HempWorld, Inc. v. Michelle Payne
Claim Number: FA0204000112513
Complainant is Matthew T. Huijgen d/b/a HempWorld, Inc., Santa Barbara, CA, USA (“Complainant”). Respondent is Michelle Payne, Westerose, AB, CANADA (“Respondent”).
The domain name at issue is <hemp.biz>, registered with NameScout.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil-Jiménez as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 27, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.
On April 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 20, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on May 20, 2002.
On May 31, 2002, pursuant to STOP Rule 6(b), the Forum appointed Luz Helena Villamil-Jiménez as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant contends that being the owner of a US registration for the word mark “hemp” he has the first right to own the domain name <hemp.biz> and that the current owner of the domain is knowingly or unknowingly infringing his trademark rights.
Complainant further contends that the Respondent has no trademark rights or legitimate interests in the word mark HEMP or the domain <hemp.biz>.
Lastly, Complainant contends that the Respondent has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or a competitor of his for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
Respondent contends that the US trademark registration for “HEMP” states that “no claim is made to the exclusive right to use ‘HEMP’ apart from the mark as shown.
Respondent also contends that in 1999 she formed the Canada Hemp Company with a view of merchandising hemp products. She and her husband wanted to carry a variety of hemp merchandise in their existing stores, as well as start a process of opening a strictly “hemp” e-commerce site. She also alleges that in her stores The Country Sampler Ltd., The Village Emporium and The Clothing Store located at <villageatpigeonlake.com> they have a section completely dedicated to a vast variety of hemp products.
In addition, Respondent contends that the Complainant is a domain buyer/seller, and that she turned down the Complainant’s offer to purchase the <hemp.biz> domain twice.
(1) Complainant has established that it has rights over a trademark registration consisting of a design which contains the word “HEMP”; however, since it omitted mentioning that such registration was granted with a disclaimer according to which “no claim is made to the exclusive right to use “HEMP” apart from the mark as shown”, Complainant did not meet its burden to prove by a preponderance of the credible, relevant and admissible evidence that the domain name is identical to a trademark in which Complainant has rights.
(2) Complainant has failed to sustain its burden to prove by a preponderance of the credible, relevant and admissible evidence that Respondent has no rights or legitimate interest in respect of the domain name.
(3) Complainant has failed to sustain its burden to prove by a preponderance of the credible, relevant and admissible evidence that the domain name has been registered or is being used in bad faith.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant argued that it is the owner of a US registration for the word mark “hemp”. Now, it appears in the trademark registration copy submitted by the Respondent that there is a disclaimer of the word “hemp” in the registration, such disclaimer meaning that no exclusive rights were granted to the holder of the trademark over the sole word “HEMP”, which is a word commonly used to refer to a certain raw material used in connection with different types of products. Thus, the word “hemp” should be available for use by all manufacturers of products made of “hemp”.
Because Complainant has not established rights in the mark “HEMP” the Complaint must be dismissed.
The documentation provided by the Respondent demonstrates the existence of a company named Canada Hemp Company formed by the Respondent and her husband in 1999; that it has been known by such name in commerce, where she has been trading with hemp products. It was demonstrated that other companies that are engaged in the manufacture of hemp products knew and made business with Canada Hemp Company, and therefore it appears clear to the Panel that the Respondent does have legitimate interests in the domain name.
Respondent demonstrated with documents that the Complainant inquired with the Respondent’s husband about the fact of the registration of the <hemp.biz> domain, and that when he was informed that indeed they won the referred domain in the latest re-leased on-hold .biz lottery, the Complainant offered to purchase it, said offer having been rejected by the Respondent.
It is clear, therefore, that the Complaint was brought in bad faith given that the Complainant was aware of facts that bear a direct relation to the dispute and failed to include them in the Complaint. This omission constitutes an abuse of the administrative proceeding, and it therefore warrants a finding of Reverse Domain Name Hijacking.
The Complaint is dismissed. The Panel determines that subsequent challenges to this domain name, as against the Respondent, under the STOP Policy shall not be permitted against this domain name. The Panel finds that Complainant has engaged in Reverse Domain Name Hijacking.
Luz Helena Villamil-Jiménez, Panelist
Dated: July 9, 2002
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