection” as the registrants of record. None of the Annexes submitted by Respondent reference show Ms. Biggane in correspondence submitted as evidence of preparations for the company’s business and those individuals identified are not given any reference to the role or status as an employee or officer of the “company” operating Respondent’s business. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, and lack of evidence submitted by Respondent demonstrating that it is commonly known by the disputed domain name, the Panel finds that Respondent is not commonly known by the Disputed domain name in accordance with Policy ¶ 4(c)(ii).
Additionally, lack of authorization to use a mark further evinces that a respondent lacks rights and legitimate interests in the mark. 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)”).
Complainant also claims that Respondent does not use the <hembragenetics.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, which shows Respondent promotes, advertises, and sells cannabis related products bearing the HEMBRA Mark. Regarding the term “HEMBRA” in the disputed domain name, the Panel notes that a brief search on Respondent’s Official Website shows that the term HEMBRA frequently appears on its own, separate from the terms “genetics” or “collection” and reveals Respondent is located in the State of California where Complainant is located. Consumers could assume therefore an affiliation or false association between the disputed domain name and Complainant because its business is located in the same state as Respondent. The appended descriptive term, “genetics” is commonly used as a descriptive term in corporate brands to designate the business relates to biological technology and is commonly used in the agricultural field such as Complainant’s cannabis products identified by the HEMBRA Mark and highly related to Respondent’s hemp products accessed through the disputed domain name. Furthermore, the Complainant avers, the website to which the disputed domain name resolves promotes similar goods as those of Complainant and will create a false impression of an online location either established by the Complainant or having an affiliation with the Complainant. Such illegitimate use of Complainant’s mark should not be considered bone fide Amazon Technologies, Inc. v. Sidra Aziz FA2012001925185 (Forum Apr. 1, 2021).
Considering that Complainant states that no authorization, license, permission, or consent was granted for the use of the HEMBRA 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 <henbraconsulting.com> domain name with knowledge of Complainant’s rights in the HEMBRA Mark because Respondent fully incorporated the mark into the disputed domain name and used the domain to compete with Complainant.
Respondent contends that at the time of registration of the disputed domain name, Respondent denies any awareness of Complainant and Complainant’s alleged rights in the HEMBRA Mark and contends Complainant was not using the mark.
Prior UDRP Panels have held that the panel may undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. 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. consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases. See also WIPO Overview 3.0, Section 4.8.
The Panel’s independent review of public records revealed Complainant registered its official domain name <hembraconsulting.com> on December 17, 2017, a few weeks before the first use date of January 1, 2018, claimed in its trademark registration for the HEMBRA Mark. Further a brief review of the Internet Archive for evidence of use of its official domain name shows evidence the domain resolved to the landing page of Complainant’s website operating at least as early as August 27, 2018, when the site was crawled showing Complainants address in California and a link to an about page. The about page shown in Complainant’s trademark application and attached as an Annex to Respondent’s Response, shows the same color scheme as the August 27, 2018, search result and the address is the same as on the operating website. Based on this evidence the panel finds it is reasonable to conclude that Complainant, through its predecessor in interest was using its mark at least as early as January 1, 2018, and nothing submitted by Respondent leads the Panel to conclude otherwise. Further, given the summary nature of these proceedings prior UDRP panels have been reluctant to question what has been accepted by the USPTO as the claimed date of first use in a party’s trademark registration. Even in those instances where a panel has refused attempts to extend common law trademark rights to a date earlier than the first use date in a cited registration for a complainant’s mark, the first use date in the cited registration was accepted without requiring evidence of advertising expenditure or third party recognition evidence typically required to show secondary meaning in the absence of a registration first use date.
Complainant also contends bad faith registration and use by Respondent under the concept of willful blindness given the presence of Complainant’s business in searchable public databases such as WhoIs, Google, and the California secretary of state, that would have revealed Complainant’s domain and website using the Hembra Mark had Respondent conducted any search of those databases during the 8 months Complainant was using its mark before the Respondent registered the disputed domain name. Prior UDRP Panels considering willful blindness as a basis for a finding of bad faith conduct will look to the facts of the case to determine whether the respondent has undertaken good faith efforts to screen registrations against readily available online databases to avoid the registration of trademark-abusive domain names. Respondents who (deliberately) fail to search and/or screen registrations against available online databases would be responsible for any resulting abusive registrations under the concept of willful blindness. See WIPO Overview 3.0, Section 3.2.3; See also 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”). Based on the foregoing the Panel finds it reasonable to infer that Respondent had actual knowledge of Complainant’s HEMBRA Mark, proving bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent registered and uses the <hembragenetics.com> disputed 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.
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 cannabis related products bearing the HEMBRA Mark. Respondent in its response admits that Complainant and Respondent are competitors but claims that Complainant’s business is illegal because its website appears to show growing marijuana plants. In support of its contention that Complainant’s business is illegal, Respondent submits in the Annex to its response a news article from “Cannabis Business Times”, dated November 2021, interviewing the husband and wife founders of Complainant, who as a long time farming family said they received support from their extended family when they expanded into cannabis, “despite the risks associated with a federally illegal crop”. Respondent submitted the article to show that Complainant was operating illegally and should have its trademark registration cancelled. However further down that same article reads “Today with all permits approved and in hand, David and Cindy are retrofitting the entire greenhouse operation into 14 acres of hydroponic cannabis.” A search by the Panel of the public records of the California Department of Cannabis Control shows Complainant currently holds a total of 11 licenses relating to the lawful cultivation, distribution and transport of cannabis dating back as early as March 12, 2019. From this information.
In contrast Respondent claims that its business is legal because it asserts the seeds sold on its website are within the exclusion from the Controlled Substances Act for “hemp” which is essentially defined as any part of a cannabis plant including seeds, “with a delta-9-tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis.” as announced letter Respondent obtained from a representative of the Drug Enforcement Administration responding to a question on the control status of Cannabis Sativa L. seeds, tissue culture, and any other genetic material of Cannabis Sativa L. under the Controlled Substances Act (CSA). of the Department of Justice. Although the standard is stated in the letter in Respondent’s Annex, there is no specific reference in the letter to Respondent or its seed products, or any other evidence that its products comply with this standard. There is a lengthy declaration attributed to the registrant named Helene Isbell Biggane which speaks to a number of key factual evidentiary areas upon which Respondent relies such as the THC concentration of Respondent’s seed products, the date Respondent first marketed its products, and lack of knowledge of Complainant’s mark. Unfortunately after taking the time to prepare it and rely substantially upon it to support its key arguments, the declaration is not signed, much less witnessed or notarized, and makes no reference in its signature block to how that person is tied to Respondent. As with prior UDRP Panels, this Panel is unwilling to rely upon or give weight to an unsworn declaration the declarant is unwilling to sign with no reference beneath their signature attesting to their role in relation to the operation, organization or formation of Respondent as an officer, director, authorized representative or employee. See Traditional Tuscany v. Maria Concetta de Concini, WIPO Case No. 2006-0997.
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)).
Taking all of the foregoing circumstances into account 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 <hembragenetics.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: July 12, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page