WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Elixinol Global Limited, Elixinol, LLC v. Domain Administrator, See PrivacyGuardian.org / Dennis Cabrera

Case No. D2019-1194

1. The Parties

The Complainants are Elixinol Global Limited, Australia and Elixinol, LLC, United States of America (“United States”), represented by Bird & Bird LLP, Australia.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Dennis Cabrera, Cameroon.

2. The Domain Name and Registrar

The disputed domain name <elixinolgroup.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2019. On May 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2019, 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 Complainants on May 27, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on May 28, 2019.

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 May 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2019.

The Center appointed Jane Seager as the sole panelist in this matter on July 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

The Complainants are Elixinol Global Limited, an Australian company, and its subsidiary Elixinol, LLC, a United States corporation.

The Complainants operate in the cannabis industry. Together the Complainants manufacture and distribute internationally cannabidiol (“CBD”) hemp-based products, including dietary supplements and skin‑care products. The Complainants are also engaged in the cultivation and manufacture of medicinal cannabis products.

For use in connection with their CBD products, the Complainants own, inter alia, the following trademarks:

Australian Trademark Registration No. 1628421, ELIXINOL (stylized), registered on June 13, 2014; and

International Trademark Registration No. 1247032, ELIXINOL (stylized), registered on July 24, 2014, designating the Benelux countries, Japan, Mexico, the United Kingdom and the United States.

The Complainants also own the domain names <elixinol.com> and <elixinolglobal.com> via which they market their products and services online.

The disputed domain name was registered on January 26, 2019. At the time of filing the Complaint, the disputed domain name resolved to a website promoting CBD products similar to those marketed by the Complainants (the “Respondent’s website”). The Respondent’s website made prominent use of the ELIXINOL trademark. The privacy policy and return of goods policy on the Respondent’s website included references to the goods advertised as being offered by the “Eczane Group”. The Eczane Group purports to operate a business of selling CBD products in competition with the Complainants.

Prior to filing the Complaint, the Complainants sent a cease-and-desist letter to the Respondent notifying the Respondent of the Complainants’ rights and requesting transfer of the disputed domain name. The Respondent did not reply to the Complainants’ cease-and-desist letter.

At the time of this decision, the disputed domain name no longer resolves to an active website.

5. Parties’ Contentions

A. Complainants

The Complainants contend, in relevant part, as follows:

The Complainants claim to have rights in the ELIXINOL trademark. The Complainants submit that the disputed domain name is confusingly similar to their ELIXINOL trademark. The disputed domain name comprises the term “elixinol”, which is the same as the major word component of the Complainants’ ELIXINOL trademarks. The addition of the word “group” does not differentiate the disputed domain name from the Complainants’ trademark, especially as the Complainants make up a group of companies.

The Complainants assert that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainants state that “elixinol” is a coined term that has no meaning other than being the name of the Complainants. The Complainants assert that the goods supplied on the Respondent’s website are provided by a competitor of the Complainants. As such, argue the Complainants, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Rather the Respondent is using the disputed domain name to take advantage of the Complainants’ trademark to attract consumers looking for the Complainants. The Complainants claim that the Respondent’s failure to reply to their cease-and-desist letter indicates that the Respondent cannot substantiate its rights or legitimate interests in the disputed domain name.

The Complainants submit that the Respondent registered and is using the disputed domain name in bad faith. The Complainants note that their trademark registrations substantially predate the registration of the disputed domain name. The Complainants assert that the Respondent’s registration of a domain name containing their trademark and the Respondent’s use of the disputed domain name in connection with a website offering the same goods as those provided by the Complainants cannot be coincidental. The Complainants submit that the Respondent’s use of the disputed domain name to direct traffic to the Respondent’s website indicates a clear intent on the part of the Respondent to disrupt the Complainants’ business and to divert consumers to the Respondent’s website and products sold by the Eczane Group; to mislead and deceive consumers looking for the Complainants; and to trade off the Complainants’ goodwill and reputation by creating an unauthorized association between the Respondent’s website, the products offered therein and the Complainants’ trademark. The Complainants assert that the Respondent presumably receives financial compensation from the Eczane Group. The Complainants submit that the Respondent’s actions amount to passing off, trademark infringement, and that they erode the Complainants’ reputation and goodwill.

The Complainants request transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1. Preliminary Matter: Consolidation of the Complainants

The Complaint has been filed by two separate legal entities, one being a subsidiary of the other. Both entities hold trademark registrations for ELIXINOL and carry out similar business operations under the ELIXINOL trademarks. The Panel notes that the Respondent has engaged in conduct in such a way that has affected the Complainants in a similar fashion. As such, the Complainants have a specific common grievance against the Respondent. Accordingly, the Panel finds that it would be fair and equitable to permit the consolidation, and will hereinafter refer to both entities collectively as the “Complainant”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1.

6.2. Substantive Matters

In order for the Complainant to prevail, it must prove on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the ELIXINOL trademark by virtue of its trademark registrations, details of which are provided under the factual background section above.

The disputed domain name incorporates the Complainant’s ELIXINOL trademark in its entirety as its leading element followed by the term “group” under the generic Top-Level Domain (“gTLD”) “.com”. The Panel finds that the Complainant’s ELIXINOL trademark is readily recognizable in the disputed domain name, and that the addition of the term “group” does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademark, see WIPO Overview 3.0, section 1.8. The gTLD “.com”, being a technical requirement of registration, may be disregarded for the purposes of assessing confusing similarity under the first element, see WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

At the time of filing, the disputed domain name resolved to a website that purported to offer various CBD products under the Elixinol name in direct competition with those of the Complainant. The Panel accepts the Complainant’s assertion that such activity is not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Panel considers that the Respondent, who has no affiliation with the Complainant, is attempting to take unfair advantage of the goodwill associated with the Complainant’s products by purporting to promote competing products for its own commercial gain. Noting that the Respondent’s website listed a contact address in Turkey, whereas the underlying registrant of the disputed domain name has provided a contact address in Cameroon, the Panel has doubts as to the authenticity of the offer for sale of CBD products made via the Respondent’s website. Pursuant to paragraphs 10 and 12 of the Rules, UDRP panels may undertake limited factual research into matters of public record; see WIPO Overview 3.0, section 4.8. In this regard, the Panel notes that a simple Google search for the “Eczane Group” returns several reports alleging fraudulent behavior on the part of the company. Prior UDRP panels have categorically held that the use of a domain name for illegal activity, e.g., the sale of counterfeit goods, illegal pharmaceuticals, impersonation, or other types of fraud, can never confer rights or legitimate interests on a respondent; see WIPO Overview 3.0, section 2.13.

The Respondent has not come forward to assert trademark rights in the Elixinol name, or to otherwise rebut the Complainant’s assertions in this regard. Such use of the disputed domain name does not, in the Panel’s view, support any inference that the Respondent is commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy, nor is there anything to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy.

For the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s trademark rights predate the registration of the disputed domain name by several years. The Panel accepts that the Complainant’s ELIXINOL trademark is a coined term, which appears to be exclusively associated with the Complainant within the market in which it operates. The Complainant has submitted evidence of its strong presence in the cannabis industry, including its online marketing materials, social media pages, and its attendance at industry events. The Panel infers from the use of the disputed domain name that the Respondent had the Complainant’s trademark in mind at the time it registered the disputed domain name, and did so with a view to take unauthorized commercial advantage of the goodwill associated with the Complainant’s trademark.

The Respondent has made use of the Complainant’s trademark to purport to offer for sale online CBD products in competition with those of the Complainant. The use of the Complainant’s name and trademark to offer competing third-party CBD products created a risk of confusion amongst Internet users seeking the Complainant’s products. As noted above, it appears that the offer for sale of goods via the Respondent’s website was not genuine, but rather part of a fraudulent scheme intended to mislead Internet users. Prior UDRP panels have held that the use of a domain name for per se illegal activity, such as the sale of counterfeit goods, passing off, or other forms of fraud, is manifestly considered evidence of bad faith; see WIPO Overview 3.0, section 3.1.4.

The Respondent’s failure to reply to the Complainant’s cease-and-desist letter together with the fact that the disputed domain name no longer resolves to an active website further support a finding of bad faith on the part of the Respondent.

For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith, and that the requirements of paragraph 4(a)(iii) are satisfied.

7. Decision

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 <elixinolgroup.com> be transferred to the Complainant, Elixinol Global Limited.

Jane Seager
Sole Panelist
Date: July 9, 2019