WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cannawayz Inc. v. Jonathan Marsh, Oregon Fair Trade Cannabis

Case No. D2021-3679

1. The Parties

Complainant is Cannawayz Inc., United States of America (“United States”), represented by Lucien Levman, United States.

Respondent is Jonathan Marsh, Oregon Fair Trade Cannabis, United States.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2021. On November 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 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 Complainant on November 9, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 14, 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 Respondent of the Complaint, and the proceedings commenced on November 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2021. The Response was filed with the Center on December 9, 2021.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on December 27, 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.

On January 13, 2022, the Panel issued a Procedural Order requesting additional information from Respondent Jonathan Marsh in regards to his connection to Oregon Fair Trade Cannabis and ownership of the disputed domain name. On January 14, 2022, Respondent Jonathan Marsh submitted his response to the Procedural Order and on January 19, 2022 submitted additional information. Complainant did not submit a reply, as the Procedural Order allowed.

4. Factual Background

Complainant, Cannawayz Inc., operates a medical and recreational cannabis directory for cannabis users and businesses. Complainant provides its services through a website at <cannawayz.com>. Complainant owns two trademark registrations for the CANNAWAYZ mark in the United States: (i) a word mark registration for CANNAWAYZ (Registration No. 6,104,894), that issued to registration on July 21, 2020 with a claimed date of first use of April 1, 2019; and (ii) a logo mark with the term “Cannawayz” (Registration No. 6,151,183), that issued to registration on September 15, 2020 with a claimed first use date of June 1, 2019.

The disputed domain name was registered on November 10, 2014. Respondent Jonathan Marsh maintains that he registered the disputed domain name at that time. At some point thereafter, and certainly by the time the Complaint was filed, the disputed domain name Whois records showed Respondent Oregon Fair Trade Cannabis as the “Registrant Organization.” After the Complaint was filed, GoDaddy, the registrar, disclosed that Jonathan Marsh is the registrant of the disputed domain name and that Oregon Fair Trade Cannabis is the Registrant Organization.

The disputed domain name, at least at times, included a GoDaddy parked page with a variety of pay-per-click (PPC)links. In or about 2020, and perhaps earlier, there appears to have been an attempt by Complainant, or someone acting on behalf of Complainant, to purchase the disputed domain name from Respondent. No agreement was reached between the parties. The disputed domain name currently resolves to a GoDaddy PPC parked page.

5. Parties’ Contentions

A. Complainant

Complainant maintains that its CANNAWAYZ mark is well-known in the cannabis industry and that its CANNAWAYZ directory is a leading cannabis related online platform in California. Complainant asserts that in addition to its trademark registrations for CANNAWAYZ, it owns common law rights in the CANNAWAYZ mark dating back to at least 2015 if not earlier.

Complainant asserts that the disputed domain name was registered by Oregon Fair Trade Cannabis some (unspecified) time in 2019, on a date “long after Complainant has been using its CANNAWAYZ name extensively and continuously.”

Complainant contends that the disputed domain name is confusingly similar to its CANNAWAYZ mark as the use of the letter “s” at the end of the disputed domain name, as opposed to a “z”, does not distinguish the disputed domain name.

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) has no connection, affiliation or license from Complainant to use the CANNAWAYZ mark in a domain name, (ii) has never used the phrase “Cannaways” in commerce, and (iii) has never applied to register “Cannaways” as a mark.

Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith since the disputed domain name imitates Complainant’s CANNAWAYZ mark and is being used with a PPC parked page for the likely commercial benefit of Respondent. Based on the foregoing and Complainant’s belief that the disputed domain name was registered in 2019, Complainant argues that Respondent registered the disputed domain name to profit from such and to take advantage of Complainant’s rights in it CANNAWAYZ mark.

B. Respondent

Respondent Jonathan Marsh filed a response in this matter and rejected Complainant’s contentions. Respondent Jonathan Marsh (hereinafter “Respondent”) argues that he registered the disputed domain on November 10, 2014, a date well before Complainant adopted or began making any use of its claimed CANNAWAYZ mark. In that regard, Respondent asserts that there is no evidence that Complainant made any use of the CANNAWAYZ mark prior to 2019. Based on the foregoing, Respondent maintains that there is no basis for the dispute and that the Complaint should be dismissed.

Respondent also contend that he has registered over 500 domain names related to “cannabis” or “hemp,” and started to do so in 1998. Respondent maintains that he has bought and sold such domain names over the years and that doing so is not proof of a lack of a legitimate interest or acting in bad faith.

C. Submissions Pursuant to the Panel’s Procedural Order

On January 13, 2022, the Panel issued a procedural order requesting that Respondent explain the relationship between himself and Oregon Fair Trade Cannabis, provide relevant evidence of his registration and ownership of the disputed domain, and certify whether or not the disputed domain name was ever transferred to Oregon Fair Trade Cannabis.

By response dated January 14, 2022, Respondent submitted evidence purporting to show his registration of the disputed domain name on November 10, 2014 and its subsequent renewals.

With regard to his relationship with Oregon Fair Trade Cannabis, Respondent asserts that in 2010 he lived in Portland, Oregon and advocated for the legalization of cannabis. During that time he met an individual who he assisted in obtaining a medical marijuana card. That individual subsequently founded Oregon Fair Trade Cannabis. Respondent remained in touch with that individual and later registered a domain name for him, <fairtradecannabis.net>. When registering that domain name, Respondent included Oregon Fair Trade Cannabis as the registrant organization in the contact information for that domain name. Respondent claims that because he changed addresses on several occasions he filed updates for the disputed domain name. Respondent alleges that he may have inadvertently used the contact information template from that domain name for the disputed domain name as an update.

Respondent maintains that he has never been employed by Oregon Fair Trade Cannabis and that any work he did for that entity was as a friend and not for any monetary compensation. Respondent further maintains that at all relevant times he has remained the owner of the disputed domain name and that the disputed domain name was never transferred to Oregon Fair Trade Cannabis. Respondent has also submitted an email from the individual affiliated with Oregon Fair Trade Cannabis in which that individual asserts that “Oregon Fair Trade Cannabis Doesn’t have ownership rights to cannaways.com.”

Complainant did not submit a reply to Respondent’s supplemental submission in response to the procedural order, although Complainant was afforded an opportunity to do so.

6.Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

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

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

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

A. Complainant’s rights in CANNAWAYZ

Complainant has provided its trademark registrations in the United States for the CANNAWAYZ mark. Such registrations issued in 2020. Notably, Complainant included a date of first use for its CANNAWAYZ word mark, the earliest of its trademark registrations, of April 1, 2019. Complainant’s logo registration with the term “Cannawayz” claimed a first use date of June 1, 2019.

While the Panel is willing to find that Complainant’s rights in the CANNAWAYZ mark go back to April 1, 2019, the remaining question is whether Complainant had common law rights in CANNAWAYZ going back to 2015 or earlier as Complainant claims.

Proving the existence of such common law or unregistered rights requires a complainant to show with actual evidence when its claimed mark became a distinctive identifier which consumers associate with the complainant’s goods or services. See section 1.3, Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Proof of such rights cannot be based on conclusory allegations. Id. For this reason, Panels have generally required that a complainant make a strong showing with relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) through a range of factors, such as (i) the duration, extent and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. Id. and cases cited therein.

Specific evidence supporting assertions of secondary meaning should be included in the complaint. Conclusory allegations of unregistered or common law rights without any supporting evidence are entitled to no weight and simply do not suffice in establishing common law rights. WIPO Overview at sections 1.3 and 3.1.

Here, while Complainant claims common law rights that go back to 2015, Complainant has failed to provide any evidence establishing that such rights existed at any time prior to April 1, 2019. Complainant simply makes unsubstantiated assertions of having such rights and of being purportedly well known in California and in the cannabis industry. Notably, Respondent contends that his research did not reveal any evidence of use of CANNAWAYZ prior to 2019. The fact that Complainant did not submit anything showing use of the CANNAWAYZ mark prior to 2019, suggests that such claimed common law rights in CANNAWAYZ do not date back to 2015 or possibly that Complainant has insufficient evidence to prove that such rights exist. To be sure, if such evidence does in fact exist, it has not been put before the Panel. It is possible that the CANNAWAYZ mark is known in 2022 in the cannabis industry, but there is nothing before the Panel that establishes common law rights in the CANNAWAYZ mark prior to Complainant’s first use date of April 1, 2019 in its trademark application or earlier.

Under the circumstances, the Panel finds that Complainant has failed to credibly establish that it had common law rights in the CANNAWAYZ mark prior to April 1, 2019, the date that Complainant asserted in its trademark registration to be its date of first use of its CANNAWAYZ mark in its United States.

B. Identical or Confusingly Similar

Respondent does not contest that the disputed domain name is confusingly similar to Complainant’s CANNAWAYZ mark, given that the only difference is the letter “s” at the end of the disputed domain name. The Panel further notes that CANNAWAYZ and CANNAWAYS are aurally virtually identical. Thus, for purposes of the first element, Complainant has established confusing similarity.

C. Rights or Legitimate Interests

Given that Complainant has not established the third element of bad faith registration of the disputed domain name, as discussed below, the Panel does not need to address the issue of whether Respondent has rights or a legitimate interest in the disputed domain name.

D. Registered and Used in Bad Faith

Under Paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used the disputed domain name in bad faith. The assessment of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name.

Here, there is a dispute as to when the disputed domain name was registered. Complainant asserts that the disputed domain name was registered in 2019 under the name of Oregon Fair Trade Cannabis. Respondent, however, maintains that he registered the disputed domain name on November 10, 2014 and has provided evidence showing as much.

The remaining question is whether the disputed domain name was in fact subsequently transferred to Oregon Fair Trade Cannabis as that entity is listed as the registrant organization. Respondent maintains that the inclusion of Oregon Fair Trade Cannabis in the Whois records as a registrant organization resulted inadvertently from an update and that the disputed domain name has always been owned by Respondent. Complainant did not submit evidence showing otherwise.

Given that Complainant has failed to establish the existence of common law rights in its CANNAWAYZ mark prior to November 10, 2014 – or for that matter as is relevant here, any time before its claimed date of first use in commerce of April 1, 2019 – it appears that Respondent registered the disputed domain name on a date before Complainant developed, at least according to the evidence of record in this matter, – any rights in the CANNAWAYZ mark and thus could not have acted in bad faith at that time.

Whether the Oregon Fair Trade Cannabis organization was, in fact, inadvertently listed in the Whois records or became the owner of the disputed domain at some point does not change the present inquiry. There is certainly no evidence submitted showing that the disputed domain was in fact transferred to Oregon Fair Trade Cannabis in 2019 or at any other time. Respondent denies that such ever occurred and the founder of Oregon Fair Trade Cannabis maintains that the organization has never owned the disputed domain name. Complainant has not submitted any evidence that might suggest otherwise. To the extent Complainant’s case relied on such an assertion (particularly in view of Complainant’s claimed April 1, 2019 idate of first use in commerce attested to in its application before the USPTO), Complainant would have been expected to support the claim that a transfer occurred with specific relevant evidence, not a mere assertion made on an “information and belief” basis. But even if Oregon Fair Trade Cannabis had in fact acquired an interest in the disputed domain name in 2019, Complainant has failed to show with any discernable evidence that Oregon Fair Trade Cannabis would have acquired the disputed domain name with a view towards targeting Complainant in bad faith. Again, to the extent Complainant relies on reputation prior to 2019 and/or a subsequent change in ownership of the disputed domain name, it has not presented evidence to allow the Panel to support such conclusion; such evidence, if it exists, could conceivably be developed in a fuller record such as in a proceeding before a competent court

Accordingly, as Complainant has not established that Respondent registered the disputed domain name in bad faith, Complainant’s complaint fails.

7. Decision

For the foregoing reasons, the Complaint is denied.

Georges Nahitchevansky
Sole Panelist
Date: January 31, 2022