WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RHMT, LLC v. Pilcherboyz inc Pilcher
Case No. D2018-0647
1. The Parties
Complainant is RHMT, LLC of Las Vegas, Nevada, United States of America ("United States"), represented by Randazza Legal Group, United States.
Respondent is Pilcherboyz Inc. Pilcher of San Antonio, Texas, United States, internally represented.
2. The Domain Name and Registrar
The disputed domain name <apothecariumdelivery.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 23, 2018. On March 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 26, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on April 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2018. The Center received 20 informal email communications from Respondent between March 23, 2018 and April 30, 2018. The Center did not receive a formal Response.
The Center appointed Robert A. Badgley as the sole panelist in this matter on May 15, 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 April 27, 2018, Complainant submitted a Supplemental Filing. In its discretion, the Panel has considered Respondent's informal emails and Complainant's Supplemental Filing.
4. Factual Background
Complainant holds a registered trademark in the State of Nevada for THE APOTHECARIUM in connection with "medical marijuana products." The Nevada trademark was registered on April 13, 2016 and reflects a date of first use of September 26, 2012. Complainant states that it licenses the trademark to contracting partners in Nevada who operate marijuana dispensaries. Complainant also owns the domain name <apothecarium.com>, at which it maintains a website to support its business. The website states that "The Apothecarium is a licensed, full-service recreational and medical cannabis dispensary that is located in Las Vegas…"
The Domain Name was registered on July 20, 2017. The Domain Name resolves to a website offering to deliver marijuana to consumers who join Respondent's "club" for a monthly fee.
Complainant annexed to the Complaint the transcript of a podcast interview featuring Respondent's principal ("ZP"), during which ZP stated: "And, when we came to Vegas, there was no delivery services. And so what I ended up doing is I got a whole list of all of the dispensaries in Las Vegas, and I just added 'delivery dot com' to [them]. And so I got all the names, I put 'delivery dot com,' and I created apothecarium delivery…"
5. Parties' Contentions
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. Complainant avers that Respondent intentionally targeted Complainant's THE APOTHECARIUM mark and is trading off of the mark's goodwill to attract customers.
Respondent's chief contention, as gleaned from his numerous emails and attachments to the Center, appears to be that it duly registered the Domain Name and on December 18, 2017 obtained a temporary (six-month) license from the City of Las Vegas, Nevada to conduct the business of medical marijuana delivery. Respondent also asserts that the word "apothecarium" is an old, generic word denoting "old drug stores." In addition, Respondent argues that its business is "nothing like" Complainant's business, inasmuch as Complainant's mark is APOTHECARIUM and Respondent's Domain Name is <apothecariumdelivery.com>. Running throughout Respondent's emails is the alleged theme that Complainant is bullying Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has trademark rights in THE APOTHECARIUM through a registered Nevada trademark. The Panel finds that the Domain Name is confusingly similar to the mark, as it incorporates the dominant term APOTHECARIUM, omits the definite article "the" and adds the descriptive term "delivery." The Panel does not believe that these minor changes are sufficient to overcome the confusing similarity engendered by fact that the dominant word "apothecarium" appears in the Domain Name.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not denied the allegation, corroborated in the podcast transcript put into evidence here, that it was aware of Complainant's mark and merely added the word "delivery" to that mark – as Respondent apparently did vis-à-vis other local dispensaries' trademarks. The act of appropriating another business' trademark and adding a descriptive term that, if anything, underscores the confusion between the mark and the Domain Name, is not a legitimate interest under the Policy.
The fact that Respondent holds a six-month business license with the City of Las Vegas does not invest Respondent with a legitimate interest in the Domain Name. The temporary license merely grants Respondent the authority to conduct a certain type of business within certain parameters; it does not grant Respondent the license to violate the trademark rights of others.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel concludes that Respondent has registered and is using the Domain Name in bad faith. Respondent did not deny the express allegation in the Complaint that Respondent "was aware" of the APOTHECARIUM mark when registering the Domain Name. Indeed, Respondent does not dispute that its principal admitted during a podcast interview that his business plan for delivering marijuana in Las Vegas included reviewing the list of all local businesses selling marijuana and adding the word "delivery" to the business names in various domain names.
On the undisputed record of this case, Respondent knowingly registered a Domain Name that contains the dominant part of Complainant's mark and adds the descriptive term "delivery." It is also undisputed that Respondent has set up a commercial website accessible via the Domain Name, and has done so for commercial gain. Given the overlapping nature of the Parties' businesses – both Parties seek to earn money through the delivery of marijuana to consumers – it is clear that profiting from consumer confusion is Respondent's aim here. This amounts to bad faith under the above-quoted Policy paragraph 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <apothecariumdelivery.com> be transferred to Complainant.
Robert A. Badgley
Date: May 17, 2018