WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hits From The Bong, Inc. v. Contact Privacy Inc. Customer 0143018079 / Lucio Valvasori, Lucio Valvasori
Case No. D2018-0577
1. The Parties
The Complainant is Hits From The Bong, Inc. of Encino, California, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Contact Privacy Inc. Customer 0143018079 of Toronto, Ontario, Canada / Lucio Valvasori of Toronto, Ontario, Canada.
2. The Domain Names and Registrar
The disputed domain names <dr-greenthumb.com> ("first disputed domain name"), <mydrgreenthumb.com> ("second disputed domain name") and <doctor‑greenthumb.com> ("third disputed domain name") are registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 15, 2018. On March 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <dr-greenthumb.com>. On March 16, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 19, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same date. On April 3, 2018, the Complainant requested the suspension of the proceeding and the proceeding was suspended until May 2, 2018. On April 12, 2018, the Complainant requested to reinstitute the proceeding and requested
<doctor-greenthumb.com> and <mydrgreenthumb.com> to be added to the Complaint. On April 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names <doctor-greenthumb.com> and <mydrgreenthumb.com>. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2018. The Response was filed with the Center on May 17, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 25, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On June 1, 2018, the Center received an unsolicited supplemental filing from the Complainant. That same day, the Center also received an unsolicited supplemental filing from the Respondent.
On June 12, 2018, the Panel issued Panel Administrative Order No. 1 pursuant to paragraph 12 of the Rules inviting the Respondent to identify the date on which it registered the domain name <dr-greenthumb.ca>. Later that day, the Respondent provided its response to Panel Administrative Order No. 1.
4. Factual Background
The Complainant is Hits From The Bong, Inc., the corporate arm of Louis "B-Real" Freese. Mr Freese is an American rapper best known as part of the group "Cypress Hill".
Cypress Hill has released over 20 albums and has sold more than 20 million copies around the world.
Dr. Greenthumb was the title of a track on Cypress Hill's fourth album, released in 1998. The track spent 14 weeks in the Billboard Hot 100. The track reached #14 on Billboard's Hot Rap Songs chart and the album reached #11.
In the song, Mr Freese recounts the adventures of his alter-ego, Dr. Greenthumb, a cannabis/marijuana grower. As a result of this and other activities, Mr Freese has also come to be known as "Dr. Greenthumb". These other activities have included merchandise sales bearing Dr. Greenthumb and Mr Freese's streaming of live video performances as "Dr. Greenthumb".
The Complainant is the owner of:
(a) United States Trademark Registration No. 4662290, DR. GREENTHUMB, for musical sound recordings, downloadable musical sound recordings, audiovisual recordings featuring music and musical performances; downloadable audiovisual recordings featuring music and musical performances in International Class 9. The application for the trademark was filed on February 11, 2014 and registered on December 30, 2014;
(b) United States Trademark Registration No. 5418828, DR. GREENTHUMB, for entertainment services, namely, website services, namely, providing a website featuring entertainment information in the field of music; providing a website featuring entertainment information about musical recordings, musical performances, music tours, and other musical entertainment content; providing online sound recordings featuring music and musical entertainment, not downloadable; providing online audiovisual recordings featuring music and musical entertainment, not downloadable in International Classes 16 and 41. The application for the trademark was filed on February 11, 2014 and registered on March 6, 2018.
The Respondent registered the first and second disputed domain names on May 13, 2016. The Respondent also registered <dr-greenthumb.ca> on that date.1 The Respondent registered the third disputed domain name on March 21, 2018 (i.e., six days after the Complaint was filed). The Respondent also registered <doctor-greenthumb.ca> at that time.
The first disputed domain name resolves to a website which displays a stylized form of "drgreenthumb" (without a hyphen) and a notice reading "Coming Soon". The second and third disputed domain names resolve to a "Coming soon" webpage, apparently provided by the Registrar.
The domain name <dr-greenthumb.ca> resolves to a website which is apparently the website of a business providing landscaping and garden care services. The second ".ca" domain name is inactive.
In January 2017, an email exchange took place between a private investigator on behalf of the Complainant and the Respondent. In the course of that exchange, the Respondent indicated that there were plans already in place for the first disputed domain name, but "the owner" had other domain names. The Respondent also indicated that "the cost would be very significant and would have legal terms attached." In response to a further question from the private investigator, the Respondent indicated that he would not want any conflict of interest and the price would be in "the 5 figure range".
The private investigator re-opened communications in January 2018. This led the investigator to propose a price of USD 10,000. The Respondent countered with USD 25,000. The investigator then offered USD 15,000 plus escrow fees.
Up to this point, the Complainant was aware only that the Respondent had registered the first disputed domain name. The Complainant became aware of the registration of the other disputed domain names after the filing of the Complaint. On March 19, 2018, the Respondent contacted the private investigator and offered to transfer the first disputed domain name at no cost. In this email, the Respondent said:
If i knew this request to purchase dr-greenthumb.com was coming from the one and only "B-Real" and not just some other person, i would have asked for a signed vinyl copy of cypress hill four.. my daughter Mia is almost as big a fan as i am.
Its not my intellectual property... its yours!
dr-greenthumb.com was going to be my personal grow journal featuring my photography and what I've grown or currently growing... of course only after this July, or bit later? who knows with our government?
Its yours... ill transfer to you asap. do you have a Hover.com account? if not, register for one and it can be your today.
(original spelling and grammar)
The Complainant's representatives sought clarification of a number of matters in connection with this offer. In response, the Respondent's legal representatives disclosed four other domain names (including the second and third disputed domain names) registered by the Respondent based on the "Dr. Greenthumb" name and stated that the Respondent was not prepared to sell them "as it is his intention to use with respect to a landscaping business in Canada".
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the 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.
A. Supplemental Filing
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent's position on a particular point was clear.
In this case, the Complainant's Supplemental Filing does seek to respond to matters in the Response which could not reasonably have been anticipated – the Respondent's claim to be operating a landscaping business supported by a range of documents not accessible online. To ensure fairness, the Panel will also admit the Respondent's Supplemental Filing.
B. Identical or confusingly similar to the Complainant's trademark
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks identified in section 4 above. The first of those was registered well before the Respondent registered the disputed domain names.
In the circumstances of this case, outlined above, the Panel also considers that the Complainant has established a reputation in DR. GREENTHUMB as an unregistered trademark, at least in relation to Mr Freese's career as a musician or entertainer.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain ("gTLD") component as a functional aspect of the domain name system. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the gTLD, ".com", the first disputed domain name differs from the Complainant's trademark only by the omission of the period and the space, and the insertion of a hyphen. The third disputed domain name merely expands the well-known contraction for "Dr" in the first disputed domain name. The second disputed domain name adds the pronoun "my" as a suffix to the Complainant's trademark and omits the space.
These are trivial differences. The Complainant's trademark is plainly recognizable within the disputed domain names. Accordingly, the Panel finds that the Complainant has established that the disputed domain names are at least confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant states that it has not authorized the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent's name.
The Respondent contends, however, that "Dr. Greenthumb" is a nickname he earned from his skills in gardening. He provides a letter from a former employer which appears to confirm this. More fundamentally, the Respondent says he registered and uses the name Dr. Greenthumb in connection with a gardening business that he runs. He points out that the Complainant does not have any registered trademarks in Canada and also contends that the Complainant's reputation is in a very different field to the Respondent's activities in lawn and garden maintenance.
The letter from the former employer reads:
Lucio Valvasori (also known among the staff and Cutting Edge clients as Dr. Greenthumb) has an amazing talent at growing anything. He has the ability to seemingly bring plants back to life when most people thought the plant was dead. He worked with us in the summers from 2006 to 2008 and volunteered time from 2008 to 2014 because of his love for working with plants and nature.
So far as the Panel can discern from Internet searches, the business of the former employer does exist and did exist at the relevant times. If the Respondent adopted the name in good faith in connection with a proposed gardening business, therefore, the Panel would find that the Respondent has rebutted the prima facie case established by the Complainant.
It is true as the Complainant points out that the Respondent appears to have adopted the name Dr Greenthumb at least two years after the Complainant registered its first trademark and almost 18 years after the release of Cypress Hill's song of that name. It also appears to be the case by the Respondent's own admission that he was well aware of the Complainant's use and reputation in the field of music and entertainment.
That said, "green thumb" is a well-recognized and longstanding colloquial term in English for someone who has a particular talent for gardening. The addition of "Dr" to that descriptive term, while not anywhere near as widespread, is not an unnatural combination. Moreover, the fields of gardening and entertainment or musical performance and recording are not so closely related that one would assume an association.
As the Respondent has adopted the name well after the Complainant, the good faith element requires demonstration that the name has been adopted and is being used for its descriptive significance and not to take advantage of the significance of the distinctive features of the disputed domain names as the Complainant's trademark. This requires concrete evidence, not just assertion.
To support his claim, the Respondent has provided a number of contracts he says he entered into over the period 2016 to 2018 to provide gardening services. The Respondent has also submitted a business card, a promotional post card and the previously mentioned letter from a former employer. In addition, he has a registered business name and the content of his website at "www.dr-greenthumb.ca".
In its Supplemental Filing, the Complainant points out that the materials for activities before the Complaint was filed cannot be objectively verified such as by Google searches or the like. In proceedings on the papers such as these proceedings, the Panel cannot simply disregard these materials. There are, however, a number of reasons to question them.
First, it does seem surprising that someone who is apparently the senior art director and lead designer at an advertising agency would also be operating a landscaping business. That said, the letter from the former employer indicates that the Respondent had a longstanding, and apparently continuing interest in gardening.
Second, the Respondent registered his business name only on March 22, 2018. The Respondent claims, however, that such registration was required only once the business reached a certain size.
Further, although three of the domain names (including one of the ".ca" domain names) were registered two years ago, it appears that the active website, "www.dr-greenthumb.ca", displayed substantive content connected to a gardening business only after the Complaint against the first disputed domain name was filed.
The Respondent claims that the first disputed domain name redirected to an active website at "www.dr‑greenthumb.ca" for a number of years. He says that the first disputed domain name does not index because of a number of hacking incidents experienced last year. He also provides some evidence that there was an active Wordpress installation, although no content is provided. Moreover, it is not clear to the Panel why there would have been content if a redirection was in effect. There is no evidence of the content of the website at "www.dr-greenthumb.ca" before the Complaint was filed. The Wayback Machine at "www.archive.org" provides no assistance in that regard. As of March 15, 2018, the website just displayed the "DrGreenthumb" logo. The content relied upon by the Respondent dates from May 2018.
At least some of the text on the current website also appears on other gardening related websites. So, for example, the text (but not the images) under the heading:
(a) "Tree Pruning & Maintenance" and the next three paragraphs (including the bulleted list) appears to be identical or nearly identical to the text under the same heading on the webpage of Cohen & Master Tree and Shrub Services;
(b) "12 Months of Gardening" appears to be the same or almost the same as the text under the same heading on the "Garden Centre" page;
(c) "Carry on the Genetics of Your Favorite Heritage Fruit Tree!" is the same or almost the same as the corresponding text on the webpage of The Fruit Nut.
Most importantly, the Respondent has submitted materials which he says evidence contracts his Dr Greenthumb business has had with several people to provide garden / landscape services. There are 16 contracts, several in each year for 2016, 2017 and 2018. For most, the full contract has not been submitted, only the signature page showing the customer's details.
A peculiarity of each of the 2016 contracts is that they are dated in March or April 2016. Each one gives the Respondent's email address as "firstname.lastname@example.org" and requests that the contracting party communicate with the Respondent "when possible" by email. However, the Respondent did not register the relevant domain name until May 13, 2016. It would seem most unlikely, therefore, that the Respondent would have used that email address on contracts apparently entered into before the domain name was registered.
The advantage of proceedings under the Policy is that they are comparatively quick and cheap. As proceedings on the papers, however, discovery and the testing of witnesses by oral questioning are not available. The Panel has to base his or her decision on the materials before him or her.
Given the disconformity between the date of the 2016 contracts and the Respondent's registration of the domain name, the Panel does not consider that the contracts can be relied on to support the Respondent's claim to have been carrying on a legitimate business in garden maintenance and landscaping at that time. That must also flow through to the otherwise identical contracts for the later years.
The Panel also notes that the email communications between the Respondent and the Complainant's private investigator use the Respondent's email account with his advertising agency business. It is only in communications with the Center once the Complaint was filed that the Respondent appears to have begun using an email address "[…]@dr-greenthumb.ca" and styling himself in the signature as "Dr Greenthumb Lawn & Garden Care".
As the contracts are the only evidence of actual use of the "Dr. Greenthumb" name in connection with the Respondent's claimed business, which are dated before the Complaint was filed, the Panel is not able to conclude that the Respondent was conducting a landscaping or garden care business in good faith before the dispute arose.
Accordingly, the Panel finds that the Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain names under the Policy.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
That is the case here as the Respondent has admitted knowledge of Mr Freese's adoption of the "Dr. Greenthumb" persona.
Given that knowledge and the failure of the Respondent's claim to rights or a legitimate interest in the disputed domain names, it follows that the Respondent registered the disputed domain names in bad faith under the Policy. As he stated in his March 19, 2018 email, "Its not my intellectual property... its yours!" His subsequent attempts to be paid a fee of USD 25,000, or another "very significant" amount, in circumstances where he has been found not to have rights or legitimate interests, are evidence of use in bad faith.
Accordingly, the Complainant has established the third requirement under the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <dr-greenthumb.com>, <mydrgreenthumb.com> and <doctor‑greenthumb.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: June 15, 2018
1 The Respondent confirmed this in response to Panel Administrative Order No. 1.