WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FLRish IP, LLC v. prince zvomuya
Case No. D2019-0868
1. The Parties
1.1 The Complainant is FLRish IP, LLC, United States of America (“United States”), represented by Evoke Law, PC, United States.
1.2 The Respondent is “prince zvomuya”, China.
2. The Domain Name and Registrar
2.1 The disputed domain name <shopharbsorside.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2019. On April 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 18, 2019, 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.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2019.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on June 3, 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
4.1 The Complainant is a company based in California. It runs, or is part of a business, that for a number of years been engaged in the cultivation of cannabis and the operation of associated dispensaries and delivery services under the HARBORSIDE brand. Its operations are pursuant to, and governed by, the California’s Medicinal and Adult-Use Cannabis Regulation and Safety Act (SB 94).
4.2 That business and activities have achieved significant publicity though articles and reports through various media and was the subject of a documentary series on the Discovery Channel that first aired in 2011. Since 2016 these activities have also been promoted from a website operating from the domain name <shopharborside.com>.
4.3 The Complainant is the owner (by assignment) of various trademarks that incorporate or comprise the term “Harborside”. They include United States Registered trade mark No. 5509269 for the standard character mark HARBORSIDE in classes 25, 35, 41 and, 44, filed on November 30, 2016 and proceeding to registration on July 3, 2018 and claiming a first use in commerce in October 2016.
4.4 The Complainant also uses in business logo reminiscent of a flag, that takes the following form:
4.5 The Domain Name was registered on January 26, 2019. It appears to be registered in the name of an individual based in China, but whether the name and/or address given are correct must be open to question.
4.6 After registration the Domain Name was used for a website that promoted the sale of cannabis related products. It reproduced the Complainant’s logo and extensively used the “Harborside” name including in a heading which read “Welcome to Harborside”, contained a copyright notice that refers to “Harborside” and promoted a contact email address that used the Complainant’s <shopharborside.com> domain name rather than the Domain Name.
4.7 As at the date of the decision, this website is no longer in operation and the Domain Name resolves to a web page that states that the account associated with the Domain Name has been suspended.
5. Parties’ Contentions
5.1 The Complainant refers to its business and marks and the way in which the Domain Name has been used. It contends that the Domain Name is confusingly similar to the Complainant’s HARBORSIDE mark, and involves “blatant typosquatting on [the] Complainant’s website at the domain <shopharborside.com>”.
5.2 The Complainant also contends that the Domain Name is being used in conjunction with the website to deceive consumers into mistakenly thinking they are purchasing from the Complainant. It is claimed that “such obvious impersonation is undoubtedly for fraudulent purposes”. It is said that in these circumstances, the Respondent has no rights or legitimate interests in the Domain Name. Further, it is claimed that it is obvious that the Respondent must have known of the Complainant at the time the Domain Name was registered and that the Domain Name has been registered and used in bad faith.
5.3 The Complaint also contains contentions to the effect that these proceedings should take place in English.
5.4 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 In its Complaint, the Complainant also made a request that English be the language of these proceedings. The Registrar in its response to the Center has confirmed the language of the registration agreement to be English. Therefore, under paragraph 11(a) of the Rules the default position is that the language of these proceedings is English and it is not necessary to consider the Complainant’s request in this respect any further.
A. Identical or Confusingly Similar
6.5 The Complainant has demonstrated that it owns registered trade mark rights in the term “Harborside” and the Panel accepts that the most sensible reading of the Domain Name is as a misspelling of the phrase “Shop Harborside” combined with the “.com” Top-Level Domain (“TLD”). As such, the Complainant’s trade mark is not only recognisable, but clearly recognisable in the Domain Name. This is sufficient for a finding that the Domain Name and the Complainant’s trade mark are “confusingly similar” as that term is understood under the Policy; as to which see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”). In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests; Registration and Use in Bad Faith
6.6 It is usual for panels under the Policy to consider the issues of rights or legitimate interests and registration and use in bad faith in turn. However, in a case such as this it is more convenient to consider those issues together.
6.7 The Panel accepts that the Domain Name has been registered and used by the Respondent (whomever that might actually be) to deceptively represent that it is the Complainant when it is not. This is abundantly clear from the content of the website that operated from the Domain Name, which clearly sought to represent that it was the website of the Complainant, and the Domain Name itself, which the Panel accepts both is and at all times has been intended to be a typosquatting version of the domain name that the Complainant has used for its own website.
6.8 Whether this has been done actually to supply products to customers who think they are dealing with the Complainant or for some other fraudulent purpose is not clear. But whatever is the position does not matter. There is no right or legitimate interest in holding a domain name to further fraudulent impersonation, and registration and use of a domain name for such a purposes involves registration and use in bad faith (see, for example, Weber-Stephen Products LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Daniela Gebauer, Kitchenhelpers GmbH, WIPO Case No. D2017-0118).
6.9 The Respondent activities in this case also fall within the scope of the example of circumstances indicating bad faith set out in paragraph 4(b)(iv) of the Policy
6.10 In the circumstances, the Panel has no hesitation in finding that the Complainant has made out the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
7.1 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 <shopharbsorside.com> be transferred to the Complainant.
Matthew S. Harris
Date: June 13, 2019