WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jemie B.V., Canna Holding B.V. v. Domain Administrator, PrivacyGuardian.org / J-J-It, Jacinto Harvey
Case No. D2019-1592
1. The Parties
The Complainants are Jemie B.V., The Netherlands, and Canna Holding B.V., The Netherlands, represented by AKD N.V., The Netherlands.
The Respondent is Domain Administrator, PrivacyGuardian.org, United States of America (the “United States) / J-J-It, Jacinto Harvey, United States.
2. The Domain Name and Registrar
The disputed domain name <cannaholdingbv.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 July 8, 2019. On July 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 8, 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 July 12, 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 July 15, 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 July 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2019.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 21, 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 belong to the same group of companies (Annex 3) that exploits the fertilizers, nutrients, vegetative and flowering stimulators’ businesses, also targeting the cannabis community.
The First Complainant is the owner, amongst others (Annex 11), of the following trademark registrations for CANNA (Annexes 12.1 and 12.2):
- International trademark registration No. 645638A, dated February 21, 1996, in classes 5, 16, and 34; and
- International trademark registration No. 857198, dated June 9, 2005, in classes 1, 5, 7, 8, 11, 16, 17, 21, 31, 34, and 41.
The Second Complainant enjoys protection over its trade name, CANNA HOLDING B.V., arising from its incorporation, in 2008, under the laws of the Netherlands.
The disputed domain name <cannaholdingbv.com> was registered on April 23, 2019. Currently it is used in connection with a website offering products that contain Cannabidiol (CDB) as ingredients (Annex 13), indicating the Complainant’s contact details (Annex 13).
5. Parties’ Contentions
The Complainants assert to have commenced doing business under the CANNA name nearly thirty years ago, being nowadays recognized as a worldwide leader in plant technologies for cultivating plants, including those used for hemp growth. The Complainants further assert that the CANNA trademark has become well-known internationally.
The Complainants initially note that the telephone number indicated in the WHOIS information relating to the disputed domain name appears to have been used for fraudulent purposes, being reported in multiple Complaints about nuisance calls (Annexes 6 and 7), also being listed in the “stop419scam.com” website as a telephone number used in connection with scam non-delivery websites (Annex 8).
According to the Complainants, the disputed domain name is identical to the trade name of the Second Complainant (not taking into account the “.com” generic Top-Level Domain (gTLD)) as well as reproduces the First Complainant’s CANNA trademark entirely and is thus confusingly similar therewith.
As to the absence of rights or legitimate interests, the Complainants argue that:
i. the Respondent has no rights or legitimate interests in respect of the disputed domain name;
ii. the Respondent is fraudulently using the disputed domain name, using the Second Complainant’s name and contact details;
iii. the Respondent is using the disputed domain name, pretending to be the Second Complainant, targeting the cannabis community, as does the Complainants;
iv. the Respondent is not a reseller nor a distributor of the Complainants.
In what it relates to the bad faith registration and use of the disputed domain name, the Complainants assert that the Respondent’s knowledge of the Complainants is evident in view of the reproduction not only of the Second Complainant’s tradename in the disputed domain name, as well as its contact details on the website that resolves from the disputed domain name. In addition to that, the disputed domain name, according to the Complainants, is being used to offer products that are similar to the Complainants’ ones seeking to cause confusion as to source, sponsorship or affiliation, for monetary gain, a clear evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The First Complainant has established its rights in the CANNA trademark, which is entirely incorporated in the disputed domain name and thus recognizable within the disputed domain name, what fulfills the standing test required by the Policy, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
In addition to that, considering the overall facts and circumstances of this case, the addition of the terms “holding” and “bv”, which coincide with the Second Complainant’s trade name is not sufficient to prevent a finding of confusing similarity.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ trademark. The first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or
(iii) the respondent is 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.
In that sense, the Complainants indeed state that the Respondent is not a reseller or a distributor of the Complainants and is not offering the Complainants’ CANNA products in the webpage that resolves from the disputed domain name.
The Respondent, on its turn, has been using the disputed domain name in connection with a webpage that offers products that contain Cannabidiol (CDB) as ingredients (Annex 13), indicating the Complainant’s contact details. This webpage does not disclose any relationship with the Complainants or lack thereof. Such use made of the disputed domain name does not characterize a bona fide offering of goods or services and may create confusion between Internet users.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the reproduction of the Second Complainant’s tradename and contact details on the disputed domain name which appears to be linked to a fraudulent scheme (as indicated by the evidence submitted by the Complainant showing that the telephone number indicated in the WHOIS is linked to multiple complaints about nuisance calls (Annexes 6 and 7), also being listed in the “stop419scam.com” website as a telephone number used in connection with scam non-delivery websites (Annex 8).
The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainants’ trademark and tradename but also an attempt of misleadingly diverting Internet consumers for its own commercial gain, possibly in connection with fraudulent scams.
Another factor that corroborate with the finding of bad faith conduct is the indication of what appears to be a false address in the WhoIs information, not being the Center to deliver correspondence to such.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.
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, <cannaholdingbv.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: September 4, 2019