WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Balanced Health Botanicals, LLC v. Privacy service provided by Withheld for Privacy ehf / Sander Cry

Case No. D2021-1988

1. The Parties

The Complainant is Balanced Health Botanicals, LLC, United States of America (“United States”), represented by VDB Legal Group, LLC, United States.

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Sander Cry, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <cbdistillery.org> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2021. On June 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 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 June 25, 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 August 30, 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 July 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2021.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 26, 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 is an entity based in the United States which engages in the retail sale of hemp-derived health and wellbeing products in the United States, the United Kingdom, and online. The Complainant claims to be one of the leading retailers of such goods, having sold more than 1,750,000 products to date. The Complainant offers its goods and services through a website at “www.cbdistillery.com”, the domain name for which was registered on September 24, 2009, and a website at “www.thecbdistillery.com”, the domain name for which was registered on September 12, 2016.

An affidavit from the Complainant’s Vice President of Marketing notes that, since 2016, the Complainant has fulfilled nearly 1,112,000 e-commerce orders through the latter website and such site has had more than 9,500,000 visitors with an average of 4,698 daily visitors. Said affidavit also states that there have been nearly 1,715,000,000 product and thought leadership impressions on the Complainant’s CBDISTILLERY mark online and in print media including mentions in premier United States publications, and also indicates that the Complainant has sent more than 180,000,000 emails containing said mark to customers and prospects. The Complainant’s social media pages, each named “CBDistillery”, feature 24,253 “likes” and 27,247 “followers” on “www.facebook.com”, and 71,400 “followers” on “www.instagram.com”.

Based on the foregoing, the Complainant claims unregistered trademark rights in the mark CBDISTILLERY through extensive use since at least September 10, 2016. The Complainant is also the owner of a variety of registered trademarks in this term, including, for example, European Union Registered Trademark no. 1486639 for the word mark CBDISTILLERY, registered on June 27, 2019 in Nice Classes 3, 5, 34, and 35.

The disputed domain name was registered on September 24, 2019. Little is known regarding the Respondent, which has not participated in the administrative proceeding. The website associated with the disputed domain name is entitled “CBD Oil marketplace” ¹ and features links to third party websites where products derived from CBD oil are offered for sale. Such websites are competitors of the Complainant.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant contends as follows:

Identical or confusingly similar

The disputed domain name incorporates the entirety of the Complainant’s CBDISTILLERY mark and is comprised solely of it. The generic Top-Level Domain (“gTLD”) “.org”, which is a technical requirement of a domain name registration and is disregarded under the confusing similarity test, does not change this. In nearly identical circumstances, a previous panel under the Policy has found that the reproduction of the Complainant’s mark in a domain name was sufficient grounds to establish confusing similarity.

Rights or legitimate interests

The CBDISTILLERY mark is an arbitrary term, which has no meaning outside its use to identify the Complainant as the source of certain products and services. The Respondent has never been known by such mark and is not a licensee or authorized reseller of the Complainant, or otherwise sanctioned to use such mark for any purpose. The Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services. The Respondent does not offer any goods or services for sale but rather uses this to advertise links to the products of the Complainant’s competitors and/or counterfeit products. The disputed domain name features links to the website of “cbdMD”, one of the Complainant’s direct competitors, and to what appear to be scam websites selling hemp-based products.

Registered and used in bad faith

The disputed domain name is identical to and incorporates the entirety of the Complainant’s mark. The Respondent has exploited the mistake of users typing “.org” instead of “.com” to capitalize on the Complainant’s goodwill. The Respondent intended to attract users to its website for commercial gain by incorporating the entirety of the Complainant’s mark. The content at the website associated with the disputed domain name was created with intent to mislead consumers and gain goodwill from the Complainant’s mark.

It is highly unlikely that the Respondent registered the disputed domain name by mere accident when it consists only of an arbitrary term coined by the Complainant and when the links on the Respondent’s website resolve to websites selling products similar to those of the Complainant and explicitly covered by the scope of the Complainant’s trademark.

The timing and circumstances of the registration of the disputed domain name indicate that it was registered in bad faith. Over the past three years, the Complainant has prominently and extensively used, promoted and advertised the CBDISTILLERY mark, as evidenced by its media impressions and vast social media following, such that it has become a distinct source identifier of the Complainant’s goods and services. Given the Complainant’s use of the CBDISTILLERY mark, the Respondent knew or should have known that the disputed domain name was confusingly similar. Such mark has no descriptive or generic meaning and is a unique combination of words, so that it is highly unlikely that the Respondent devised the term on its own.

The Respondent failed to respond to the Complainant’s cease and desist letter and has employed a privacy service to block or intentionally delay disclosure of the underlying registrant. A reverse WhoIs search on the Respondent’s name and email address has revealed five additional domain names referencing Russian, Ukrainian, and “mail order” brides. The Respondent does not offer bona fide goods or services through these domain names but rather uses them to attract users to its website or other online location.

B. Respondent

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; and

(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 are being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has UDRP-relevant rights in its CBDISTILLERY trademark by virtue of the registered mark cited in the Complaint and noted in the factual background section above.

The Panel is also satisfied that the Complainant has established that it has unregistered trademark rights in the CBDISTILLERY mark dating from 2016 (pre-dating the date of registration of its registered trademark).

The Panel notes the averments in the affidavit from a member of the Complainant’s staff, coupled with the evidence put forward of the Complainant’s substantial presence on social media. The affidavit contains largely unsupported assertions of the notoriety of the mark, albeit based upon statistics which are said to relate to the Complainant’s use thereof. These assertions would not necessarily have been accepted by the Panel on their own, had the independent social media evidence not been put forward in addition. Nevertheless, taken as a whole, the evidence before the Panel supports the Complainant’s contention that, since 2016, it has established a secondary meaning in the CBDISTILLERY mark, which has become a distinctive identifier that consumers associate with the Complainant’s goods and services (see section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Respondent has not sought to oppose the Complainant’s submissions regarding the first element assessment of common law rights.

Turning to the comparison between such mark and the disputed domain name, the gTLD“.org” is typically disregarded, being required purely for technical reasons. The second level of the disputed domain name consists solely of and matches exactly the Complainant’s CBDISTILLERY mark. Such mark is fully recognizable in the disputed domain name.

In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 non-commercial 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.

In the present case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based on its submissions that the CBDISTILLERY mark is an arbitrary term coined by the Complainant, that the Respondent has never been known by such mark and is not a licensee or authorized reseller of the Complainant or otherwise sanctioned to use such mark for any purpose, and that the Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services. Furthermore, the Respondent is using the disputed domain name to publish links for certain products which are available for sale at the websites of the Complainant’s competitors. Such a use, since it appears to be predicated upon the goodwill of the Complainant’s mark, cannot be considered a bona fide offering of goods or services or a non-commercial use, nor does it otherwise confer rights and legitimate interests upon the Respondent.

In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of any rights or legitimate interests which it might have in the disputed domain name. The Respondent has not replied to the Complainant’s contentions and has therefore not taken up the opportunity to rebut the Complainant’s prima facie case. In these circumstances, the Panel finds that the requirements of paragraph 4(a)(ii) have been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

In the present case, the Complainant’s assertions focus principally on paragraph 4(b)(iv) of the Policy. The Complainant notes that the disputed domain name is identical to and incorporates the entirety of the Complainant’s mark, that the Respondent has exploited the mistake of users typing “.org” instead of “.com” to capitalize on the Complainant’s reputation and goodwill, and that the Respondent has intended to attract users to its website for commercial gain, ultimately pointing Internet users to the Complainant’s competitors’ sites.

The Panel is satisfied that the inclusion of the Complainant’s mark in the disputed domain name in its entirety demonstrates on the balance of probabilities that the Respondent had prior knowledge of the Complainant’s CBDISTILLERY mark, which predates the disputed domain name in both its registered and unregistered forms. The website associated with the disputed domain name points users looking for the kinds of product which the Complainant supplies to those offered by its competitors. This appears to the Panel to be an attempt by the Respondent to free ride on the reputation and goodwill generated by the Complainant in its CBDISTILLERY mark.

For completeness, the Panel notes that it has also considered whether the Respondent could have arrived at the term “cbdistillery”, as used in the disputed domain name, independently of the Complainant’s CBDISTILLERY mark, for example, in order to make a descriptive reference to the term “CBD” and/or in connection with a “distillery”. It is apparent that the Complainant’s products (and those offered via the linked websites to the Respondent’s site) are derived from cannabidiol, otherwise referred to by the letters “CBD”, and that those three letters are also the first three letters of the second level of the disputed domain name. The title of the website to which the disputed domain name points is “CBD OIL marketplace”. At first glance, these circumstances might have suggested that the Respondent intended to make a descriptive use of the initials “cbd” in the disputed domain name.

Nevertheless, the Panel considers that the disputed domain name trades on the Complainant’s pre-existing trademark in that it completely repeats this, comprising a portmanteau in which the final letter “d” of the term “CBD” has been elided and incorporated into the word “distillery”. Even if the letters “cbd” in the disputed domain name were treated as referencing cannabidiol, this would leave a second component consisting of the partial word “istillery”. Together, these two components play on the Complainant’s mark. On the balance of probabilities, it does not appear to the Panel that the Respondent intended to create a portmanteau independently of the Complainant’s mark when it registered the disputed domain name. Bearing this in mind, together with the evident reputation and goodwill which the Complainant has built up in the CBDISTILLERY mark since 2016, the Panel is satisfied that the Respondent could not have reasonably maintained any such argument had it participated in the administrative proceeding.

The Respondent did not file a Response in this matter or make any other reply to the Complainant’s contentions and accordingly has failed to provide an alternative explanation for its registration and use of the disputed domain name. The present record does not indicate any possible good faith motivation to the Panel which the Respondent might have put forward in this matter.

The Panel is of the opinion that the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of such website pursuant to paragraph 4(b)(iv) of the Policy. This is sufficient for a finding of registration and use in bad faith. It is not therefore necessary for the Panel to consider the Complainant’s additional submissions regarding an alleged pattern of conduct arising from certain other domain names which it asserts that the Respondent has registered.

In all of the above circumstances, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been 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 <cbdistillery.org> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist
Date: September 9, 2021

¹ The Complainant did not supply a screenshot of the website associated with the disputed domain name, although it did provide screenshots of two other websites which were linked to by said website. The Panel visited the website linked to the disputed domain name by way of conducting limited factual research into matters of public record (on this topic, see section 4.8 of the WIPO Overview 3.0). On the same basis, the Panel also checked the registration date of the Complainant's domain names, <cbdistillery.com> and <thecbdistillery.com> via the website “lookup.icann.org”.