WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CBD Center of RI, LLC v. Michael Lanoue, The CBD Store / Natural Healing and Wellness, LLC
Case No. D2019-2589
1. The Parties
Complainant is CBD Center of RI, LLC, United States of America (“United States”), represented by Barton Gilman LLP, United States.
Respondent is Michael Lanoue, The CBD Store, United States / Natural Healing and Wellness, LLC, United States, represented by M. Goldberg Law LLC, United States.
2. The Domain Name and Registrar
The disputed domain name <cbdofri.com> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2019. On October 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 24, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and contact information for the Domain Name.
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 November 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2019. On November 4, 7, and 8, 2019, Respondent sent email communications to the Center. On November 21, 2019, Respondent’s representative requested an additional four calendar days to file a Response, in accordance with the Rules, paragraph 5(b). In accordance with the Rules, paragraph 5(b), the due date for Response was extended to November 28, 2019. The Response was filed with the Center on November 28, 2019.
The Center appointed Robert A. Badgley as the sole panelist in this matter on December 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
Complainant alleges that “CBD Center of RI was the first, and remains the foremost, CBD retailer in the state of Rhode Island”. Complainant asserts that, “[t]hrough its significant sales, advertising, promotional activities, marketing, and earned goodwill, the Complainant has established itself as the primary purveyor of CBD products in the state”.
Complainant has registered with the state of Rhode Island three trademarks, including a word trademark CBD CENTER OF RI under Reg. No. 20901906001, with a date of first use of January 19, 2019, in connection with “retail services featuring hemp-derived CBD (cannabidiol) products for humans and pets”. These trademarks were applied for on June 5, 2019.
Complainant opened its physical retail store in Johnston, Rhode Island on March 8, 2019. Complainant owns the domain name <cbdcenterofri.com>, which resolves to Complainant’s commercial website.
The Domain Name was registered on September 5, 2018. It resolves to a website which sells CBD products similar to Complainant’s CBD offerings. According to Complainant, “several months after CBD Center of RI’s well-publicized opening, Respondent […] opened up a copycat business, located less than ten miles from the Complainant’s store.” (There is no evidence in the record of Complainant’s “well-publicized opening”.)
Respondent Natural Healing and Wellness, LLC is a Rhode Island Limited Liability Corporation that has been incorporated since April 1, 2019. Respondent is owned by Michael Lanoue. Hereafter, Respondent and Lanoue will be referred to as “Respondent” or “Lanoue”. Respondent asserts that he registered the Domain Name in order to sell CBD products in Rhode Island. Materials annexed to the Response confirm that, beginning in September 2018, Respondent used the d/b/a “The CBD Store of RI” to promote his business. For instance, there is a Facebook post on September 10, 2018 in which Respondent advertises “new products” in stock under the name “The CBD Store of RI” and “CBD of RI.” Another annex to the Response is a September 3, 2018 email in which Lanoue, using the email address cbd.of.ri@[...], discusses his “cbd store” and his new email address, and mentions that he is looking for site at which he could open a physical retail store. Lanoue also set up a Facebook profile page “The CBD Store of RI” on December 30, 2018.
Respondent’s website states: “The CBD Store was founded by Michael Lanoue on April 15, 2019”. A physical store called “The CBD Store” was opened around that time in Warwick, Rhode Island.
On May 31, 2019, Complainant’s counsel sent Respondent a cease-and-desist letter, in which Complainant asserted common law trademark rights in CBD CENTER OF RI. Among other things, counsel for Complainant wrote:
“[Respondent] CBD Store of RI's intentional infringement of [Complainant] CBD Center of RI’s intellectual property includes, for example, selecting and using an identical business name except for replacing the word ‘center’ with the synonym ‘store’ and adopting a logo featuring a plant/leaf design which is confusingly similar to CBD Center of RI’s custom designed logo. There are also numerous documented instances of CBD Store of RI simply copying and pasting its own messaging over CBD Center of RI’s unique advertising and trademarks on social media.
To date, our client is aware of several instances of actual consumer confusion between CBD Center of RI and CBD Store of RI. Upon seeing CBD Store of RI’s advertisements and branding, existing and prospective customers of CBD Center of RI have assumed that CBD Store of RI is the same as CBD Center of RI and/or affiliated with it. As the law recognizes, consumer confusion over whether two companies are affiliated can cause substantial harm and interfere with business relationships.”
Complainant’s counsel demanded that Respondent take several measures, including changing the name of Respondent’s store (“CBD Store of RI”), removing Complainant’s content from Respondent’s website, changing the logos and color scheme on Respondent’s website, and “changing” the “website URL”. Respondent did not respond to Complainant’s cease-and-desist letter, apparently refusing to accept its delivery.
5. Parties’ Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent disputes that Complainant holds a viable trademark and asserts that he has a legitimate interest in the Domain Name, namely, as a description of the business Respondent operates.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel need not consider this issue, given its decision on the “bad faith” element below.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel need not consider this issue, given its decision on the “bad faith” element below.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel cannot find in favor of Complainant. There is no evidence in the record that Respondent, who registered the Domain Name in September 2018, months before January 2019, when Complainant first used its purported trademark CBD CENTER OF RI in commerce, was aware of Complainant or any mark CBD CENTER OF RI at the time he registered the Domain Name. There is evidence in the record to corroborate Respondent’s claims that he registered the Domain Name for its descriptive quality, and that Respondent actually held itself out as early as September 2018 (again, months before Complainant used the purported trademark in commerce) as “CBD Store of RI” or “CBD of RI.”
Complainant’s state-issued trademark would certainly be open to a more searching analysis if the validity of that mark were essential to the Panel’s decision. It suffices here to observe that the mark is highly descriptive as a source identifier for a business offering CBD products in the state of Rhode Island.
The fact that Respondent has apparently lifted some content from Complainant’s website is troubling, and such conduct might well form the basis for some type of legal action in another forum, e.g., state (or possibly federal) court. This conduct, however, is not proof that Respondent targeted Complainant or its mark at the time of Domain Name registration. Rather, this appears to be sharp practices commenced after the Parties realized that they were competitors in a geographically close market.
Noting the lack of bad faith registration, the Complaint fails.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Date: December 17, 2019