DECISION

 

Edible Communities, LLC v. Lucas Tournoux

Claim Number: FA2501002137617

PARTIES

Complainant is Edible Communities, LLC ("Complainant"), represented by Lindsay M.R. Jones of Merchant & Gould, P.C., Minnesota, USA. Respondent is Lucas Tournoux ("Respondent"), France.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ediblehi.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Jeffrey J. Neuman as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 29, 2025; Forum received payment on January 29, 2025.

 

On January 29, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <ediblehi.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 January 30, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2025 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@ediblehi.com. Also on January 30, 2025, 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 February 19, 2025.

 

On the same date as the Response was received, and just prior to the appointment of the Panel, Complainant submitted an Additional Written Submission.

 

On February 19, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey J. Neuman as Panelist.

 

On March 3, 2025, the Panel issued a Procedural Order under Rule 12 asking for certain clarifications from both the Complainant and the Respondent. More specifically, the Panel inquired about Complainant's previous ownership of the disputed domain and about the changes made by the Respondent to the Website after it received a complaint from a third party.

 

On March 4, 2025, Complainant issued a response to the Procedural order addressing Panel's questions.  No further response was received by the Respondent.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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

The Complainant, Edible Communities, LLC, asserts trademark rights in its EDIBLE brand, which it has used since at least 2004 in connection with print and web publications, as well as information services related to food, drink, travel, and other consumer interest areas. It owns multiple U.S. trademark registrations for EDIBLE and its derivatives, including marks that combine EDIBLE with dozens of geographic locations (e.g., EDIBLE HAWAIIAN ISLANDS, Edible Aspen, Edible Bronx, Edible Capital District, Edible LA, etc.), as detailed in Annex 3. These trademarks have acquired substantial goodwill and consumer recognition through continuous and uninterrupted use since 2004.

 

Complainant initially alleged that Respondent registered the disputed domain name, <ediblehi.com> on September 13, 2013, but in response to the Procedural Order, admitted that it was actually registered initially by a licensee of the Complainant. See Section D below (Response to Procedural Order).

 

Regardless, the Complainant asserts that the Respondent registered the disputed domain name despite lacking any statutory or common law trademark rights in the United States. The disputed domain name fully incorporates the dominant and distinctive EDIBLE mark, with only the addition of HI—a commonly recognized abbreviation for Hawaii. The Complainant frequently combines EDIBLE with geographic locations for its publications, including two-letter state codes, reinforcing the likelihood of consumer confusion.

 

The services offered on the Respondent's website are directly related to those covered under the Complainant's trademarks, including food, beverage, and travel publications.

 

The Respondent has no statutory or common law rights in the EDIBLE marks and was never authorized, licensed, or permitted to use them. The Respondent's use of the domain name does not constitute a bona fide offering of goods or services under UDRP Policy ¶ 4(c)(i) because it diverts consumers searching for Edible Communities to its own site, which promotes similar services.

 

The Respondent is not commonly known by EDIBLE and does not use the mark for legitimate noncommercial or fair use under UDRP Policy ¶ 4(c)(iii). Instead, it leverages the goodwill of the EDIBLE marks for commercial gain.

 

The Respondent registered and used the disputed domain name in bad faith, as it attempts to divert traffic away from Edible Communities. This is clearly demonstrated by the Respondent's use of the EDIBLE marks in connection with the provision of the same types of information and publication services offered by Edible Communities. The Respondent's website is intentionally designed to attract consumers looking for the Complainant and its services while instead promoting third-party services.

 

Consumers are likely to be confused regarding the content of the Respondent's website and its affiliation with the Complainant, as the website displays the same types of food, beverage, and travel information and publication services offered by the Complainant. Additionally, the Respondent acquired the domain name after the Complainant had established significant trademark rights, demonstrating prior knowledge of the EDIBLE marks.

 

Furthermore, the Respondent acquired the domain name after Edible Communities had already registered and used the EDIBLE marks. There would be no reason to register a domain name incorporating the term EDIBLE in connection with these services, especially when combined with a geographic location identifier (a practice commonly used by the Complainant)—unless the Respondent was aware of Edible Communities, its EDIBLE marks, and its associated services.

 

B. Respondent

The Respondent refutes the Complainant's claims of cybersquatting and bad faith, asserting a legitimate and good-faith use of the disputed domain.

 

Respondent claims that "following an initial complaint from our hosting provider (Infomaniak), we proactively changed the site name to "Edible Hi" to eliminate any confusion."  It argues that this "demonstrates our willingness to differentiate our site from Edible Communities."

 

It claims that only a small fraction of site traffic comes from search terms related to the Complainant, countering claims that the Respondent is profiting from its reputation.

 

Respondent acknowledges that Complainant "holds trademark rights to "Edible Communities" and "Edible Hawaiian Islands," which is why it voluntarily changed the name of the website.

 

It argues that the disputed domain name was acquired via a GoDaddy public auction for €5,605.55 after Complainant failed to renew its domain registration and that letting the name lapse in the first place constituted Complainant's abandonment of any rights to the domain name.

 

In an effort to reach an amicable resolution, Respondent proposes that it is willing to transfer the domain to the Complainant for the auction price (€5,605) or alternatively to include a disclaimer on the content of the disputed domain name and "modifying the content of our website to avoid any potential overlap with Edible Communities' branding."

 

C. Additional Submissions

The Complainant asserts that Respondent modified the content associated with the disputed Domain Name after the UDRP Complaint was filed, which should not be considered by the Panel, as the dispute should be assessed based on the circumstances at the time of filing.

 

Additionally, the Complainant challenges Respondent's claim that most visitors access the Domain Name through general search terms rather than specific references to the Complainant's brand. The Complainant argues that such claims do not negate the likelihood of confusion, especially given the use of the EDIBLE Marks on the Domain Name.

 

Further, the Respondent admits to acquiring the Domain Name after the Complainant's prior registration lapsed. The Complainant contends that this suggests an intent to create confusion rather than avoid it, particularly as the Respondent's use of the Domain Name aligns with the Complainant's asserted EDIBLE Marks and its business activities.

 

The Complainant argues that Respondent's offer to sell the Domain Name evidences bad faith, as recognized by Forum. Additionally, Respondent's willingness to add a disclaimer implicitly admits likely confusion, reinforcing the Complainant's claim of an unauthorized association with its brand.

 

D.        Responses to Procedural Order Under Rule 12

In Response to the Procedural Order, the Parties submitted the following information:

 

1.       Complainant

 

Complainant is the owner of the EDIBLE Marks, but it licenses those marks to third party licensees in connection with various geographic locations for those licensees to sell and promote Complainant's goods and services. The disputed domain name was originally registered by the first licensee of the EDIBLE HAWAIIAN ISLANDS trademark. Subsequently the first licensee transferred the disputed domain name to a second licensee of the Complainant's Mark who ultimately failed to renew the disputed domain name. Complainant believes this is when the Respondent was able to purchase the disputed domain name through the GoDaddy Auction in 2024. Complainant, however, acknowledges that it does not have the original documentation showing when the domain name was originally registered by the initial licensee or records of the transfer of the disputed domain name to the second licensee. 

 

2.       Respondent

 

Respondent did not submit a response to the Procedural Order.

 

PRELIMINARY ISSUE: INITIAL UNSOLICITED SUPPLEMENTAL FILING

Under Forum's Supplemental Rules, it is within the discretion of the Panel to accept or consider additional unsolicited submission(s).  See Supplemental Rule 7.

 

Panels are generally reluctant to accept additional unsolicited submissions especially when those submissions contain arguments that could have been foreseen and should have been included in the original Complaint.  However, Panels can accept additional submissions with respect to new allegations or evidence presented by the Respondent which may not have been able to have been foreseen.

 

In this case, the Panel will accept the Complainant's Additional Submission to the extent that it responds to Respondent's offer to sell the disputed domain name for the price it contends it paid for the disputed domain name, and "agreement" to add a disclaimer to the content associated with the Domain Name. 

 

FINDINGS

1.       The Disputed Domain Name, <ediblehi.com>, registered by the Respondent, is confusingly similar to the Complainant's EDIBLE mark.

 

2.       The Respondent has not demonstrated any rights or legitimate interests in the disputed domain names.

 

3.       On a balance of probabilities, the Respondent both registered and used the disputed domain name 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 and 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.

 

Identical and/or Confusingly Similar

Edible Communities is provider of print publication, web publication, and information services pertaining to the subject of food, drink, travel, and other related goods and services. Edible Communities first adopted the EDIBLE trademark in 2004. 

 

More specifically, Complainant owns trademark registrations for EDIBLE, including Registration No. 3979589 with the United States Patent and Trademark Office ("USPTO") issued on June 14, 2011. In addition, Complainant owns numerous trademarks with the USPTO for the term EDIBLE followed by geographic designations (such as EDIBLE ASPEN, EDIBLE BRONX, EDIBLE DC, etc.).   Of particular relevance to this matter, Complainant owns the trademark EDIBLE HAWAIIAN ISLANDS, Registration No. 3282312 with the USPTO issued on August 21, 2007, in connection with "Publications namely magazines and newsletters featuring the tourism, culinary and agriculture industries; Publications, namely, magazines and newsletters featuring local growers, food retailers, chefs and food artisans. 

 

Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i)."). This first element under the UDRP is essentially a standing requirement to determine whether the Complainant has jurisdiction to bring a UDRP action against the Respondent.  In accordance with the above, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues the disputed domain name is identical or confusingly similar to Complainant's marks in that it contains the entirety of the EDIBLE mark and the geographic abbreviation of the EDIBLE HAWAIIAN ISLANDS mark.  

 

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0") at ¶ 1.8, "[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. 

 

Although the term "hi" could also be associated with the generic short form of the word "hello", in this case, the Respondent admitted in its response that it registered the <ediblehi.com> domain name specifically because of the association with the Hawaiian Islands geographic territory and not because of the generic term for the short form of "hello." 

 

Moreover, while panelists typically disregard the content of the website associated with a domain name when assessing confusing similarity under the first element, some panels have nonetheless considered such content to confirm confusing similarity in cases where it appears prima facie that the respondent is targeting a trademark through the disputed domain name. See WIPO Jurisprudential Overview ¶ 1.15. In this case, the Panel does take note of the content of the website associated with the disputed domain name, as it appears, on its face, to be related to the Hawaiian Islands—further confirming confusing similarity.

 

Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant's marks per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  Once that prima facie case is made, 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").

 

A Complainant can establish a prima facie case by alleging that it has no relationship with the Respondent and did not authorize the Respondent to use its trademark. Once these facts are established, the burden shifts to the Respondent to demonstrate that it is either:

(i) making a bona fide offering of goods or services,

(ii) commonly known by the domain name, or

(iii) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. See Policy ¶ 4(c)(i) – (iii).

 

The Complainant alleges that the Respondent lacks any rights or legitimate interests in the <ediblehi.com> domain name, as the Respondent was never granted a license, authorization, or consent to use the EDIBLE or EDIBLE HAWAIIAN ISLANDS marks or to register domain names incorporating the Complainant's marks. The Complainant also asserts that the WHOIS record provides no evidence suggesting that the Respondent (or its business) is commonly known by the disputed domain name.

 

The Respondent acknowledges that the Complainant "holds trademark rights to 'Edible Communities' and 'Edible Hawaiian Islands'" and states that this is why it "voluntarily changed the name of our website." However, when asked to clarify what it meant by "voluntarily changed the name of the website," as the phrase was not readily apparent from the Respondent's response, the Respondent declined to provide further clarification.

 

As the Respondent chose not to respond to the Panel's procedural order, the Panel conducted independent research using the Internet Archive to analyze any changes made to the website between the month prior to when the Respondent acquired the domain name (when it was administered by a licensee of the Complainant) and the screenshots submitted by the Complainant as an annex to the complaint (after the Respondent acquired the name). The only noticeable change observed was in the red-colored heading at the top of the website, which was altered from "Edible Hawaiian Islands" to simply "Edible."

 

Regardless, the Respondent's admission that it does not own the EDIBLE trademark, combined with the following facts, supports a finding that the Respondent is not commonly known by the disputed domain name:

(i) The Complainant did not authorize the Respondent to use the EDIBLE mark.
(ii) The WHOIS information for the disputed domain name lists the Registrant as "Lucas Tournoux."

(iii) There is no evidence indicating otherwise that the Respondent is commonly known by the disputed domain name.

 

Lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See 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)"). Accordingly, the Panel finds that the Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Having established these elements, the burden shifts to the Respondent to demonstrate that it has rights and/or legitimate interests in the disputed domain name. In an attempt to meet this burden, the Respondent argues that it has legitimate rights and/or interests in the domain name because it acquired the disputed domain name "via a GoDaddy public auction for €5,605.55 after the Complainant failed to renew its domain registration," and that the Complainant's failure to renew the domain constituted abandonment of any rights to the domain name.

 

The Respondent further argues that it is not attempting to profit from the Complainant's mark, presenting DNS traffic patterns as evidence that users were not visiting its website due to search terms containing the Complainant's mark but for other reasons.

 

The fundamental flaw in the Respondent's argument is that, even if its assertions were correct—namely, that (a) the Complainant abandoned its rights by allowing the domain name to expire, and (b) the traffic to the domain is not derived from search terms related to the Complainant—these claims do not establish that the Respondent possesses any rights or legitimate interests in the disputed domain name. Rather, these arguments pertain to the third element of the UDRP Policy, specifically the Respondent's contention that it did not register or use the domain name in bad faith.

 

For these reasons, the Panel finds that the Respondent has not established any rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

The Complainant asserts that the Respondent registered the disputed Domain Name in bad faith under Policy ¶ 4(b)(ii), alleging that at the time of registration, the Respondent was aware of Edible Communities' rights and engaged in a pattern of registering domain names to prevent Edible Communities from using them.

 

Upon reviewing the evidence submitted and on the balance of probabilities, the Panel finds that the Respondent had actual knowledge of Edible Communities, including the Complainant's prior use of the <ediblehi.com> domain name and its trademark rights. The Complainant has provided evidence demonstrating that both the content and use of the disputed domain name, both before its expiration and after its registration by the Respondent, are highly similar. While the current images on the Respondent's website differ from those used by the Complainant when it owned the domain, the overall format and structure remain substantially the same.

 

Notably:

(i)                      Both the Complainant and the Respondent ascribe the same meaning to the disputed domain name—namely, interpreting "edible" in conjunction with "hi" as a geographic reference to the Hawaiian Islands.

(ii)                      Both parties have used the domain name to provide substantially identical services, including information about food, travel, and other related topics centered around the Hawaiian Islands.

(iii)                      The top-level menu on both the Complainant's and Respondent's websites includes identical categories, such as "Eat," "Cook," "Grow," "Recipes," and "Drinks."

 

While any one of these factors in isolation might not be conclusive, their combined presence leaves little doubt that the Respondent was aware of the Complainant's prior rights before acquiring the disputed domain name. Accordingly, the Panel concludes that the Respondent's registration of the domain name was undertaken with actual knowledge of the Complainant's rights and interests.

 

In addition, the Panel believes that the Respondent is also using the disputed domain name in bad faith. More specifically, the Policy states:

 

For the purposes of Policy Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

Complainant has a business model whereby it licenses the right to use its marks to third parties in various geographic locations around the United States provided that the licensees agree to certain terms and conditions, including the sale and promotion of Complainant's goods and services. In 2014, Complainant licensed the right to use the EDIBLE HAWAIIAN ISLANDS and EDIBLE Trademarks to such a third party (which was later assigned to a second third party). Although the second licensee let the disputed domain name expire, as the evidence demonstrates, the Respondent registered the domain name primarily to compete with the Complainant by using the Complainant's business model to derive revenue for itself. Given the extensive use of the EDIBLE marks with geographic locations, the Panel believes that not only is it disrupting the business of the Complainant, but it is using the domain name to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website.

 

Respondent argues, however, that it is not using the disputed domain name in bad faith because (a) it acquired the disputed domain name via an expired domain name auction after Complainant failed to renew its domain registration, and (b) it is willing to reach an amicable resolution to this dispute by either transferring the disputed domain name to the Complainant in exchange for its out of pocket costs, or alternatively to include a disclaimer on the content of the disputed domain name and "modifying the content of our website to avoid any potential overlap with Edible Communities' branding."

 

The Panel, however, is not persuaded that the Respondent's conduct after being made aware of this dispute rebuts the conclusion that the domain name was registered and used in bad faith. The method by which the Respondent acquired the disputed domain name—whether through an initial purchase or the acquisition of an expired domain—becomes relevant only if the Respondent has demonstrated rights or legitimate interests in the domain name.

 

Similarly, regarding the addition of a disclaimer, the Panel notes the guidance provided in the WIPO Jurisprudential Overview 3.0, which states:

 

"Where the overall circumstances of a case point to the respondent's bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent's use of a disclaimer as an admission by the respondent that users may be confused." (WIPO Jurisprudential Overview 3.0, ¶ 3.7).

 

Given that the Panel has found the Respondent has not demonstrated rights or a legitimate interest in the disputed domain name, neither the manner of acquisition nor the proposed inclusion of a disclaimer remedies the Respondent's bad faith.

 

Finally, the Panel does not consider the Respondent's offer to sell the disputed domain name for the price at which it was acquired to be indicative of good faith. While a willingness to settle may be a constructive step, it does not alter the conclusion that the domain name was registered and used in bad faith.

 

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 <ediblehi.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Jeffrey J. Neuman, Panelist

Dated: March 11, 2025