WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Medical Marijuana, Inc. v. Domains By Proxy, LLC / Michael Wigton
Case No. D2018-1865
1. The Parties
Complainant is Medical Marijuana, Inc. of Poway, California, United States of America (“United States” or “U.S.”), represented by Premium IP Services, P.C., United States.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Michael Wigton of Columbus, Ohio, United States, represented by Goyette & Associates, Inc., United States.
2. The Domain Name and Registrar
The disputed domain name <cbdhempmeds.net> 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 August 15, 2018. On August 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 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 August 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2018. Upon request of Respondent, the due date for Response was extended to September 17, 2018, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center September 15, 2018.
The Center appointed Lawrence K. Nodine, Paul M. DeCicco, and Andrew P. Bridges as panelists in this matter on November 1, 2018. The Panel finds that it was properly constituted. Each member of 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.
4. Factual Background
Since 2009, Complainant has supplied and retailed various products, including nutritional supplements, candies, and cosmetics, containing cannabidiol (“CBD”) derived from hemp. Complainant sells its products not only in the United States but also in Europe, Mexico, and Brazil. Complainant registered HEMPMEDS on the United States Patent and Trademark Office’s Supplemental Register (Reg. No. 4622820) on October 14, 2014, followed by a registration for HEMPMEDS YOUR TRUSTED ^CBD SOURCE as a trademark in both block letter form and word and design form (disclaiming in both any exclusive right to use HEMPMEDS apart from the mark as shown) on the Principal Register (Registration Nos. 4715663 and 4715664, respectively) on April 7, 2015. Thereafter, Complainant registered the trademark HEMPMEDS (stylized) in Mexico (Reg. Nos. 1745376 and 1748396; registered April 20, 2017 and April 26, 2017, respectively) and HM HEMPMEDS and logo in Peru (Reg. No. 00265819; registered June 13, 2018).
Respondent registered the disputed domain name <cbdhempmeds.net> on July 4, 2017. The disputed domain name resolves to a website where Respondent sells products containing CBD.
5. Parties’ Contentions
Complainant argues that, because the disputed domain name incorporates the essential elements of Complainant’s trademarks, namely “cbd” and “HempMeds,” it is confusingly similar to each of Complainant’s United States trademarks, which all include “HempMeds”, and particularly to the two trademark registrations (Nos. 4715663 and 4715664) that also include “cbd”.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is known by the name Bionic Sports Nutrition, LLC and not by the disputed domain name. Respondent uses the disputed domain name to sell “hemp CBD products just like Complainant’s.”
As to bad faith, Complainant asserts that Respondent not only had constructive notice of Complainant’s trademarks but Respondent must also have been aware of Complainant’s rights because Complainant is well known in the CBD industry and has received press coverage. According to Complainant, Respondent does business as Bionic Sports Nutrition, LLC and had no reason to register the disputed domain name except as an attempt to “lure away” Complainant’s customers. Finally, Complainant maintains Respondent has engaged in a systematic cybersquatting as evidenced by Respondent’s representation that it intends to develop websites under other names, including “Petco,” which is a trademark owned by a pet goods company.
According to Respondent, the disputed domain name is not confusingly similar to Complainant’s trademarks because Complainant does not have a trademark for “CBD Hemp Meds,” Complainant does not have the exclusive right to use “HempMeds”, and Respondent uses “hemp meds” and does not use a logo that resembles Complainant’s.
Respondent asserts rights in the disputed domain name based on Respondent’s bona fide use of the disputed domain name to offer CBD products through its company CBD Medical, LLC. For the same reason, Respondent disputes Complainant’s assertion of bad faith registration and use.
Finally, Respondent contends that Complainant has engaged in Reverse Domain Name Hijacking (“RDNH”) because it brought this Complaint in bad faith and has habitually squatted on trademarks related to CBD and hemp medicinal products.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel Majority finds that Complainant has satisfied Policy paragraph 4(a)(i) based on its Mexican and Peruvian registrations for HEMPMEDS and HM HEMPMEDS, respectively. Although these registrations include design elements, the word portion is nonetheless recognizable within the disputed domain name.
The Panel Majority declines to base its ruling on the asserted United States trademark registrations. Because the two marks on the Principal Register – HEMPMEDS YOUR TRUSTED ^CBD SOURCE (Reg. No. 4715663) and HEMPMEDS YOUR TRUSTED ^CBD SOURCE plus design (Reg. No. 4715664) – disclaim “HempMeds,” the overlapping use of the disclaimed term may not alone support a finding that Complainant has rights in the disclaimed portion or a finding of confusing similarity. And although the “cbd” element appears in both of the United States registered marks and the disputed domain name, it appears in a different place in the sequence of terms. This difference is significant because Complainant does not own rights in “cbd” alone, but only as a component of a more complex phrase in the mark as a whole as registered. Complainant’s Supplemental Registration for HEMPMEDS (stylized) confers no United States rights and in fact necessarily admits that the term is merely descriptive, which, of course, is no surprise given the disclaimers given in the two marks on the Principal Register.
The Panel Majority’s observations about the United States registrations may not be necessary given that we find in Complainant’s favor on this factor based on the Mexican and Peruvian registrations, but they will be important under the second and third elements.
Nevertheless for the purpose of Policy paragraph 4(a)(i) the Panel Majority finds that Respondent’s <cbdhempmeds.net> disputed domain name is confusingly similar to Complainant’s registered Mexican and Peruvian trademarks as it contains the entire word portion of these trademarks and only differs therefrom by the addition of the generic term “cbd” and Top-Level Domain “.net.”
B. Rights or Legitimate Interests
The Panel finds below that Complainant has not proved that Respondent has used the disputed domain name in bad faith. For the same reasons, the Panel finds that Respondent has made a bona fide use of the disputed domain name for the purpose of selling CBD products. “CBD” is a generic term; “hempmeds” appears merely descriptive, as Complainant’s Supplemental Register registration and the disclaimer in Complainant’s Principal Register registration indicate. Complainant fails to satisfy Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that Complainant has not proved bad faith registration or use. There is no evidence that Respondent was aware of Complainant’s Mexican Trademark registrations, which are the only registrations for “HempMeds” alone that predate the registration of the disputed domain name. Without some evidence of such awareness, there is no basis for finding bad faith registration based on Complainant’s Mexican rights.
Complainant’s United States trademark rights do not support a finding of bad faith registration. Complainant has no rights in the United States to the word “HempMeds” alone: The disclaimers of “HempMeds” in the Principal Register registrations negate any claim to Complainant’s exclusive rights in the term. Complainant’s evidence media coverage is not sufficient on these facts to support a finding that Respondent probably knew of Complainant’s claim of rights.
Likewise, Respondent’s inclusion of “cbd” in the disputed domain name will not support a finding of bad faith registration. Respondent is selling CBD products. It is hardly bad faith to include in the disputed domain name the generic acronym for the product that Respondent sells.
For similar reasons, Complainant has failed to prove bad faith use. There is insufficient basis for finding that Respondent’s use of “HempMeds” and “cbd” was motivated by any intent on the part of Respondent to confuse or divert Complainant’s Internet customers by exploiting Complainant’s trademark rights. On the contrary and as discussed above, it is plausible and reasonable that Respondent had a good faith belief that there was no legal barrier to his use of these generic and descriptive terms to sell CBD products.
Accordingly, Complainant has failed to satisfy Policy paragraph 4(a)(iii).
For the foregoing reasons, the Complaint is denied. The Panel declines to find RDNH.
Lawrence K. Nodine
Paul M. DeCicco
Date: November 15, 2018
BRIDGES CONCURRING STATEMENT:
I agree that Complainant failed to satisfy paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, and that is sufficient reason to deny the Complaint.
I do not join in the ruling that Complainant satisfied paragraph 4(a)(i) of the Policy. I understand that other UDRP decisions have interpreted that provision as constituting a mere standing requirement, which may focus alone on the existence of trademark rights, but the literal text requires two determinations, namely that (1) Complainant has trademark rights and (2) Respondent’s disputed domain name is confusingly similar to Complainant’s valid trademark rights. “HempMeds” is an English language portmanteau construction, combining the generic term “hemp” with the generic term “meds,” equivalent to “medicines.” Whether the portmanteau is itself generic or descriptive I do not know; but the United States Patent and Trademark Office required a disclaimer of the term on Complainant’s Principal Register registrations, and a stylized version of the term is on the Supplemental Register. I am reluctant to find “confusing similarity” where Complainant lacks trademark rights in the only common terms (in addition to HEMPMEDS, CBD, which Complainant uses differently). The Peru trademark registration lacks significance here, because it post-dates the disputed domain name registration. That leaves only the Mexican registration of the stylized version of the term as relevant to an appraisal of confusing similarity. The question then arises: how should one proceed when a complainant has persuaded a foreign trademark office to issue a registration for a stylized version of an English-language mark where the U.S. Patent and Trademark Office has refused to allow Principal Register registration of a phrase including the term without disclaimer and placed the term by itself (even in a stylized form) on only the Supplemental Register? Would a Greek registration of COMPUTER as a trademark for computers be a basis for a complainant to establish confusing similarity to <computer.org> under paragraph 4(a)(i)? This might have been a basis for further inquiry of Complainant, and I would not exclude the possibility of its satisfying paragraph 4(a)(i), but I do not believe Complainant has satisfied it on this record. My view on this point reflects a concern that Complainant was not candid about facts of the U.S. Supplemental Register registration and the disclaimers in the U.S. Principal Register registration upon which it relied in part. Complainant argued that Respondent had constructive notice of Complainant’s trademarks based on those registrations, without acknowledging that one registration was on the Supplemental Register and the other registrations included disclaimers. 15 U.S.C. § 1072 provides that registrations only on the Principal Register, not the Supplemental Register, give constructive notice of a registrant’s claim to a trademark, and the disclaimers in the Principal Register registrations make clear that Complainant did not claim exclusive rights in the key term it asserted here.