WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vicken Jabourian v. Kiet Anh Pham
Case No. D2021-0504
1. The Parties
The Complainant is Vicken Jabourian, United States of America, represented by MG Miller Intellectual Property Law LLC, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <cannverify.review> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2021. On February 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2021, 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 Complainant on March 17, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 18, 2021.
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 March 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 9, 2021.
The Center appointed Evan D. Brown as the sole panelist in this matter on April 22, 2021. 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 Complainant provides a blockchain-based verification technology to purveyors in the cannabis industry. It uses the trademark CANNVERIFY and owns registrations for that mark, including United States Reg. No. 5,865,276, registered on September 24, 2019. The Complainant provides the website found at the domain name <cannverify.com>, to market and promote its services and to provide links for consumers to download the Complainant’s mobile app.
The disputed domain name was registered on June 30, 2020. The Complainant asserts that the Respondent has used the disputed domain name to set up “a complete counterfeit and unauthorized reproduction of [the] Complainant’s website.”
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that all three of these elements have been met in this case.
A. Proper Respondent
Paragraph 1 of the Rules defines the word “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.” The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at Section 4.19 provides that “[w]hen acting solely in its capacity as a registry or registrar, and not also as a registrant, a registry or registrar is not subject to jurisdiction under the UDRP as a respondent.”
Nothing in the record indicates that Google LLC is the holder of the registration of the disputed domain name. And there is no indication that Google LLC has played any role concerning the disputed domain name other than serving as the Registrar. This is not a case like Pernod Ricard v. Tucows.com Co, WIPO Case No. D2008-0789, in which the registrar was also the registrant. Instead, in this case, it appears that the Complainant mistakenly listed Google LLC (who clearly appears as the registrar in the relevant WhoIs information) as a respondent. Moreover, the information Google LLC provided to the Center on February 19, 2021 identifying Kiet Anh Pham as the registrant of the disputed domain name confirms that Google LLC’s role was limited to that of the domain name registrar. Accordingly, the Panel emphasizes that this decision should not be construed as one adverse to Google LLC.
B. Identical or Confusingly Similar
The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant’s trademark CANNVERIFY in its entirety. The disputed domain name uses the Top-Level Domain (“TLD”) “.review” but this does not avoid the confusing similarity.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of multiple valid and subsisting trademark registrations for the mark CANNVERIFY.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
(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 evidence shows that the website published at the disputed domain name is an unauthorized replica of the Complainant’s website. That is not a bona fide offering of goods or services. Moreover, there is no evidence the Respondent is known by the disputed domain name. And the Complainant never granted the Respondent a license to use the CANNVERIFY trademark in the disputed domain name. Moreover, the disputed domain name carries a high risk of implied affiliation.
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to substantively respond to the Complaint, the Respondent did not discharge its burden to demonstrate rights or legitimate interests. And no other facts in the record tip the balance in the Respondent’s favor. Accordingly, the Complainant has met its burden under this second Policy element.
D. Registered and Used in Bad Faith
The Policy requires a complainant to establish the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location.”
Using the disputed domain name to set up an unauthorized replica of the Complainant’s website is a clear example of bad faith. Since the website at the disputed domain name is a copy of the Complainant’s website, there is no doubt that the Respondent knew about, and indeed targeted the Complainant. These facts clearly support a finding of bad faith registration and use of the disputed domain name. The Complainant has satisfied this third element under 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 <cannverify.review> be transferred to the Complainant.
Evan D. Brown
Date: May 7, 2021
1 The Complaint and amended Complaint designated Google LLC as a Respondent in this matter. As discussed more fully in Section 6.A. below, the Panel finds that Google LLC was improperly designated as a Respondent. Google LLC is merely the Registrar with which the disputed domain name was registered. Accordingly, the Panel will refer only to the “Respondent” (namely, Kiet Anh Pham) in this decision. This decision should not be construed as adverse to Google LLC.