WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kannaway LLC v. Martin Adamec
Case No. D2018-2727
1. The Parties
The Complainant is Kannaway LLC of San Diego, California, United States of America (“United States”), represented by Premium IP Services, P.C., United States.
The Respondent is Martin Adamec of British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <cannawaymedical.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2018. On November 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a first amended Complaint on December 3, 2018. In response to a request for amendment by the Center, the Complainant filed a second amended Complaint on December 5, 2018.
The Center verified that the Complaint together with the first and second amended Complaints 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 December 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2018.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 8, 2019. 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.
4. Factual Background
The factual background is taken from information submitted by the Complainant.
The Complainant trades in products made from the hemp (cannabis) plant, including nutritional supplements, candies, cosmetics, edible products, and also vaporizers. The Complainant has been in business since 2014 and operates in the United States, Europe, Mexico, and South America.
The Complainant holds a number of trademarks in the United States, Mexico, Colombia, Paraguay and the European Union, and an international trademark, for KANNAWAY or for K KANNAWAY, the latter being KANNAWAY accompanied by a stylised design based on the letter K. The following trademarks are representative:
KANNAWAY, United States Patent and Trademark Office (“USPTO”), Principal Register, registration granted March 29, 2016, registration number 4924998, class 35;
K KANNAWAY, with design and colour scheme, International Trademark, registration granted August 22, 2014, registration number 1229768, class 35.
The Respondent has not provided any background information. The disputed domain name was registered on January 24, 2018 and resolves to a website offering for sale various products derived from hemp.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark, which is distinctive and arbitrary. The element “cannaway” spelt with an initial “c” of the disputed domain name sounds the same as the Complainant’s trademark that is spelt with a “k”. The logo shown on the Respondent’s website is coloured blue and green, being the colours of the Complainant’s trademark. The Complainant and the Respondent both sell hemp products. The generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name does not diminish the risk of confusion with the Complainant’s trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There are no indications that the Respondent operates a legitimate business with a name, address, and contact information or that the Respondent is known by a name similar to “cannaway” or “cannawaymedical”. The Complainant’s research indicates the name “Sean Robertson” is associated with the Respondent and with a Paypal account through which money was channelled in a purchase of a product through the Respondent’s website. The Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith for commercial gain in order to attract Internet users by confusion with the Complainant’s trademark. The Complainant has been using its trademark since February 26, 2014, therefore the Respondent had constructive notice of the Complainant’s trademark at the time of registration of the disputed domain name on January 24, 2018. The Respondent deals in products similar to the Complainant’s products and had no reason to register the disputed domain name other than to divert consumers from the Complainant to the Respondent’s website.
The Complainant says the Respondent uses a privacy registration service and conceals its identity, which is indicative of registration and use of the disputed domain name in bad faith. Furthermore the Respondent’s website does not show an address for the return of goods or for the direction of customer issues. The Complainant says that an address in California provided by the Respondent does not exist, has no postal code, and could not be located with Google Maps. The purported address indicates, however, that the Respondent competes with the Complainant in the United States.
The Complainant says that a person living at a United States address who ordered and paid for goods from the Respondent on October 25, 2018, had not received them by November 26, 2018, constituting bad faith on the part of the Respondent. The Complainant has produced a signed Declaration to that effect signed by the disappointed purchaser.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant has provided satisfactory evidence in the form of copies of online registration records of its rights in the trademarks KANNAWAY and K KANNAWAY. The disputed domain name is <cannawaymedical.com>, of which the gTLD designation “.com” may be disregarded in the determination of confusing similarity. The disputed domain name may then be read as “cannaway” and “medical”.
Confusing similarity is determined objectively by a comparison of the disputed domain name with the relevant trademark. The comparison need not be entirely alphanumeric and may include phonetic or other similarities, but excludes colours or symbols, which do not appear in domain names. The Panel is satisfied that the prominent element “cannaway” of the disputed domain name is phonetically identical and confusingly similar to the Complainant’s invented trademark KANNAWAY. The additional generic element “medical” of the disputed domain name, in the context, is found not to be distinguishing. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark and finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted prima facie that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you 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 (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 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 Respondent has not asserted any rights or legitimate interests in respect of the disputed domain name in the terms of paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. The Respondent’s business is in the same sphere as the Complainant’s business, including the supply of cannabis products. By virtue of the confusing similarity between the disputed domain name and the Complainant’s trademark, the Respondent’s business with the disputed domain name is found not to constitute a bona fide offering of goods or services in the terms of paragraph 4(c)(i) of the Policy. The Panel has seen no evidence to suggest that the Respondent has been commonly known as an individual or business by the disputed domain name, or that there has been a fair or noncommercial use of the disputed domain name. On the balance of probabilities the Respondent is found not to have established rights or legitimate interests in the disputed domain name, and the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively.
The Complainant has produced a screen capture of the website to which the disputed domain name recently resolved. The website features the word “cannaway” in blue behind a logo comprising the letter “c” duplicated in blue and green, those being the colours of the Complainant’s trademark and logo. The Respondent’s website provides a login facility and, among other things, a prominent display of a bottle labelled “Medium Dose CBD Tincture (600mg/15ml)” and the exhortation “Check Out Cannaway CBD Tinctures!”, above an “Order Now” button. CBD means cannabidiol, an ingredient of cannabis, and the pronouncement “A Passion for Better Medicine” on the website may imply that the product “CBD Tincture” is offered by the Respondent as a medicine. Below, cartoons depict “Sign Up”, “Referral”, “Go Shopping” and “Free Shipping”. “More Products” offered include “Edibles”, “Creams”, “Vapes”, “And much more!”. There is a toll-free telephone number that includes the alphabetised mnemonic “weed”, and an email address derived from the disputed domain name, but no other contact details.
Within the guidelines of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8, the Complainant’s own website was viewed by the Panel for comparison. The Complainant’s website offers a variety of products made from cannabis as dietary supplements. The Complainant’s website is more comprehensive than the Respondent’s and, as well as a shopping facility and a “Food and Drug Administration (FDA) Disclosure”, has a news section, advertises a conference pertaining to its business, and provides information for intending brand ambassadors. The colour theme of the Complainant’s website is predominantly blue and green.
On the evidence produced, the Panel finds on the balance of probabilities that the disputed domain name is not merely coincidentally similar to the Complainant’s invented trademark but was contrived in order to be likely to cause confusion with it among at least some Internet users. The disputed domain name is found to be in use with intent to attract Internet users to the Respondent’s website by confusion with the Complainant’s trademark for commercial gain, within the meaning of paragraph 4(b)(iv) of the Policy, and there is no evidence or claim that it was registered for any other purpose. Accordingly the Panel finds the disputed domain name to have been registered and used in bad faith under paragraph 4(a)(iii) of the Policy.
A screen capture produced by the Complainant made on November 26, 2018, of a page apparently issued by the Respondent in response to the receipt of an order, states “Thank You for Shopping with Us!” and “Thank you for your order. If you have any questions, please don’t hesitate to reach out”. The Complainant’s evidence of its research is that the California street address provided on the Respondent’s “Thank you” page does not exist. Since the 1800- telephone number provided on the same page appeared intriguing to the Panel, a reverse lookup was conducted at the publicly available “www.whitepages.com”, as permitted by WIPO Overview 3.0, section 4.8. The number (which would be common to the United States and Canada) was attributed to Elite Printer Services of Tulsa, Oklahoma. The Panel finds on the evidence that the Respondent, more probably than not, has intended to mislead persons placing orders for product by the provision of misleading contact details, constituting further evidence that the disputed domain name has been registered and used in bad faith.
A Declaration, produced by the Complainant in evidence, was supplied by a customer of the Respondent to the effect that an order placed with the Respondent on October 25, 2018, paid for in Canadian currency, had not been delivered to a United States address a month later. Whilst regular non-shipment of ordered goods within a reasonable timeframe without explanation would ordinarily be considered as contributing to bad faith, the Panel is not aware of whether in this single instance the shipment might have been delayed by, for example, border or postal controls, notwithstanding the apparent legality of the product in California.
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 name <cannawaymedical.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: January 15, 2019